Apple Inc.v.Contentguard Holdings, Inc.

Patent Trial and Appeal Board

Nov 2, 2015

13584782 (P.T.A.B. Nov. 2, 2015)

Trials@uspto.gov Paper 11
Tel: 571-272-7822 Entered: November 2, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

APPLE INC.,
Petitioner,
v.
CONTENTGUARD HOLDINGS, INC.,
Patent Owner.

Case IPR2015-00448
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Before KARL D. EASTHOM, GLENN J. PERRY, and
PATRICK R. SCANLON, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request for Rehearing
37 C.F.R. § 42.71(c, d)

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INTRODUCTION
Petitioner, Apple Inc., filed a Request for Rehearing (Paper 10, “Reh’g
Req.”) of our Decision Denying Institution of Inter Partes Review (Paper 9,
“Dec.”). The Rehearing Request seeks rehearing of the Decision with respect to
not instituting trial on claims 1–18 of U.S. Patent No. 8,370,956 B2 as
unpatentable under 35 U.S.C. § 103(a) over Rosen (Ex. 1020) and Hartrick
(Ex. 1021). See Reh’g Req. 1; Dec. 6, 34–35.
“When rehearing a decision on petition, a panel will review the decision for
an abuse of discretion.” 37 C.F.R. § 42.71(c). “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.” 37 C.F.R. § 42.71(d).
For the reasons discussed below, Petitioner’s Request for Rehearing is
denied.
ANALYSIS
Petitioner argues that the panel “used an improperly rigid standard to
measure the obviousness grounds presented in the Petition” and, in doing so,
overlooked and misapprehended substantial portions of the Petition, “which
explained in detail how the prior art references either individually described or
together suggested each element of the contested claims.” Reh’g Req 1. Petitioner
adds that the analysis in the Petition was “clear, well-organized, understandable[,]
and supported by direct citations to Rosen and/or Hartrick, and to evidence
showing how a person of ordinary skill would have understood their interrelated
teachings.” Id. at 2.
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Petitioner’s arguments fail to show an overlooked or misapprehended matter
arising to an abuse of discretion. Petitioner’s Rehearing Request exemplifies the
many problems the panel encountered with the Petition. For example, Petitioner
states that the Petition clearly explains that Rosen discloses all the claim
limitations except “how [restrictions on usage of the electronic object] are
specified or enforced.” Id. at 3. Petitioner then argues that the panel
misapprehended that integrating Hartrick into Rosen only requires a “single
change” to remedy this deficiency. Id. at 3–4 (“The Board also failed to appreciate
the Petition actually described a single change to Rosen: integrating Hartrick’s
usage rights specification and enforcement features to support Rosen’s ‘Usage’
field.”). Nevertheless, in the next sentence, Petitioner explains that making this
“single change” actually requires four separate modifications to Rosen. Id. at 4
(“The Petition explained doing this would cause the skilled person to make four
modifications to Rosen.”).
The Decision addresses the difficulty in understanding what Petitioner’s
proposed modifications were, how they were to be made, and why a person of
ordinary skill would have made them. See Dec. 11–21. Petitioner’s Rehearing
Request—characterizing the modifications as “a single change” as noted—neither
clarifies the Petition nor shows that the Board overlooked or misapprehended a
matter. Petitioner correctly notes that the need for extensive modification, alone,
does not necessarily doom a proposed ground of obviousness, see Reh’g Req. 5–6;
however, extensive modification was just one of many problems obfuscating the
asserted ground. The Decision explains that combined with the many other
deficiencies of the Petition, Petitioner had not shown a reasonable likelihood of
prevailing on any of the challenged claims. See Dec. 11–21 (discussing the
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Petition’s vague, nested string citations to broad swaths of references; clarity
problems created by pervasive use of internal cross-references and nested citations;
improper incorporation by reference of the Sherman Declaration to support
conclusory statements, thin analysis, and inadequate reasoning; and lack of
sufficient information to enable a proper Graham analysis).
Similarly, Petitioner asserts that the Decision requires an impermissibly rigid
form of proof and shows a misunderstanding of substantial portions of the Petition.
See Reh’g Req. 6–13. Much of the Petition is difficult to understand, because, as
explained above, the combination of problems with the Petition, described in detail
in the Decision, rendered deciphering Petitioner’s contentions intractable.
Petitioner fails to show that denying institution on this basis constitutes an abuse of
discretion.
Finally, Petitioner asserts that “the Board misapprehended” its mapping of
key claim terms, id. at 14, and concludes that “the Petition established that Rosen
and Hartrick met every element of the claims,” id. at 15. Contrary to this assertion,
setting aside the above-noted deficiencies, the Rehearing Request fails to address a
key claim mapping deficiency specifically identified in the Decision: The
Decision details why “the Petition fails to address, in more than a conclusory
fashion, how the hypothetical ‘recipient computing device has been determined to
be trusted’ as the independent claims require––i.e., ‘has been determined’ to have,
for example, behavioral integrity.” Dec. 22 (citing Pet. 18–19, 22).
Based on the foregoing discussion, Petitioner fails to meet its burden of
showing a previously addressed overlooked or misapprehended matter that
amounts to an abuse of discretion and warrants a modification of the Decision.

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ORDER
Accordingly, it is
ORDERED that pursuant to 35 U.S.C. § 314 (a), Petitioner’s Rehearing
Request is denied.

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PETITIONER:

Jeffrey Kushan
Michael Franzinger
SIDLEY AUSTIN LLP
IPRNotices@sidley.com

PATENT OWNER:

Nicholas T. Peters
Timothy P. Maloney
FITCH EVEN TABIN & FLANNERY LLP
ntpete@fitcheven.com
tpmalo@fitcheven.com

Robert A. Cote
McKOOL SMITH, P.C.
rcote@mckoolsmith.com