Compass Bankv.Intellectual Ventures II LLC

Patent Trial and Appeal Board

Mar 9, 2015

09178606 (P.T.A.B. Mar. 9, 2015)

Trials@uspto.gov Paper 22
571-272-7822 Entered: March 9, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

COMPASS BANK, COMMERCE BANCSHARES, INC., and
FIRST NATIONAL BANK OF OMAHA,
Petitioners,

v.

INTELLECTUAL VENTURES II LLC,
Patent Owner.
____________

Case IPR2014-00719
1

Patent 6,314,409 B2

Before KRISTEN L. DROESCH, JENNIFER S. BISK, and
JUSTIN BUSCH, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
37 C.F.R. § 42.71(d)

1
Case IPR2014-00722 has been consolidated with the instant proceeding.
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I. INTRODUCTION
Compass Bank, Commerce Bancshares, Inc., and First National Bank
of Omaha (collectively “Petitioners”) filed two Petitions to institute an inter
partes review of claims 1–11, 13–21, 23–27, 29, 30, 32, 33, and 36–39 of
U.S. Patent No 6,314,409 B2 (“the ’409 Patent”). Paper 1. We instituted
review of only claim 23 of the ’409 Patent and consolidated the proceedings
for both trials. Paper 11. Intellectual Ventures (“Patent Owner”) filed a
Request for Adverse Judgment and disclaimer of claim 23. Paper 17.
Pursuant to Patent Owner’s Request, we entered Judgment against claim 23
of the ’409 Patent on December 12, 2014. Paper 19. Petitioners filed a
Request for Rehearing of the Judgment and Final Written Decision.
Paper 20 (“Req. Reh’g”). For the reasons that follow, Petitioners’ Request
for Rehearing is denied.
II. STANDARD OF REVIEW
In its request for rehearing, the dissatisfied party must identify,
specifically, all matters the party believes the Board misapprehended or
overlooked, and the place where each matter was addressed previously.
37 C.F.R. § 42.71(d).
III. DISCUSSION
Petitioners “request rehearing of the Board’s judgment and final
written decision . . . because the final written decision did not address all of
the claims challenged by Petitioners as required by 35 U.S.C. § 318(a).”
Req. Reh’g 1. Petitioners contend that, in issuing a final written decision
addressing only claim 23, the Board violated § 318(a), and it must rehear the
decision and issue a final written decision that addresses all of the claims
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challenged in the Petition (i.e., claims 1–11, 13–21, 23–27, 29, 30, 32, 33,
and 36–39). Id. at 2.
Petitioners argue that the statutory text of 35 U.S.C. § 318(a) “is plain
and unambiguous ––‘the Patent Trial and Appeal Board shall issue a final
written decision with respect to the patentability of any patent claim
challenged by the petitioner’–– and when statutory text is plain and
unambiguous, it must be applied according to its terms.” Req. Reh’g 3
(citing Sebelius v. Cloer, 133 S. Ct. 1886, 1895–96 (2013); Carcieri v.
Salazar, 555 U.S. 379, 387 (2009); Barnhart v. Sigmon Coal Co., 534 U.S.
438, 450, 461–62 (2002)); see id. at 1–2. Petitioners argue “Congress
included the words ‘any patent claim challenged’ in order to express its
intention that the Board’s final written decision must address all of the
claims challenged in a petition.” Id. at 3–4 (citing United States v.
Rosenwasser, 323 U.S. 360, 362–63 (1945); Barseback Kraft AB v. United
States, 121 F.3d 1475, 1480–81 (Fed. Cir. 1997); Joseph Morton Co. v.
United States, 757 F.2d 1273, 1278–80 (Fed. Cir. 1985)). Petitioners assert
that “other sections of the statute illustrate what Congress meant by a ‘patent
claim challenged by the petitioner,’” referring to 35 U.S.C. §§ 312(a)(3) and
314. Req. Reh’g 4.
Petitioners further contend that because the Patent and Trademark
Office has not issued any rule or regulation interpreting § 318(a) to mean
that the Board’s final written decision need not address all of the claims
challenged in the petition, the Patent and Trademark Office “has impliedly
recognized the clarity of § 318(a).” Req. Reh’g 5 (citing United States v.
Home Concrete & Supply, LLC, 132 S. Ct 1836, 1843–44 (2012)).
Petitioners argue that the lack of any regulation interpreting § 318(a) is in
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contrast to the rules and regulations regarding the institution of inter partes
review. Id. at 5–6 (citing 37 C.F.R. §§ 42.104 (b), 42.108 (a)–(c)).
Petitioners contend that the Office’s regulations refer to the “claim
challenged” or “challenged claims” when referring to the petition content
and threshold requirements for institution of inter partes review, but refers
to “all or some” or “some or all” of the challenged claims when addressing
the scope of an inter partes review. Id. (citing 37 C.F.R. §§ 42.104(b),
42.108 (a)–(c)). Petitioners contend that interpreting “claim challenged,” as
used in § 318(a) to mean only a claim for which inter partes review is
instituted is inconsistent with the meaning attributed to the nearly identical
terms in §§ 42.104 (b) and 42.108 (a)–(c). Id. at 6.
Petitioners also argue that the overall statutory scheme requires that
any final written decision address all of the claims challenged in a petition
because the final written decision will only have limited estoppel effect
under 35 U.S.C. § 315(e). Req. Reh’g 7. Petitioners assert that Congress
intended for an instituted inter partes review to dispose of all of the grounds
that could be raised under §§ 102 and 103 with respect to the claims
challenged in the petition if the proceeding resulted in a final written
decision, and also intended that an instituted inter partes review that resulted
in a final written decision would be subject to appellate review. Id. at 7–8
(citing 35 U.S.C. §§ 141(c), 311(b), 315(e), 319; 157 Cong. Rec. S1376
(daily ed. Mar. 8, 2011)). Petitioners contend that by omitting analysis of
some of the claims from the final written decision, “the Board impermissibly
shields this portion of its analysis and decision-making from the appellate
oversight intended by Congress.” Id. at 8 (citing 35 U.S.C. §§ 141(c),
314(d), 319).
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We are not persuaded that we misapprehended or overlooked
§ 318(a). Notably absent from Petitioner’s arguments is any discussion of
35 U.S.C. § 316(a). Section § 316 requires the Director of the Patent and
Trademark Office to “prescribe regulations . . . setting forth the standards for
the showing of sufficient grounds to institute a review under section 314(a),”
and “establishing and governing inter partes review under this chapter,”
35 U.S.C. § 316(a)(2), (4). One of the prescribed regulations, 37 C.F.R.
§ 42.108, provides the following instructions: “[w]hen instituting inter
partes review, the Board may authorize the review to proceed on all or some
of the challenged claims and on all or some of the grounds of unpatentability
asserted for each claim,” and “may deny some or all grounds for
unpatentability for some or all of the challenged claims. Denial of a ground
is a Board decision not to institute inter partes review on that ground.”
37 C.F.R. § 42.108(a), (b). Another prescribed regulation, 37 C.F.R.
§ 42.73, provides the following instructions: “[a]ctions construed to be a
request for adverse judgment include . . . cancellation or disclaimer of a
claim such that the party has no remaining claim in the trial,” and “[a]
petitioner . . . is estopped in the Office from requesting or maintaining a
proceeding with respect to a claim for which it has obtained a final written
decision on patentability in an inter partes review . . . on any ground that the
petitioner raised or reasonably could have raised during the trial . . . .”
37 C.F.R. § 42.73(b), (d) (emphasis added). A trial is “a contested case
instituted by the Board based upon a petition,” and “specifically includes . . .
an inter partes review under Chapter 31.” 37 C.F.R. § 42.2.
In light of the regulations prescribed properly by the Director pursuant
to 35 U.S.C. § 316, we are not persuaded by Petitioner’s arguments that
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§ 318(a) requires issuance of a final written decision with respect to the
patentability of all of the patent claims challenged by the petition.
Therefore, we are not persuaded that we misapprehended or overlooked
35 U.S.C. § 318(a).
IV. DECISION ON REHEARING
Petitioner’s Request for Rehearing is denied.

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PETITIONERS:
Joseph Melnik
jmelnik@jonesday.com

Geoffrey K. Gavin
ggavin@jonesday.com

Marc Vander Tuig
mvandertuig@senniger.com

Jason Jackson
Jason.jackson@kutakrock.com

PATENT OWNER:
Lori Gordon
lgordon-PTAB@skgf.com

Jonathan Strang
Jstrang-ptab@skg.com

Donald Coulman
dcoulman@intven.com