Andra Group, LP

Patent Trials and Appeals Board

Dec 11, 2020

IPR2020-00853 (P.T.A.B. Dec. 11, 2020)

Trials@uspto.gov Paper 14
571-272-7822 Date: December 11, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

VICTORIA’S SECRET STORES LLC,
Petitioner,

v.

ANDRA GROUP, LP,
Patent Owner.
_______________

IPR2020-00853
Patent 8,078,498 B2
_______________

Before LINDA E. HORNER, JAMES A. WORTH, and ERIC C. JESCHKE,
Administrative Patent Judges.

JESCHKE, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request on Rehearing of Decision
Denying Institution of Inter Partes Review
37 C.F.R. § 42.71(c), (d)
IPR2020-00853
Patent 8,078,498 B2

2
I. BACKGROUND
Victoria’s Secret Stores, LLC (“Petitioner”) filed a Petition to institute
an inter partes review of claims 1, 2, 5–8, and 11 (the “challenged claims”)
of U.S. Patent No. 8,078,498 B2 (Ex. 1001, “the ’498 patent”). Paper 1
(“Pet.”). Andra Group, LP filed a Patent Owner’s Preliminary Response.
Paper 10. We denied institution, determining that the Petition did not show
a reasonable likelihood that Petitioner would prevail with respect to at least
one of the challenged claims in any of the three asserted grounds of
unpatentability. See Paper 12 (“Decision on Institution” or “Dec.”).
Petitioner timely filed a Request on Rehearing, requesting “partial
reconsideration” as to one of the three asserted grounds, in which Petitioner
asserted that the challenged claims would have been obvious based on VS
Webpages (Ex. 1031). Paper 13 (“Request on Rehearing” or “Req.
Reh’g.”), at 1; see also Pet. 40, 51–67 (discussing this ground). For the
reasons below, Petitioner’s Request on Rehearing is denied.
II. DISCUSSION
A. Standard of Review
A party requesting rehearing bears the burden of showing that the
decision should be modified. See 37 C.F.R. § 42.71(d) (2019). A request on
rehearing “must specifically identify all matters the party believes the Board
misapprehended or overlooked, and the place where each matter was
previously addressed” in the briefing. Id. When reconsidering a decision on
institution, we review for an abuse of discretion. See 37 C.F.R. § 42.71(c).
IPR2020-00853
Patent 8,078,498 B2

3
B. Petitioner’s Arguments on Rehearing as to the Asserted
Obviousness of Claims 1, 2, 5–8, and 11 Based on VS Webpages
In the Request on Rehearing, Petitioner presents three issues allegedly
misapprehended or overlooked in relation to the asserted ground based on
VS Webpages. See Req. Reh’g 4–12. We address each in turn below.
First, Petitioner argues that VS Webpages is analogous art to the ’498
patent. See Req. Reh’g 5–6. Petitioner asserts that, in the Decision on
Institution, “the Board d[id] not consider (and in fact d[id] not mention at
all) Petitioner’s argument and evidence related to the VS Webpages being
analogous art to the ’498 [p]atent.” Id. at 6.
The fact that the Decision on Institution did not discuss whether VS
Webpages is analogous art to the ’498 patent does not show that we
“misapprehended or overlooked” an argument or evidence. See 37 C.F.R.
§ 42.71(d). An assessment of whether relied-upon art is analogous is a
threshold inquiry in an obviousness analysis. See Johns Manville Corp. v.
Knauf Insulation, Inc., IPR2018-00827, Paper 9 at 10–11 (PTAB Oct. 16,
2018) (Decision Denying Institution) (informative) (“Analogous art is
merely a threshold inquiry as to whether a reference can be considered in an
obviousness analysis. Demonstrating that a reference is analogous art or
relevant to the field of endeavor of the challenged patent is not sufficient to
establish that one of ordinary skill would have had reason to combine its
teachings with other prior art in the manner set forth in the claim.”). Here,
we did not address analogousness because we determined that other issues
were dispositive as to the asserted ground at issue. Specifically, as discussed
below, Petitioner had not shown a reasonable likelihood in prevailing with
its position that human beings fall within the scope of the term “article” (or
“articles”) in the challenged claims. See Dec. 13–18.
IPR2020-00853
Patent 8,078,498 B2

4
Second, Petitioner contends that “the Petition demonstrated, and the
Decision does not discuss, the complete lack of meaningful difference
between the ’498 Patent and the VS Webpages, a key factor for the
obviousness analysis under Graham [v. John Deere Co., 383 U.S. 1
(1966)].” Req. Reh’g 6; see also id. at 6–10 (section titled “The Board
Failed to Consider the Lack of Meaningful Difference Between the VS
Webpages and the ’498 Patent”). According to Petitioner, “there is total
overlap between the technical disclosures of the ’498 Patent and those of the
VS Webpages.” Id. at 6 (citing Pet. 51–67; Weadock Decl. ¶¶ 114–137).
Petitioner contends that “[t]he Petition directly addressed the issue of
whether [one of ordinary skill in the art] would consider the challenged
claims obvious in view of the VS webpages, even if ‘article’ is construed to
exclude humans as the Board has here.” Id. at 7–8 (citing Pet. 57–60, 65–
67; Weadock Decl. ¶¶ 123–128, 135–137). More specifically, Petitioner
argues that the Petition (1) demonstrates that “the differing content of the
images respectively displayed does not alter image file type, size, dimension,
ability to be displayed in the ‘master display field’ or any other aspect
affecting technical function,” (2) “demonstrates that the VS Webpages
includes multiple thumbnails of a particular model from different
perspective views,” and (3) “makes clear that [one of ordinary skill in the
art] would know how, and be motivated, to adopt the teachings of the VS
Webpages and apply them to a set of thumbnail images that ‘are
unremarkably generated from various “view” shots of a particular article
such that a user is shown multiple views of a single item.’” Req. Reh’g 8
(citing: for (1) Pet. 58–60, 65–67; Weadock Decl. ¶¶ 125, 128, 135–137; for
IPR2020-00853
Patent 8,078,498 B2

5
(2) Pet. 57–60, 63–65; Weadock Decl. ¶¶ 123–128, 133–135; for (3) Pet.
66–67; Weadock Decl. ¶ 137).
We disagree with Petitioner’s characterization of the arguments
presented in the Petition. In the Decision on Institution, we expressly stated
that, even in the context of Petitioner’s alternative position—involving
modifying certain images displayed by VS Webpages—“Petitioner
continues to rely on human beings as the ‘article[s].’” Dec. 15 n.9 (citing
Pet. 58–59 (discussing the alternative reliance on Vertex as to clause D), 60
(discussing clause E)). The aspects of the Petition cited in Petitioner’s
Request on Rehearing continue to support this statement.
In the discussion of element D in claims 1 and 7, and element F.i in
claim 11, Petitioner summarizes the relevant claim language as requiring
“the display of different perspective views of the same article.” Pet. 57
(citing Weadock Decl. ¶ 123). To address those elements, Petitioner first
took the position that the “HTML code . . . shows that the VS Webpages
disclose at least two perspective views of the same model (i.e., the same
‘article’), in that each of the thumbnails for some of the models show a
photograph of that model from a different angle or perspective.” Pet. 58.
Then, Petitioner states the alternative position that “[e]ven if the VS
Webpages did not expressly disclose that each thumbnail image displayed is
a different perspective view of the same article, implementing these
elements in the system described by the VS Webpages would not require
any additional experimentation or alteration of the underlying webpage
architecture.” Id. According to Petitioner, “[t]he only change required
would be to alter the images chosen for display such that the thumbnails
IPR2020-00853
Patent 8,078,498 B2

6
displayed embody different views of a single article, particularly as taught
by the Vertex article.” Id. (citing Weadock Decl. ¶ 125).
Considering this discussion, as well as the other portions of the
Petition summarized above (see Req. Reh’g 8) as a whole, Petitioner
consistently took two alternative positions: (1) the images of the models in
VS Webpages already satisfy the requirements recited in the claims and
(2) in the alternative, the images in VS Webpages could be modified to other
images of a single model that satisfy the requirements recited in the claims.
See, e.g., Pet. 58, 60, 66. For the alternative position, Petitioner
ambiguously states that the images could be modified to “different views of
a single article” (Pet. 58 (emphasis added)), but, as discussed in the Decision
on Institution, Petitioner does not take the position that the images of the
“article” would be of anything other than a human being. See, e.g., Pet. 60
(stating, in the alternative with respect to element E in claims 1 and 7 and
element F.ii in claim 11, that one of ordinary skill in the art “would merely
need to replace the currently displayed images with images representing
front, rear, side, or isometric views of a particular article” (emphasis
added)), 66 (stating that one of ordinary skill in the art “would be applying
the known technique of providing multiple thumbnail images for selection
and ultimate display on a master display field, and applying that same
technique to a set of thumbnail images which are unremarkably generated
from various ‘view’ shots of a particular article such that a user is shown
multiple views of a single item” (emphasis added)); see also Dec. 15 n.9
(“Even in the context of the alternative reliance on other prior art (such as
Vertex) for this asserted ground, to modify VS Webpages with ‘different
IPR2020-00853
Patent 8,078,498 B2

7
views of a single article’ (Pet. 58), Petitioner continues to rely on human
beings as the ‘article[s].’”).
Here, Petitioner did not previously argue—as asserted in the Request
on Rehearing—that the challenged claims would have been obvious in view
of the VS webpages “even if” the scope of term “article” did not include
humans. Req. Reh’g 7–8. Accordingly, we could not have misapprehended
or overlooked that issue.
Third, Petitioner argues that the Decision on Institution “errs as a
matter of law because it assigns patentable weight to the subject of an image,
which has no bearing on any alleged technical innovation.” Req. Reh’g 10.
According to Petitioner, “[t]his violates the printed matter doctrine, is an
erroneous interpretation of the law, and therefore is grounds for rehearing.”
Id. (citing Gose v. United States Postal Service, 451 F.3d 831, 836 (Fed. Cir.
2006)). Petitioner argues that “because it is merely printed matter, the
subject matter of the claimed image cannot provide a basis for distinguishing
the challenged claims over the prior art.” Id. at 11; see also id. at 10–11
(arguing that “the only reason cited . . . for denying institution based on
Ground 1 is that the images shown are of people, rather than, apparently,
images of inanimate objects” (citing Dec. 15–18)).
A petitioner for inter partes review “has the burden from the onset to
show with particularity why the patent it challenges is unpatentable.”
Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016)
(citing 35 U.S.C. § 312(a)(3)). The statute “makes the petition the center-
piece of the proceeding both before and after institution.” SAS Inst., Inc. v.
Iancu, 138 S. Ct. 1348, 1355, 1358 (2018). The determination as to the
ground at issue was not due to the Board assigning patentable weight to the
IPR2020-00853
Patent 8,078,498 B2

8
subject of the recited “image[s],” but rather, was due to Petitioner’s failure
to meet its burden to identify how the challenged claims are to be construed
and then show a reasonable likelihood of prevailing in demonstrating that at
least one of the challenged claims, when construed as proposed, is
unpatentable. See 37 C.F.R. § 42.104(b)(2), (3).
Petitioner’s current argument—that the claim language addressing the
subject matter of the recited “image[s]” is not entitled to patentable weight
under the printed matter doctrine—was not presented in the Petition.
Instead, Petitioner affirmatively proposed constructions for many of the
claim terms describing the subject matter of the “image[s]”: “perspective
view” (Pet. 33–34); “front,” “side,” and “rear” views (Pet. 34–35);
“isometric” view (Pet. 35); and “article” (Pet. 40). For example, Petitioner
stated that the parties “agree that the term ‘article’ should be construed to
mean any ‘item’ of any type or class.” Id. at 40. Petitioner did not propose,
even in the alternative, that any of this claim language (including “article”)
was not entitled to patentable weight under the printed matter doctrine. See
generally Pet. Because this issue was not presented in the Petition, we could
not have misapprehended or overlooked it.
C. Asserted Obviousness of Claims 1, 2, 5–8, and 11 Based on Rao
and Vertex & Asserted Obviousness of Claims 1, 2, 5–8, and 11
Based on Smith and Salas
In the Decision on Institution, we determined that the Petition did not
show a reasonable likelihood that Petitioner would prevail with respect to at
least one of the challenged claims in the other two asserted grounds
presented in the Petition: the asserted obviousness of claims 1, 2, 5–8, and
11 based on (1) Rao and Vertex and (2) Smith and Salas. See Dec. 18–39.
In the Request on Rehearing, Petitioner does not address these grounds.
IPR2020-00853
Patent 8,078,498 B2

9
D. Conclusion
For the reasons above, Petitioner has not shown that we
misapprehended or overlooking any arguments or evidence in determining
that the Petition did not show a reasonable likelihood of prevailing with
respect to at least one of the challenged claims in any of the three asserted
grounds of unpatentability.
III. ORDER
For the reasons above, it is:
ORDERED that Petitioner’s Request on Rehearing is denied.
IPR2020-00853
Patent 8,078,498 B2

10
FOR PETITIONER:

Richard W. Miller (lead counsel)
Lynn E. Rzonca
Brian S.S. Auerbach
BALLARD SPAHR LLP
millerrw@ballardspahr.com
rzoncal@ballardspahr.com
auerbachb@ballardspahr.com

FOR PATENT OWNER:

Ryan Loveless (lead counsel)
Brett Mangrum
James Etheridge
Brian Koide
Jeffrey Huang
Jeffrey A. Stephens
ETHERIDGE LAW GROUP
ryan@etheridgelaw.com
brett@etheridgelaw.com
jim@etheridgelaw.com
brian@etheridgelaw.com
jeff@etheridgelaw.com
jstephens@etheridgelaw.com