DOMINION DEALER SOLUTIONS, LLC.v.AUTOALERT, INC.

Patent Trials and Appeals Board

Oct 10, 2013

10996122 - (D) (P.T.A.B. Oct. 10, 2013)

Trial@uspto.gov Paper 17
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 IPR2013-00222
U.S. Patent No. 7,827,099
____________

Before JAMESON LEE, JONI Y. CHANG, and
MICHAEL R. ZECHER, Administrative Patent Judges.

ZECHER, Administrative Patent Judge

DECISION
Dominion’s Request for Rehearing
37 C.F.R. § 42.71

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I. INTRODUCTION
Dominion Dealer Solutions (“Dominion”) requests rehearing (Paper 13,
“Req.”) on the Board’s decision not to institute (Paper 12, “Dec.”) an inter partes
review of claims 1-20 of U.S. Patent No. 7,827,099 (“the ’099 patent”). In its
request for rehearing, Dominion contends that: (1) the Board abused its discretion
by substituting its own views for the testimony of Ward H. Hanson, Ph.D., as to
what the prior art references would have taught one with ordinary skill in the art;
(2) the Board erred by not determining that Weiss inherently discloses generating
alerts for a dealer, as required by independent claim 1; and (3) the Board
overlooked the evidence of record and applied an overly restrictive standard as to a
rationale to combine the prior art references. Req. 2-15. For the reasons set forth
below, Dominion’s request for rehearing is denied.
II. ANALYSIS
When rehearing a decision on institution, the Board reviews the decision for
an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be
determined 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. 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).
We will address each of the issues that Dominion raises in its request for rehearing
in turn.

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First, the Board did not substitute its own views for the testimony of
Dominion’s expert—Dr. Hanson. Req. 3-5. Rather, the Board determined that the
testimony of Dr. Hanson that was developed and presented in the petition was not
supported by sufficient underlying facts or data. 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). Therefore, because the
Board’s decision not to institute an inter partes review of ’099 patent already
explained why the factual evidence relied upon by Dr. Hanson was insufficient, the
Board did not abuse its discretion in deciding how much weight to accord Dr.
Hanson’s testimony. Req. 5-10.
Second, the Board explained why Dominion’s application of the doctrine of
inherency was unpersuasive. Dec. 24-25. In that regard, Dominion’s argument in
the request for rehearing relies upon textual portions of Weiss that were not relied
upon by Dominion in the petition. For instance, Dominion directs us to paragraphs
0022 and 0359 in Weiss, as well as paragraph 94 of Dr. Hanson’s declaration.
Req. 10-11. However, Dominion did not rely upon the aforementioned portions of
the record in the petition. Compare Pet. 34 with Req. 10-11. A request for
rehearing is not an opportunity to present new arguments or evidence that could
have been presented in the petition. Therefore, the Board did not abuse its
discretion in determining that Dominion improperly relied upon the doctrine of
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U.S. Patent No. 7,827,099
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inherency in alleging that Weiss describes generating alerts for a dealer, as
required by independent claim 1.
Third, the Board did not abuse its discretion in determining that Dominion
did not present an articulated reason with a rational underpinning to combine:
(1) Weiss and Sheets; (2) Weiss and Jones; and (3) Weiss, Sheets, and Jones.
Req. 11-13. While Dr. Hanson articulated general principles for combining
teachings of the prior art references (Ex. 1005 ¶ 36), he failed to apply them to the
specific facts of the particular disclosures themselves. Dr. Hanson failed to present
sufficiently and clearly a rationale to combine the prior art references applied by
Dominion.
Moreover, after directing us to paragraphs in Dr. Hanson’s declaration that
were not relied upon by Dominion in the petition, Dominion alleges that Dr.
Hanson’s testimony presents additional explanations that support an articulated
reason with a rational underpinning to combine: (1) Weiss and Sheets; (2) Weiss
and Jones; and (3) Weiss, Sheets and Jones. Req. 13-15 (citing to Ex. 1005 ¶¶ 44,
47-51, and 63-72). As discussed above, a request for rehearing is not an
opportunity to present new arguments or evidence that could have been presented
in the petition. The Board could not have overlooked or misapprehended
arguments or evidence not presented by Dominion in the first instance.
For the foregoing reasons, Dominion has not shown that the Board abused
its discretion when determining not to institute an inter partes review as to claims
1-20 of the ’099 patent.
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III. CONCLUSION
Dominion’s request for rehearing is denied.

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For PETITIONER:
Steven J. Rocci
Henrik D. Parker
WOODCOCK WASHBURN LLP
rocci@woodcock.com
parker@woodcock.com

For PATENT OWNER:
Craig S. Summers
Brenton R. Babcock
David G. Jankowski
Knobbe, Martens, Olson & Bear, LLP
Craig.Summers@knobbe.com
Brent.Babcok@knobbe.com
David.Jankowski@knobbe.com