09350467 (P.T.A.B. Mar. 4, 2015)

Google Inc.v.SimpleAir, Inc.

Patent Trial and Appeal BoardMar 4, 2015

09350467 (P.T.A.B. Mar. 4, 2015)

Trials@uspto.gov Paper 16 571-272-7822 Date: March 4, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ GOOGLE INC., Petitioner, v. SIMPLEAIR, INC., Patent Owner. _______________ Case CBM2014-00170 Patent 7,035,914 B1 _______________ Before MICHAEL R. ZECHER, STACEY G. WHITE, and TINA E. HULSE, Administrative Patent Judges. HULSE, Administrative Patent Judge. DECISION Denying Petitioner’s Request for Rehearing of Institution Decision 37 C.F.R. § 42.71(d) CBM Paten busin Paten Simp to th argu grou insti Dart (3) th the f shou belie wher or a insti 37 C 1 As 2 Ka 3 Gif to La COM 4 Ne 2014-001 t 7,035,9 Google I ess metho t No. 7,03 leAir, Inc e Petition. ments and nds. Pape Petitione tute trial o mouth Sys e Nelson4 ollowing r A party ld be mod ves the Bo e each ma reply. 37 tution, we .F.R. § 42 discussed ne, WO 94 ford et al., rge Scale MUNICATI lson et al., 70 14 B1 I. nc. (“Petit d patent r 5,914 B1 . (“Patent Paper 10 evidence p r 13 (“Dec r filed a R n the follo tem1 Grou -Kane Gro easons, Pe II requesting ified by sp ard misap tter was ad C.F.R. § 4 review the .71(c). An in Exs. 10 /08419, pu The Appl Informatio ONS 457–6 US 5,347 2 INTR ioner”) fil eview of c (“the ’914 Owner”) t (“Prelim. resented, .” or “Dec equest for wing three nds; (2) th unds. Pap titioner’s r AN. rehearing ecifically prehended dressed p 2.71(d). W decision abuse of 10–1015. blished A ication of D n Systems 7 (1985) ( ,268, issue ODUCTIO ed a Petiti laims 1–3, patent”). imely filed Resp.”). U we denied ision”). Rehearing sets of gr e Kane2-G er 15 (“R equest is d ALYSIS has the bu identifying or overlo reviously i hen rehea for an abu discretion pr. 14, 19 igital Bro , 3 IEEE J Ex. 1007) d Sept. 13 N on request 7, and 22 Paper 2 (“ a Prelimi pon cons the Petiti of the De ounds: (1) ifford3 Gr eh’g Req.” enied. rden to sh all matte oked, and n a motion ring a dec se of discr may be in 94 (Ex. 10 adcast Co . ON SELEC . , 1994 (Ex ing a cove –24 of U.S Pet.”). nary Resp idering the on on all cision not the ounds; an ) at 2–3. ow a decis rs the party the place , oppositi ision on etion. dicated if 09). mmunica TED AREA . 1008). red . onse to d For ion on, a tion S IN CBM2014-00170 Patent 7,035,914 B1 3 decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). A. “instantaneously” Petitioner asserts that, in the Petition, it “explained that ‘instantaneous’ notification, as described in the ’914 patent, involves ‘the ability to receive ‘on-line’ information even when the user is ‘off- line’.’” Reh’g Req. 3 (citing Ex. 1001, 7:7–9). Petitioner then emphasizes repeatedly the Specification’s disclosure that “a remote computer 14 can receive information instantly—even while it is off- line.” Id. at 3–5 (citing Ex. 1001, 7:5–9). To the extent Petitioner is suggesting an alternative construction, we are not persuaded. Receiving information instantly and receiving information while off- line are two distinct features of claim 1. Claim 1 recites “[1] instantaneously notifying said devices of receipt of said preprocessed data [2] whether said computing devices are online or offline from a data channel associated with each device.” Equating “instantaneously notifying” with notifying whether the device is online or offline from a data channel would render the term “instantaneously” superfluous, which we decline to do. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that render phrases in claims superfluous). CBM2014-00170 Patent 7,035,914 B1 4 Petitioner also argues that because the Specification does not define “instantaneous” or “very short,” “the best roadmap for interpreting those terms is to look to how the specification describes how the specification notifies.” Reh’g Req. 5. Petitioner then argues that because the prior art “instantaneously” notifies in the same way as the ’914 patent, we should reconsider our decision not to institute inter partes review on the requested grounds. As explained below, however, we could not have misapprehended or overlooked this argument, because Petitioner raises it for the first time in its Request for Rehearing. B. The Dartmouth System Grounds In the Petition, Petitioner asserts that the Dartmouth System notifies the user device “asynchronously” and, therefore, discloses the “instantaneously notifying” step of claim 1. Pet. 38–39. But, as we stated in our Decision, Petitioner has not explained how “asynchronously notifying” discloses “instantaneously notifying,” as required by the claim. Dec. 21. We maintain our initial determination in that regard. Petitioner now attempts to explain further what “asynchronously” allegedly means. Petitioner asserts that the Campbell paper (Ex. 1011) teaches that the system “‘informs users exactly when it is useful to do so,’ and it is only useful in a very short space of time.” Reh’g Req. 8 (citing Ex. 1011, 355). Petitioner also expounds on the cited testimony of its declarant, Mr. James Matthews 5 Page 36 of Exhibit 1011 is cited in the Rehearing Request, but the cited material is found on page 35. CBM2014-00170 Patent 7,035,914 B1 5 (Ex. 1010), explaining that “[c]ontinuously listening for activity guarantees that notification will occur when activity is heard.” Id. at 9 (referring to Ex. 1010 ¶ 56). As Petitioner acknowledges, however, these arguments and citations to the evidence were not presented in the Petition. Id. (stating that “[a]lmost all the passages . . . were cited” in the Petition) (emphasis added). Accordingly, we could not have misapprehended or overlooked an argument that was missing or explained inadequately in the first instance in the Petition. We, therefore, deny Petitioner’s request to reconsider the Dartmouth System grounds. C. The Kane-Gifford Grounds Petitioner argues that Kane and the ’914 patent both notify by paging and, thus, are both equally “instantaneous.” Reh’g Req. 11– 13. Petitioner describes the operation of Kane, and then states, “[t]ypical of page receivers, the ’914 patent operates in the same way. . . . Both operate as page receivers typically operate, and both describe that operation as a sequential series of steps without delay.” Id. at 12. Again, however, Petitioner presents this argument for the first time in its Request for Rehearing. We could not have misapprehended or overlooked whether Kane and the ’914 patent both notify instantaneously if it was never argued in the Petition. Petitioner also argues that the use of buttons and switches, as taught by Kane, is “inapposite to the notification of the device.” Id. at 13. This, however, is contrary to Petitioner’s argument in the Petition: As discussed above, Kane’s selective call receiver 130 includes a paging receiver 134. The paging receiver 134 provides the received message to a controller 136, which “determine[s] CBM2014-00170 Patent 7,035,914 B1 6 whether the received message is intended for the particular selective call receiver 130.” ([Ex. 1009], 6:34–36.) A user of the “selective call terminal 130” can “access user input means 141[, such as buttons or switches,] at the remote unit 130 to cause the message data of a received message to be displayed.” (Id., 7:1–5.) In this way, the paging receiver 134 and the controller 136 instantaneously notify the selective call receiver 130 upon receipt of the message. Pet. 61–62 (emphasis added). Thus, Petitioner relied expressly, in part, on the buttons or switches (i.e., “user input means 141”) as support for the instantaneously notifying step. In our Decision, however, we were not persuaded by this argument, stating, “[T]hat a user can cause a received message to be displayed via buttons or switches says nothing about how and when the device is notified.” Dec. 25. Regardless, Petitioner now appears to agree that this disclosure does not support the argument it originally presented in the Petition. Because Petitioner has not persuaded us otherwise, we deny Petitioner’s request to reconsider the Kane-Gifford Grounds. D. The Nelson-Kane Grounds Petitioner argues that Nelson also describes notification by page, which is “indistinguishable from the ’914 patent’s paging.” Reh’g Req. 14. Again, for the reasons stated above, this is a new argument that we decline to consider on rehearing. Petitioner also argues that the panel erroneously rejected the testimony of its witness, Dr. Vijay Madisetti, who explained that “Nelson does not mention that any delay occurs between receipt of the message and providing the resultant information to the computing CBM2014-00170 Patent 7,035,914 B1 7 device. Therefore, I believe that the selective call receiver instantaneously notifies the computing device that a message has been received.” Id. (quoting Ex. 1002 ¶ 175). Petitioner fails to acknowledge, however, that the Petition does not cite or refer to this testimony in the Petition, as we noted in the Decision. Dec. 27. Regardless, even if we were to consider this testimony from Dr. Madisetti’s, which was not presented or developed in the Petition, we remain unpersuaded. While it is true that prior art is relevant for all that it teaches to those of ordinary skill in the art (Reh’g Req. 14–15), we give little to no weight to testimony that does not disclose the underlying facts or data on which the opinion is based. 37 C.F.R. § 42.65(a). Here, Dr. Madisetti merely notes Nelson’s silence as to any delay, and then states in a conclusory fashion that he believes Nelson teaches instantaneous notification. Ex. 1002 ¶ 175. In our view, this is insufficient because Dr. Madisetti does not explain why Nelson’s silence suggests to a person of ordinary skill in the art that the notification is instantaneous. Although Petitioner attempts to supplement Dr. Madisetti’s testimony in this regard in its Request, we decline to reconsider our Decision based on these new arguments. We, therefore, deny Petitioner’s request to reconsider the Nelson-Kane Grounds. CBM Paten dem matt Petit PET Mich Josep Stern mike jmut PAT Char Robe Buch char robe 2014-001 t 7,035,9 We conc onstrating ers. 37 C. In consid ioner’s req ITIONER ael Messi h Mutsch e, Kessler m-PTAB@ sche-PTA ENT OWN les Wielan rt Mukai anan Inge les.wieland rt.mukai@ 70 14 B1 III. lude that P that our D F.R. § 42.7 I eration of uest for re : nger elknaus , Goldstei skgf.com B@skgf.co ER: d III rsoll & Ro @bipc.co bipc.com 8 CON etitioner h ecision mi 1(d). OV. the forego hearing is n & Fox m oney PC m CLUSION as not car sapprehen RDER ing, it is h denied. ried its bu ded or ove ereby OR rden of rlooked an DERED th y at

Google Inc. v. SimpleAir, Inc.