12911552 (P.T.A.B. Oct. 10, 2013)

Dominion Dealer Solutions, Llc.v.Autoalert, Inc.

Patent Trial and Appeal BoardOct 10, 2013

12911552 (P.T.A.B. Oct. 10, 2013)

Trials@uspto.gov Paper 13 571-272-7822 Entered: 10 October 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ DOMINION DEALER SOLUTIONS, LLC. Petitioner v. AUTOALERT, INC. Patent Owner ____________ Case IPR2013-00220 Patent 8,005,752 ____________ Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER, Administrative Patent Judges. LEE, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING 37 C.F.R. § 42.71 IPR2013-00220 Patent 8,005,752 2 Introduction Petitioner (“Dominion”) requests rehearing of the Board’s decision (“Decision” Paper 9), which declined to institute an inter partes review of claims 1-24 of Patent 8,005,752. Dominion asserts that the Board (1) substituted its own view of the facts for its expert testimony; and (2) overlooked disclosures in the cited references. Paper 10, 1:11-13. Neither contention has merit. Discussion Central to Dominion’s first contention is that whatever its expert states must be taken as established fact, because there is no contrary factual evidence. The contention is misplaced, because the Patent Owner does contest the facts, and because the literal disclosures of the references themselves constitute factual evidence. In any event, citing no authority, Dominion states: “uncontested factual evidence must be accepted by the Board.” Paper 10, 2:20-21. The law is to the contrary. See 37 C.F.R. § 41.65(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.”). Nothing in the Federal Rules of Evidence or Federal Circuit jurisprudence requires a fact finder to credit the unsupported conclusions or assertions of an expert witness. Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). Under 37 C.F.R. § 42.107(c), the Patent Owner is not permitted to present new testimonial evidence with its preliminary response. The absence of such testimony does not add to the credibility of Dominion’s expert, much less render the testimony free of evaluation by the Board, which still must assess the persuasiveness of the testimony in light of other factual evidence in the record, e.g., the explicit wording of the prior art, and the scope of the claimed invention. IPR2013-00220 Patent 8,005,752 3 Being unpersuaded does not equate to finding facts to the contrary. It is the petitioner who bears the burden of establishing a reasonable likelihood of unpatentability of one or more claims. 37 C.F.R. § 42.108(c). The Board did not find facts based on its own knowledge or expertise. Rather, the Board identified and discussed deficiencies in the arguments and the supporting testimony as explained by Dominion. The same statements, theories, and rationales are deficient, whether presented as argument of counsel or expert opinion. The assertion that the Board “discarded without comment the 46-page Hanson Declaration (Ex. 1005) and its 86 pages of charts dealing specifically with the 752 patent (Ex. 1018)” is without merit. Paper 10, 3:18-4:2. The Board has addressed the declaration evidence commensurate in scope with Dominion’s own presentation and discussion of that evidence in the Petition. The term “Petition” here means the 54 pages which constitute Paper 1. As the petitioner, Dominion has the responsibility to identify and explain specific evidence that support its arguments. The Petition itself must identify “specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(5). “The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.” Id. For a request for rehearing, 37 C.F.R. § 42.71(d) provides (emphasis added): 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. Dominion does not identify specifically where in the Petition are discussed meaningfully those parts of Dr. Hanson’s declaration and associated exhibits, IPR2013-00220 Patent 8,005,752 4 which Dominion asserts the Board did not address. It is Dominion’s responsibility to explain specific evidence that support its arguments, not the Board’s responsibility to search the record and piece together what may support Petitioner’s arguments. Dominion cites to more of the record than it meaningfully has developed in the Petition. Dominion should have made its case in the Petition, not in a rehearing request. The Board has not overlooked any part of the disclosures of Weiss or Sheets, to the extent it was developed and presented meaningfully in the Petition. Dominion misunderstands the Board’s discussion about the modules of Weiss. Weiss does disclose that one or more modules may be used collectively. Decision, at 11:11-13. But that disclosure is too generic. The modules need to be combined in a particular manner with various specifics in each to meet the claims, and Dominion has not shown that that particular manner is disclosed inherently. With regard to the obviousness grounds of unpatentability, general principles on what may constitute a supporting rationale cannot substitute for specific application of those principles to the facts. Also, some applications to the facts are nonetheless still not sufficiently specific. For instance, assuming that all of the prior art constitute analogous art to the claimed invention, and further assuming that all of the prior art and the involved patent share the same classification, that does not by itself mean the prior art teachings can be combined in the particular manner required to meet the claims. Dominion does not articulate what specific rationale to combine was discussed in the Petition and allegedly not considered by the Board. The Board could not have misapprehended or overlooked evidence that was not discussed meaningfully in the Petition. The Board also could not have IPR2013-00220 Patent 8,005,752 5 misapprehended or overlooked arguments, such as particular obviousness rationales, that were not presented and discussed specifically in the Petition. The Board’s observation in the Decision that it was unclear whether witness or counsel is making a statement was directed to expressions in a declaration exhibit, which was not separately attested to by the declarant. We have considered the statement and the substantive deficiencies of the statement are the same whether the source is counsel or the witness. Conclusion For reasons discussed above, because Dominion has not complied with the requirements of 37 C.F.R. § 42.71(d), and separately, also because Dominion has not shown that the Board abused its discretion in declining to institute inter partes review of U.S. Patent 8,005,752, the rehearing request is denied. IPR2013-00220 Patent 8,005,752 6 For PETITIONER: Steven J. Rocci Henrik D. Parker rocci@woodcock.com parker@woodcock.com For PATENT OWNER Craig S. Summers Brenton R. Babcock David G. Jankowski 2css@knobbe.com 2brb@knobbe.com 2dgj@knobbe.com

Dominion Dealer Solutions, Llc. v. Autoalert, Inc.