Indoor Skydiving Germany GmbHv.iFLY Holdings, LLC

Patent Trial and Appeal Board

Jan 5, 2016

10189698 (P.T.A.B. Jan. 5, 2016)

Trials@uspto.gov Paper 14
Tel: 571-272-7822 Entered: January 5, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

INDOOR SKYDIVING GERMANY GMBH,
Petitioner,

v.

IFLY HOLDINGS LLC,
Patent Owner.
_______________

Case IPR2015-01272
Patent RE43,028 E
_______________

Before RICHARD E. RICE, JEREMY M. PLENZLER, and
JAMES A. WORTH, Administrative Patent Judges.

RICE, Administrative Patent Judge.

DECISION
Request for Rehearing
37 C.F.R. § 42.71(d)

Petitioner requests rehearing of the Board’s Decision Denying
Institution (IPR2015-01272, Paper 12, “Dec.”) entered on November 18,
2015, denying an inter partes review of claims 1–3, 12–16, 18, 19, 21, 22,
28–30, 43, and 44 of U.S. Patent No. RE43,028 (Ex. 1001, “the
IPR2015-01272
Patent RE43,028 E

2
’028 Patent”). Paper 13 (“Req. Reh’g”). For the reasons that follow,
Petitioner’s Request for Rehearing is denied.
DISCUSSION
The applicable standard for granting a request for rehearing of a
petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The
requirements for a rehearing are set forth in 37 C.F.R. § 42.71(d), which
provides in relevant part:
A party dissatisfied with a decision may file a request for
rehearing, without prior authorization from the Board. 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.
In this case, Petitioner seeks a rehearing with respect to challenges 1–
4 and 7–8 of its Petition, on two grounds. Req. Reh’g 3. The two grounds
are that: “(a) Petitioner has not been afforded an opportunity to respond
under the rules, and/or (b) the determination that the documents did not
qualify as prior art printed publications was clear error, and therefore it was
an abuse of discretion to deny institution of the inter partes review on that
basis.” Id. We consider Petitioner’s arguments below.
Petitioner first argues for “a rehearing to allow Petitioner to address
the admissibility of the prior art publications and, subsequently,
consideration of the prior art publications for institution of the inter partes
review.” Id. at 5. Petitioner asserts that it “did not respond to the
admissibility issue because Petitioner understood it could not respond
substantively to admissibility of evidence prior to the ruling of institution by
IPR2015-01272
Patent RE43,028 E

3
the Board.” This argument misapprehends our Decision Denying Institution,
in which we determined that Petitioner had failed to make even a threshold
showing in its Petition that the documents at issue were prior art printed
publications. Dec. 9–10, 11–12, 16–17. A request for rehearing is not an
opportunity to present new evidence or to address issues for the first time.
See 37 C.F.R. § 42.71(d).
Petitioner next argues that “the Board should have independently
determined the documents at issue were viable prior art publications, and
should not simply have accepted Patent Owner’s erroneous arguments.”
Req. Reh’g 6. This argument is unpersuasive, because it attempts to shift, to
the Board, Petitioner’s statutory burden to demonstrate a reasonable
likelihood of prevailing with respect to the challenged claims. See 35 U.S.C.
§ 314(a).
Petitioner also argues that one of the documents at issue—a paper by
A.I. Neihouse entitled Design and Operating Techniques of Vertical Spin
Tunnels (Ex. 1005)—is listed under “Other Publications,” and cited at
column 2, lines 2:32–33, of the ’028 Patent. Req. Reh’g 6–7. In our
Decision Denying Institution, we described the Neihouse paper as follows:
“Exhibit 1005 is a paper by A.I. Neihouse, titled ‘Design and Operating
Techniques of Vertical Spin Tunnels,’ which is part of a collection of papers
presented at the Sixth Meeting of the Wind Tunnel and Model Testing Panel
of the Advisory Group for Aeronautical Research and Development
(AGARD) in Paris, France on November 6, 1954.” Dec. 9. The citation at
column 2 of the ’028 Patent reads: “AGARD Memorandum; Advisory
Group for Aeronautical Research and Development, Paris France, 1954.”
Ex. 1001, 2:32–33. This citation, by itself, does not identify the Neihouse
IPR2015-01272
Patent RE43,028 E

4
paper, and Petitioner has not brought to our attention any other evidence or
indication, in the Petition, that the Neihouse paper and the cited “AGARD
Memorandum” are one and the same. We note, furthermore, that the
document listed under “Other Publications” in the ’028 Patent is “AGARD
Memorandum; Advisory Group for Aeronautical Research and
Development, Paris, France 1954, Revised Oct. 1971.” Ex. 1001, at (56)
(emphasis added). Petitioner has not argued that the document filed as
Exhibit 1005 was revised in 1971. For these reasons, and because Petitioner
did not raise these issues in its Petition, we are not persuaded that we
misapprehended or overlooked any matter in determining that Petitioner did
not make a threshold showing that the Neihouse paper is a prior art printed
publication. Dec. 9–10.
Petitioner further argues: “Even if the Board overlooked the fact this
prior art reference was cited in the ’028 patent, the Board erroneously failed
to evaluate its authenticity under the Federal Rules of Evidence.” Req.
Reh’g 7. Petitioner contends that the Neihouse paper qualifies as prior art
pursuant to Rule 901(8) of the Federal Rules of Evidence as an ancient
document. Id. at 7–8. This argument is new and, therefore, not appropriate
in a request for rehearing. See 37 C.F.R. § 42.71(d). Further, the issue of
whether the Neihouse paper qualifies as a prior art printed publication does
not depend on its authenticity, but rather on whether the document was
publicly accessible1 in the prior art time frame. See Dec. 9–10.

1 As we stated in our Decision Denying Institution: “A reference is publicly
accessible upon a satisfactory showing that such document has been
disseminated or otherwise made available to the extent that persons
interested and ordinarily skilled in the subject matter or art exercising

IPR2015-01272
Patent RE43,028 E

5
Petitioner also argues that another of the disputed documents, Exhibit
1032, is a prior art printed publication, as evidenced by the fact that it was
cited in U.S. Patent No. 4,917,333, filed May 11, 1988, and issued April 17,
1990. Req. Reh’g 8. Petitioner has not identified, however, where this
argument/evidence was presented in the Petition. A request for rehearing is
not a vehicle to present new arguments or new evidence. See 37 C.F.R.
§ 42.71(d).
Similar to its argument with respect to Exhibit 1005, Petitioner argues
that Exhibits 1006, 1007, 1009, 1019, and 1032 qualify as prior art pursuant
to Rule 901(8) of the Federal Rules of Evidence because they are ancient
documents. See Req. Reh’g 8–12. Petitioner also argues that Exhibit 1019
is self-authenticating under FRE 902(6). Id. at 11. As we stated in
connection with Petitioner’s similar argument with respect to Exhibit 1005,
these new arguments are not appropriate in a request for rehearing. See
37 C.F.R. § 42.71(d). Furthermore, the issue of whether these exhibits
qualify as prior art printed publications does not depend on their
authenticity, but rather on their public accessibility in the prior art time
frame. Petitioner has not persuaded us that we overlooked or
misapprehended any matter relating to the public accessibility of these
documents.

reasonable diligence, can locate it.” Dec. 8 (quoting Kyocera Wireless Corp.
v. ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (internal citation and quotation
marks omitted)).
IPR2015-01272
Patent RE43,028 E

6
Petitioner also presents new evidence, in the form of Google search
results, that Exhibit 1019 was publicly accessible. Req. Reh’g 11–12. We
do not consider this new evidence. See 37 C.F.R. § 42.71(d).
Finally, Petitioner argues that we could have considered Exhibit 1008
“individually” in our analysis of the challenges in the Petition that were
based in part on the “Wright-Patterson Documents”—a the collection of
exhibits consisting of Exhibits1008, 1009, and 1010. Req. Reh’g 12.
Petitioner does not contend, however, that Exhibit 1008 was asserted
individually in the Petition. We are not persuaded that we misapprehended
or overlooked any matter by considering, in our Decision Denying
Institution, only the challenges that Petitioner actually asserted.
CONCLUSION
Petitioner has not persuaded us that the determination not to institute
an inter partes review was an abuse of our discretion, or that we
misapprehended or overlooked any matter. Accordingly, we deny the
Request for Rehearing.
ORDER
For the reasons given, it is
ORDERED that the Request for Rehearing is denied.

IPR2015-01272
Patent RE43,028 E

7
PETITIONER:
Rick C. Chang
Duane H. Mathiowetz
LeClairRyan LLP
rick.chang@leclairryan.com
duane.mathiowetz@leclarryan.com

PATENT OWNER:

Erika H. Arber
James D. Stein
Justin E. Loffredo
Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP
iFlyPTAB@finnegan.com

Stephen M. Hash
David B. Weaver
Vinson & Elkins LLP
shash@velaw.com
dweaver@velaw.com

Margaret Polson
Polson Intellectual Property Law, PC
mail@polsoniplaw.com