International Business Machines Corporationv.Intellectual Ventures II LLC

Patent Trial and Appeal Board

Dec 23, 2014

09178606 (P.T.A.B. Dec. 23, 2014)

Trials@uspto.gov Paper 14
571-272-7822 Entered: December 23, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

INTERNATIONAL BUSINESS MACHINES CORPORATION,
Petitioner,

v.

INTELLECTUAL VENTURES II LLC,
Patent Owner.
____________

Case IPR2014-00672
Patent 6,314,409 B2

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

DROESCH, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request for Rehearing
37 C.F.R. § 42.71(d)

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I. INTRODUCTION
International Business Machines Corporation (“Petitioner”) filed a
Request for Rehearing of our Decision of September 22, 2014 (Paper 12,
“Decision” or “Dec.”). Paper 13 (“Req. Reh’g”). Our Decision denied
institution of inter partes review of claims 1–11 and 13–21 of U.S. Patent
No. 6,314,409 B2. Dec. 14. Petitioner requests rehearing of our Decision
not to review claims 1–6, 8–11, 13, and 21 as anticipated by Digibox, and
claims 7 and 14–20 as obvious over Digibox in view of Stefik
1
. Req. Reh’g
1; see Pet. 4. For the reasons that follow, Petitioner’s 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). Upon a request for rehearing, the decision on a
petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).
III. DISCUSSION
Petitioner contends that we misapprehended evidence in the Petition
(Req. Reh’g 3–4) and overlooked Mr. Rosenblatt’s expert declaration (id. at
4–5) in finding that the Petition does not explain how Digibox discloses
limited or controlled access to unprotected forms of the protected data as
enforced by an access mechanism (“the limited or controlled access to

1
Petitioner requests rehearing of our Decision denying institution of Ground
1 set forth in the Petition. The Petition identifies Ground 1 as the
unpatentability of claims 1–6, 8–11, 13, and 21 as anticipated by Digibox
and claims 7 and 14–20 as obvious over Digibox in view of Stefik.
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unprotected forms of data limitation”), as required by claims 1 and 21.
Petitioner asserts that the Petition shows clearly that Digibox teaches the
limited or controlled access to unprotected forms of data limitation. Id. at 3.
Petitioner directs our attention to several similar quotations from the
Digibox reference disclosing encrypted digital information contained in a
Digibox, which were relied upon in the Petition to address claims 1 and 21.
Req. Reh’g 3 (citing Pet. 9 (citing Ex. 1008, 8), Pet. 11 (citing Ex. 1008, 9),
Pet. 28). Petitioner also directs our attention to the discussion in the Petition
of “access rules (or access control rights) that can designate who may
‘unlock’ a DigiBox.” Id. (citing Pet. 10).
Petitioner, however, fails to show how we misapprehended or
overlooked this evidence and argument in analyzing claims 1 and 21. To
establish that we misapprehended or overlooked this evidence and argument,
Petitioner refers to its argument on page 10 of the Petition. The cited
argument, however, relates to Petitioner’s original argument that Digibox’s
disclosure of access rules that can designate who can unlock a Digibox
meets the limitation recited in dependent claim 6 that “the rules indicate
which users are allowed to access the protected portions of the data.” Pet.
10; see id. at 15. Petitioner fails to direct us to an original argument in the
Petition that addresses Digibox’s disclosure of access rules that can
designate who can unlock a Digibox in relation to the limitations of claims 1
and 21.
Moreover, even if this argument was made in relation to claims 1 and
21, the Petition does not explain how Digibox’s disclosure of access rules
that can designate who may unlock a DigiBox, together with Digibox’s
disclosure of encrypted (i.e., protected) digital information contained in the
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Digibox, discloses limited or controlled access to an unprotected (i.e.,
unencrypted) form of the protected portions of the data, as required by
claims 1 and 21.
In effect, Petitioner’s arguments in the Request for Rehearing allege
that we misapprehended the evidence in the Petition because we did not fit
together Petitioner’s dispersed puzzle pieces of quotations and disclosures
from Digibox. Contrary to Petitioner’s arguments, however, our rules state
that each petition must include a detailed explanation of the significance of
the evidence, and must specify where each element of the claim is found in
the prior art relied upon. 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4). The
Petition does not include a detailed explanation of the significance of
Digibox’s disclosure of access rules that can designate who can unlock the
Digibox, and does not specify where the disputed limitations of claims 1 and
21 are found in Digibox. But, as we discussed above, even if Digibox did
include sufficient disclosure, we do not see how the newly cited portions of
Digibox meet the disputed limitations of claims 1 and 21. Thus, we did not
abuse our discretion in denying institution of inter partes review of the
claims based on Digibox.
Petitioner also argues that we overlooked the evidence in Mr.
Rosenblatt’s declaration. Req. Reh’g 4–5. Petitioner presents the following
arguments: (1) the Petition is supported by Mr. Rosenblatt’s declaration
(citing Pet. 7–8, 10, 12, 29–30); the panel noted that the Petition cites to Mr.
Rosenblatt’s declaration, but failed to refer to it in its analysis when making
its findings (citing Dec. at 12–13); and (3) Mr. Rosenblatt’s declaration
provides even more explanation of how Digibox teaches the limited or
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controlled access to unprotected forms of data limitation required by claims
1 and 21 (citing Ex. 1001 ¶¶ 74–77, 200–203; Pet. 12, 29–30). Id.
The claim chart at page 12 of the Petition cites to paragraphs 74–77 of
Mr. Rosenblatt’s declaration, and the claim chart spanning pages 29–30 of
the Petition cites to paragraphs 200–203 of Mr. Rosenblatt’s declaration.
Pet. 12, 29–30. The citations to the specific paragraphs of Mr. Rosenblatt’s
declaration appear in the claim chart, and take the form of “(See Ex. 1001 ¶¶
74–77)” and “(See Ex. 1001 ¶¶ 200–203).” Id. The Petition does not
include a detailed explanation of the significance of Mr. Rosenblatt’s
declaration, as required by 37 C.F.R. § 42.22(a)(2).
Based on Petitioner’s arguments in its Request for Rehearing,
Petitioner alleges that we overlooked the evidence in Mr. Rosenblatt’s
declaration because we did not incorporate arguments and explanations from
the cited paragraphs of Mr. Rosenblatt’s Declaration into the Petition.
Contrary to Petitioner’s arguments, however, our rules state that arguments
must not be incorporated by reference from one document into another
document. 37 C.F.R. § 42.6(a)(3). Because the Petition does not include a
detailed explanation of the significance of paragraphs 74–77 and 200–203 of
Mr. Rosenblatt’s declaration, and because arguments must not be
incorporated by reference from Mr. Rosenblatt’s declaration into the
Petition, we did not abuse our discretion in denying institution of inter
partes review of the claims based on Digibox.
Request for an Expanded Panel
Petitioner requests rehearing by an expanded panel to address the
proper scope of review and the weight given to supporting evidence. Req.
Reh’g 1, 6–10. Petitioner contends that there are conflicting decisions by
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different panels regarding this issue. Id. at 6–7. Petitioner asserts that
rehearing by an expanded panel is dictated by the Board’s Standard
Operating Procedure (SOP) that contemplates the use of expanded panels to
address conflicting decisions by different merits panels. Id. at 1 (citing
BPAI SOP 1 (Rev. 13) 2009, § III(A)(2)).
Contrary to Petitioner’s apparent invitation, the members of the Board
deciding an institution matter do not, under 35 U.S.C. § 6(c), select
themselves, and, similarly are not granted authority to select other Board
members to decide the matter, upon request of a party or otherwise. See
Apple Inc. v. Rensselaer Polytechnic Instit., Case IPR2014-00319, slip. op. 2
n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded panel) (per curiam). As
indicated in the Standard Operating Procedure, the Chief Judge, on behalf of
the Director, may act to expand a panel on a “suggestion” from a judge or
panel. BPAI SOP 1 at 1. The Standard Operating Procedure creates
“internal norms for the administration of the Board” but “does not create any
legally enforceable rights.” Id. Accordingly, we cannot grant Petitioner’s
request for rehearing by an expanded panel. We further note that our
application of 37 C.F.R. §§ 42.6(a)(3), 42.22(a)(2) and 42.104(b)(4) in the
case before us is bound to the specific facts of this case, and is consistent
with the application of these rules in the expanded panel decision in Cisco
Systems, Inc. v. C-Cation Technologies, LLC, Case IPR2014-00454 (PTAB
Aug. 29, 2014) (Paper 12).
II. DECISION ON REHEARING
Petitioner’s request for rehearing is denied and request for panel
expansion is dismissed.

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PETITIONER:
Kenneth R. Adamo
Brent Ray
Joel Merkin
Eugene Goryunov
KIRKLAND & ELLIS LLP
kenneth.adamo@kirkland.com
brent.ray@kirkland.com
jmerkin@kirkland.com
eugene.goryunov@kirkland.com

PATENT OWNER:
Lori Gordon
Omar Amin
STERNE, KESSLER, GOLDSTEIN & FOX PLLC
lgordon-PTAB@skgf.com
oamin-PTAB@skgf.com