Rovi Guides, Inc.

Patent Trials and Appeals Board

Jun 10, 2020

IPR2019-01431 (P.T.A.B. Jun. 10, 2020)

Trials@uspto.gov Paper 22
571-272-7822 Date: June 10, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

COMCAST CABLE COMMUNICATIONS, LLC,
Petitioner,
v.
ROVI GUIDES, INC.,
Patent Owner.

IPR2019-01431
Patent 8,272,019 B2

Before JAMESON LEE, WESLEY B. DERRICK, and
SHEILA F. MCSHANE, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION
Denying Patent Owner’s Request on Rehearing
37 C.F.R. § 42.71

IPR2019-01431
Patent 8,272,019 B2
2
I. INTRODUCTION
On February 6, 2020, Patent Owner Rovi Guides, Inc., filed a Request
for Rehearing (Paper 13, “Reh’g Req.”) under 37 C.F.R. § 42.71(d) of the
Board’s Decision Granting Institution of Inter Partes Review (Paper 10,
“Decision” or “Dec.”) of claims 1–20 of U.S. Patent No. 8,272,019 B2 (“the
’019 patent”). Patent Owner also filed a Petition under 37 C.F.R.
§ 1.181(a)(3) Invoking the Supervisory Authority of the Director (Paper 12).
The § 1.181(a)(3) petition was denied. Paper 18. Patent Owner also filed a
request for Precedential Opinion Panel (POP) review of an issue. Paper 14.
That request was denied. Paper 17.
II. STANDARD OF REVIEW
When rehearing a decision on institution, we do not review the merits
of the decision de novo, but instead review the decision for an abuse of
discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a
“decision was based on an erroneous conclusion of law or clearly erroneous
factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v.
Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988)
(citations omitted). The party requesting rehearing has the burden to show
that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally,
the request for rehearing “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.” Id.
III. ANALYSIS
Patent Owner’s Request for Rehearing focuses on the Federal
Circuit’s decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941.3d 1320
(Fed. Cir. 2019). See generally Reh’g Req. Patent Owner argues as follows:
(1) because the Federal Circuit’s mandate has not issued in Arthrex, the
IPR2019-01431
Patent 8,272,019 B2
3
Administrative Patent Judges presiding over the instant proceeding remain
unconstitutionally appointed, and, therefore, the instant proceeding should
be stayed (Reh’g Req. 5–7); (2) the proceedings should be stayed because
the Arthrex remedy does not go far enough and violates the Administrative
Procedure Act (APA) (id. at 7–11 (citing, e.g., concurring opinions in
Polaris Innovations Ltd. v. Kingston Tech. Co., 792 Fed. Appx 820 (Fed.
Cir. 2020) (unpublished))); and (3) intervention from Congress and agency
rulemaking may be necessary to remedy the defect identified in Arthrex, so
termination of the proceeding is warranted (id. at 13).
The Federal Circuit’s mandate has now issued. Arthrex, Inc. v. Smith
& Nephew, Inc., No. 2018-2140, Dkt. No. 119 (Fed. Cir. April 6, 2020)
(Ex. 3002). As to the contended insufficiency in the remedy set forth in
Arthrex, Patent Owner’s position is contrary to that decision by our
reviewing court. See Arthrex, 941 F.3d at 1337 (“This as-applied severance
. . . cures the constitutional violation.”). Further, as set forth in the Decision,
we determined that Arthrex did not warrant terminating or staying this case.
Dec. 49. First, we set forth that “Arthrex indicates that there is ‘no
constitutional infirmity’ in an institution decision.” Id. (citing Arthrex,
941 F.3d at 1340). Second, we set forth that “the Board generally declines
to stay proceedings pending an appeal to the Federal Circuit or the Supreme
Court.” Id. (citing Askeladden LLC v. Purple Leaf, LLC, IPR2016-1720,
Paper 22 at 2 (PTAB Sept. 11, 2017). Patent Owner’s disagreement with
Arthrex and the sufficiency of its remedy does not meet Patent Owner’s
burden here. In sum, Patent Owner’s arguments do not identify any matter
misapprehended or overlooked in our Decision, nor do they identify any
abuse of discretion.
IPR2019-01431
Patent 8,272,019 B2
4
On this record, Patent Owner neither persuades us that we overlooked
or misapprehended any matter, nor sufficiently shows that instituting an
inter partes review of claims 1–20 of the ’019 patent was an abuse of
discretion.
IV. ORDER
For the reasons given, it is:
ORDERED that Patent Owner’s Request for Rehearing is denied.

IPR2019-01431
Patent 8,272,019 B2
5
FOR PETITIONER:

Frederic M. Meeker
Bradley C. Wright
Bennett A. Ingvoldstad
Brent K. Whitlock
Grant M. Hodgson
Blair A. Silver
Banner & Witcoff, Ltd.
fmeeker@bannerwitcoff.com
bwright@bannerwitcoff.com
bingvoldstad@bannerwitcoff.com
bwhiteelock@bannerwitcoff.com
ghodgson@bannerwitcoff.com
bsilver@bannerwitcoff.com

FOR PATENT OWNER:

Jason Eisenberg
Christian Camarce
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
jasone-ptab@sternekessler.com
ccamarce-ptab@sternekessler.com