DOMINION DEALER SOLUTIONS, LLC.v.AUTOALERT, INC.Download PDFPatent Trials and Appeals BoardOct 10, 201310996122 - (D) (P.T.A.B. Oct. 10, 2013) Copy Citation 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 Case IPR2013-00222 U.S. Patent No. 7,827,099 2 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. Case IPR2013-00222 U.S. Patent No. 7,827,099 3 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 Case IPR2013-00222 U.S. Patent No. 7,827,099 4 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. Case IPR2013-00222 U.S. Patent No. 7,827,099 5 III. CONCLUSION Dominion’s request for rehearing is denied. Case IPR2013-00222 U.S. Patent No. 7,827,099 6 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 Copy with citationCopy as parenthetical citation