Google Inc.v.Arendi S.A.R.L.

Patent Trial and Appeal Board

Jul 25, 2014

11745186 (P.T.A.B. Jul. 25, 2014)

Trials@uspto.gov Paper 12
571-272-7822 Entered: July 25, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MOTOROLA MOBILITY LLC, GOOGLE INC., and APPLE INC.
Petitioners

v.

ARENDI S.A.R.L.
Patent Owner

Case IPR2014-00203
Patent 8,306,993 B2

Before SALLY C. MEDLEY, TREVOR M. JEFFERSON, and
PETER P. CHEN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

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

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INTRODUCTION
In a Decision entered June 5, 2014 (Paper 10, “Decision”), the Board denied
the request of Motorola Mobility LLC, Google Inc. and Apple Inc. (collectively,
Petitioner) for inter partes review as to claims 1-24 of U.S. Patent No. 8,306,993
B2. Petitioner has filed a timely request for rehearing (Paper 11, “Req. Reh’g”).
A request for rehearing must identify specifically all matters the party
believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When
rehearing a decision on petition, a panel reviews the decision for an abuse of
discretion. 37 C.F.R. § 42.71(c). The burden of showing a decision should be
modified is on the party challenging the decision. 37 C.F.R. § 42.71(d).
For the reasons that follow, the request for rehearing is denied.
DISCUSSION
Petitioner requests rehearing on the denial of inter partes review of claims 1-
4, 6-12, 14-20, and 22-24 on the ground of obviousness over Bonura and
Magnanelli, and of claims 5, 13, and 21 on the ground of obviousness over Bonura,
Magnanelli, and Giordano.
Petitioner first contends that the combination of Bonura and Magnanelli
discloses the limitation in the three independent claims that Patent Owner asserts is
missing, namely, “allowing the user to make a decision whether to store at least
part of the first contact information in the contact database as a new contact or to
update an existing contact in the contact database.” Petitioner now argues that its
“element-by-element mapping of the claims” in the claim charts of the Corrected
Petition (Paper 5, “Pet.”) was not as “relevant” as its arguments preceding the
claim charts. Req. Reh’g 3 (citing Pet. 12-21). Petitioner adds that the Board
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“may not have focused” on Petitioner’s arguments on motivation to combine, as set
forth in the arguments preceding the claim charts. Req. Reh’g 3.
Petitioner’s concerns are misplaced. We reviewed and considered fully the
entire Petition, including Petitioner’s contentions regarding Bonura and
Magnanelli:
Petitioner contends that claims 1, 2, 4, 7-10, 12, 15-18, 20, and 23-24 are
unpatentable under 35 U.S.C. § 103(a) as obvious over Bonura and
Magnanelli. In support of this asserted ground of unpatentability, Petitioner
provides explanations of how it alleges the subject matter of each claim is
disclosed by the combined teachings of Bonura and Magnanelli. Pet. 11-33.

Decision 14. We determined that:
The combination of Bonura and Magnanelli, however, does not describe
allowing the user to make a decision to store or to update, because there is
no language or depiction in either reference of such a choice being
presented. Nor has Petitioner provided a reason why a person of ordinary
skill in the art would modify the combination to arrive at the claimed
invention and, in particular, the single step of making a single decision
whether to store contact information as a new contact or, alternatively, to
update an existing contact.

Decision 15-16.
The Request for Rehearing reargues this issue, and also reargues Petitioner’s
related and conclusory assertions in the Petition as to KSR Intl Co. v. Teleflex, Inc.,
550 U.S. 398 (2007). We are not persuaded of any abuse of discretion,
misapprehension or overlooking of any matters in the Decision’s analyses and
determinations on the combination of Bonura and Magnanelli. We reiterate that
Petitioner failed to demonstrate a reasonable likelihood that it would prevail in its
grounds 1 (based on Bonura and Magnanelli) and 2 (based on Bonura, Magnanelli,
and Giordano). Decision 15-16.
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Petitioner also contends that we failed to give the broadest reasonable
interpretation to certain language in the independent claims 1, 9, and 17. Req.
Reh’g 13-15. In particular, as we stated at page 10 of the Decision, the
independent claims recite “allowing the user to make a decision whether to store at
least part of the first contact information in the contact database as a new contact or
to update an existing contact in the contact database.” We noted in the Decision
that “Patent Owner asserts that this term should be construed as ‘presenting to the
user a choice between competing alternatives of storing a new contact or updating
an existing contact.’” Decision 10.
Petitioner acknowledged the Patent Owner’s proposed construction, but
offered what it styled as “the second interpretation” of the disputed limitation, i.e.,
the user’s decision being whether to store or not to store, or to update or not to
update. Pet. 10. Petitioner concluded that Patent Owner’s proposed construction
was proper, but sought to add its second interpretation, “[b]ecause the term is
ambiguous, the broadest reasonable interpretation should include either
construction.” Id.
In the Decision, we disagreed and stated:
We determine that this second interpretation in Petitioner’s proposed
construction is not within the broadest reasonable construction of the term.
The plain language requires a single step of making a single decision to store
or update, not two separate, alternating steps for a user either to decide to
store or to decide to update, as Petitioner seems to suggest. Thus, we agree
with the Patent Owner that the plain language of the claim requires
presenting to the user a choice between competing alternatives of storing a
new contact or updating an existing contact.

Decision 11.
In the Request for rehearing, Petitioner reargues the “second interpretation”
position from the Petition, and asserts that its “citations [to the ’993 specification]
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were, in fact, highly relevant and should have been considered.” Req. Reh’g 14.
We did indeed consider the Petitioner’s citations (see Decision 11), and were not
persuaded by them, or by the so-called “second interpretation.” The Request for
Rehearing similarly is not persuasive as to Petitioner’s position on the claim
construction issue. As noted in the Decision, we determined that the Petitioner’s
proposed construction for this limitation is not the broadest reasonable
construction.
CONCLUSION
In view of the foregoing, Petitioner has not carried its burden of
demonstrating an abuse of discretion by the Board in misapprehending or
overlooking any matters. 37 C.F.R. § 42.71(d).
ORDER
Accordingly, it is ORDERED that Petitioners’ request for rehearing is
denied.

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PETITIONER:
Matthew Smith
Zhuanjia Gu
TURNER BOYD LLP
smith@turnerboyd.com
gu@turnerboyd.com

David Fehrman
Mehran Arjomand
MORRISON & FOERSTER LLP
dfehrman@mofo.com
marjomand@mofo.com

PATENT OWNER:
Robert Asher
Bruce Sunstein
SUNSTEIN KANN MURPHY & TIMBERS LLP
rasher@sunsteinlaw.com
bsunstein@sunsteinlaw.com