Kove IO, Inc.

Patent Trials and Appeals Board

Nov 12, 2020

IPR2020-00276 (P.T.A.B. Nov. 12, 2020)

Trials@uspto.gov Paper: 25
571-272-7822 Entered: November 12, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

AMAZON WEB SERVICES, INC.,
Petitioner,
v.
KOVE IO, INC.,
Patent Owner.

IPR2020-00276
Patent 7,233,978 B2

Before BRYAN A. MOORE, BARBARA A. PARVIS, and
KAMRAN JIVANI, Administrative Patent Judges.

JIVANI, Administrative Patent Judge.

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

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I. INTRODUCTION
Petitioner Amazon Web Services, Inc.1 requested an inter partes
review of claims 1, 3, 6, 10, 14, 17, 23, 24, 30, and 31 of U.S. Patent
No. 7,233,978 (Ex. 1001 “the ’978 patent”). Paper 2 (“Pet.” or “Petition”).
Patent Owner Kove IO, Inc. filed a Preliminary Response. Paper 11
(“Prelim. Resp.”). We denied the Petition and did not institute an inter
partes review of any of the challenged claims. Paper 23 (“Dec. on Inst.”).
Petitioner requests rehearing of our Decision not to institute review.
Paper 24 (“Reh’g Req.”). Having considered the Request for Rehearing, we
determine that Petitioner has not shown that we abused our discretion in
denying institution. We deny Petitioner’s request for the following reasons.
II. STANDARD OF REVIEW
37 C.F.R. § 42.71(d) provides that:
A party dissatisfied with a decision may file a request for
rehearing. The burden of showing a decision should be modified
lies with the party challenging the decision. The request must
specifically identify all matters the party believes the Board
misapprehended or overlooked, and where each matter was
previously addressed in a motion, opposition, or a reply.
See Office Trial Practice Guide (84 Fed. Reg. 64,280 (Nov. 21, 2019))
(emphasis added). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision
on petition, a panel will review the decision for an abuse of discretion.” An
abuse of discretion occurs when a “decision was based on an erroneous
conclusion of law or clearly erroneous factual findings, or . . . a clear error of

1 Petitioner identifies Amazon.com, Inc., Amazon.com Services, Inc.,
Amazon Digital Services, LLC, and AWSHC, Inc. as additional real parties-
in-interest for this proceeding. Paper 2, 61.
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judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., Inc., 840
F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).
III. ANALYSIS
In its Request for Rehearing, Petitioner contends that we erred for
three reasons. First, Petitioner contends Patent Owner did not dispute the
hosts of RFC1034 (Ex. 1003) constitute the claimed “entities,” and that the
Board erred by finding “the Petition and Declaration did not detail[] what is
described by RFC1034’s use of host.” Reh’g Req. 1–2 (internal quotations
omitted). Second, Petitioner contends the “Board misapprehended
RFC1034’s teachings and overlooked the portion of Dr. Weissman’s
declaration specifically explaining how RFC1034 ensures that the same
domain name is not assigned to multiple host computers.” Id. at 2–5. Third,
Petitioner contends the Board misunderstood Petitioner’s argument
regarding the mail exchanges in RFC1034: “[Petitioner] AWS does not
contend that ISI.EDU is a domain name that maps to ‘identifier.’ Rather,
AWS contends that VENERA.ISI.EDU and VAXA.ISI.EDU are domain
names that map to ‘identifier.’” Id. at 6–8. We address each of these
arguments below.
A. Petitioner’s arguments regarding the claimed “entity”
In its Request for Rehearing, Petitioner contends “[Patent Owner]
Kove’s Preliminary Response did not dispute that RFC1034’s ‘hosts’ are
‘entities.’” Reh’g Req. 1 (citing Pet. 19, Ex. 1002 ¶ 74; Prelim. Resp. 32–
33). According to Petitioner, Patent Owner did not argue that Petitioner
provided insufficient detail on what a “host” means, and thus, the Board
erred by finding “the Petition and Declaration did not detail[] what is
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described by RFC1034’s use of host.” Id. at 1–2 (internal quotations
omitted).
Petitioner’s argument is misguided. When determining whether to
institute a requested review, our inquiry seeks to ascertain whether Petitioner
has demonstrated a reasonable likelihood of success on the challenges set
forth in the Petition. 35 U.S.C. § 314(a); SAS Inst., Inc. v. Iancu, 138 S. Ct.
1348, 1359–60 (2018). That inquiry is not limited to disputes presented in a
Patent Owner Preliminary Response. Indeed, filing of a Patent Owner
Preliminary Response is optional and does not impact our statutory
obligation to review the Petition for a reasonable likelihood of success.
35 U.S.C. § 313; 37 C.F.R. § 42.107(a).
Additionally, Petitioner contends in its Request for Rehearing that we
misapprehended its argument regarding the claimed “entity.” Reh’g Req. 2.
In our Decision Denying Institution, we found Petitioner failed to explain
sufficiently what is described by RFC1034’s use of “host.” Dec. on Inst. 20.
We stated:
Absent from Petitioner’s arguments is clear explanation of how
a “host” as disclosed in RFC1034 meets the claimed entity and
how a domain name (i.e., the “identifier”) identifies a single host.
The Petition’s cursory treatment of these claim elements refers
only to a “host” without detailing what is described by
RFC1034’s use of “host.”
Id. (citing Pet. 19–20, 22–23). Petitioner now contends:
Dr. Weissman did state what a ‘host’ means: ‘A host may be a
computer connected to other computers to which it provides data,
services, or applications over a network.’ Indeed, ‘host’ is the
standard term for a computer that is accessible over a network,
appearing in hundreds of patents and PTAB decisions.
Reh’g Req. 2 (citing Ex. 1002, ¶ 23).
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The portion of Dr. Weissman’s testimony that Petitioner now relies
upon does not remedy the deficiencies we identified in the Petition. As we
stated, Dr. Weissman’s testimony “does not resolve the failure of Petitioner
to account for the required relationship between a host computer
(i.e., entity) and a domain name (i.e., identifier).” Dec. on Inst. 20–21
(citing Pet. 19–20, 22–23; Ex. 1002 ¶¶ 75, 88) (emphasis added). Thus,
Petitioner fails to show that we misapprehended or overlooked arguments or
evidence regarding the claimed “entity” because Petitioner did not clearly
explain how a “host” as disclosed in RFC1034 meets the claimed entity and
how a domain name (i.e., the “identifier”) identifies a single host. A
rehearing request is not an opportunity to argue what should have been
addressed in the Petition.
Accordingly, we are not persuaded that we misapprehended or
overlooked arguments or evidence regarding the claimed “entity.”
B. Petitioner’s argument that RFC1034’s domain name is an
identifier that uniquely identifies a host
Petitioner contends we erred by finding, “Petitioner and
Dr. Weissman fail to explain how a given domain name identifies only one
host computer of RFC1034.” Reh’g Req. 2 (citing Dec. on Inst. 21).
According to Petitioner, “[t]he Board misapprehended RFC1034’s teachings
and overlooked the portion of Dr. Weissman’s declaration specifically
explaining how RFC1034 ensures that the same domain name is not
assigned to multiple host computers.” Id. at 3. Petitioner contends:
RFC1034 recites that a “domain name identifies a node” in the
“domain name space tree.” Ex. 1002, App’x B, at 3. “For
example, the Internet uses some of its domain names to identify
hosts.” Id. (emphasis added). A domain name could not identify
a host if it corresponded to multiple hosts. RFC1034’s disclosure
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that “the Internet uses some of its domain names to identify
hosts” maps, almost word-for-word, onto the claim language:
“the identifier identifies an entity.”
Reh’g Req. 3.
Petitioner further contends that, “[b]y stating that each host computer
was identified by a unique domain name, Dr. Weissman made clear that no
two host computers shared a domain name, i.e., a domain name corresponds
to only one host.” Reh’g Req. 4 (citing Ex. 1002 ¶ 75). Petitioner cites
Dr. Weissman’s testimony regarding RFC1034’s unique domain names:
The domain name space arranges its identifiers in a tree structure.
The domain name is the list of labels (nodes) on the path from
the node to the root of the tree. DNS states that “brother nodes”
in the tree cannot have the same label. The concatenation of
nodes using the dotted quad notation to form domain names in
this fashion guarantees that each fully qualified domain name
will be unique.
Reh’g Req. 4 (citing Ex. 1002 ¶ 75). According to Petitioner,
because ‘each fully qualified domain name will be unique,’ any
new host will receive a new, unique domain name that has not
already been assigned to a different host. The Board overlooked
Dr. Weissman’s technical explanation of RFC1034’s mechanism
of ensuring that a domain name corresponds to only one host.
Id. (internal citation omitted).
According to Petitioner, we overlooked Dr. Weissman’s explanation
that a single identifier can have multiple IP addresses associated with it.
Reh’g Req. 5. Petitioner contends, “[a]n identifier may have any number of
IP addresses (which are location strings) associated with it. For example,
the identifier “vaxa.isi.edu” has two IP addresses or location strings:
(1) “10.2.0.27”; and (2) “128.9.0.33” as shown below.” Id. (citing Ex. 1002
¶ 92). Petitioner concludes (id.):
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Thus, the fact that there are two IP addresses does not mean there
are two hosts. Rather, one host is associated with multiple IP
addresses. This conforms perfectly to the claim language, which
contemplates that a single entity can be associated with multiple
location strings: “an identifier and at least one location string
associated with the identifier.”
Tellingly, Petitioner fails to provide any citation to where the
arguments it now advances were previously presented in the Petition.
See id. at 3–5. Rather, Petitioner advances new attorney argument relying
upon passing citations to claim charts provided as an appendix to
Dr. Weissman’s declaration submitted as an exhibit in support of the
Petition. E.g. id (citing Ex. 1002, App’x B, at 3). We do not consider
arguments and evidence not previously presented in the Petition. 35 U.S.C.
§ 312(a)(3) (A petition “may be considered only if . . . it identifies, . . . with
particularity, each claim challenged, the grounds on which the challenge to
each claim is based, and the evidence that supports the grounds for the
challenge to each claim”). A request for rehearing is not an opportunity to
present new arguments and evidence. See 37 C.F.R. § 42.71(d) (A request
for rehearing “must specifically identify all matters the party believes the
Board misapprehended or overlooked, and the place where each matter was
previously addressed in a motion, an opposition, or a reply.”). Rather, the
task at hand is to determine whether we misapprehended or overlooked an
argument or evidence presented previously presented.
As we stated in our Decision, Petitioner failed to adequately address
in its Petition how RFC1034’s disclosure of domain names allegedly meets
the claimed identifier. In our Decision Denying Institution, we construed the
claim term “identifier” to mean “a unique encoding that identifies an
individual entity, and with which zero or more data location specifiers are
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associated in a location server.” Dec. on Inst. 9–13 (emphasis added).
Our inclusion of the phrase “identifies an individual entity” within our
construction was based on the ’978 patent’s disclosure that the claimed
identifier “is assumed to be unique to a particular entity” and reinforced by
the examples of identifiers set forth in the Specification, namely, a unique
customer identifier such as a Social Security Number (SSN), a vehicle
identification number (VIN), and an electronic serial number (ESN) of a
cellular phone. Id. at 11–12 (citing Ex. 1001, 7:62–64, 7:66–8:3, 22:48–52,
24:16–21). We further found that the “recitation of the singular term ‘an
identifier’ in the claim language supports the foregoing understanding,
particularly where the recitation relates to the relationship between an
identifier and the entity it identifies.” Id. at 12 (citing Ex. 1001, 25:28–30,
28:51–52, 28:55). In light of our construction based on intrinsic evidence,
Petitioner was reasonably required to explain how the applied art
demonstrated the claimed identifier is a unique encoding that identifies an
individual entity (i.e., one host computer). See id. at 21 (citing Prelim.
Resp. 35) (finding “Petitioner and Dr. Weissman fail to explain how a given
domain name identifies only one host computer of RFC1034”).
As we found in our Decision, Petitioner’s arguments, as presented in
the Petition, do not explain how the domain venera.isi.edu allegedly
identifies only a single host. Id. at 21. Dr. Weissman’s testimony that “no
two host computers shared a domain name, i.e., a domain name corresponds
to only one host” is conclusory. Ex. 1002 ¶ 75; Reh’g Req. 4. Regarding
this testimony, we stated, “Dr. Weissman’s clarification does not resolve the
failure of Petitioner to account for the required relationship between a host
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computer (i.e., entity) and a domain name (i.e., identifier).” Dec. on Inst. 21
(citing Pet. 19–20, 22–23; Ex. 1002 ¶¶ 75, 88). We elaborated:
To the contrary, the resource record for the domain name on
which Petitioner and Dr. Weissman rely, venera.isi.edu,
describes only that the domain resolves to two IP addresses,
namely 128.9.0.32 and 10.1.0.52, which Petitioner cites as
meeting the claimed “at least one location string,” not the
claimed “entity.” Petitioner’s brief discussion of this disclosure
does not explain how the domain venera.isi.edu allegedly
identifies only a single host.
Id. (citing Ex. 1003, 14; Pet. 20, 28).
Accordingly, Petitioner does not persuade us of any argument or
evidence we misapprehended or overlooked in the Petition with regard to
Petitioner’s failure to demonstrate that RFC1034’s domain name meets the
claimed identifier as properly construed.
C. Petitioner’s argument that RFC1034’s domain name is an
identifier that uniquely identifies a mailbox
Petitioner contends we misapprehended Petitioner’s argument
regarding RFC1034’s mail exchanges: “[Petitioner] AWS does not contend
that ISI.EDU is a domain name that maps to ‘identifier.’ Rather, AWS
contends that VENERA.ISI.EDU and VAXA.ISI.EDU are domain names
that map to ‘identifier.’” Reh’g Req. 6–7 (citing Dec. on Inst. 22; Ex. 1002
¶¶ 94–95). Petitioner further argues, “RFC 1034 shows that a single
institution (i.e., the institution associated with ISI.EDU) has multiple mail
exchanges (VENERA.ISI.EDU and VAXA.ISI.EDU) to handle mail
requests. It is not a surprise that one institution would need more than a
single mail exchange to handle all mail requests.” Id. at 7–8.
We are not persuaded by Petitioner’s arguments. Our Decision
addressed the failure of Petitioner’s mailbox theory to account for the
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required relationship between a mailbox (i.e., entity) and a domain name
(i.e., identifier). Dec. on Inst. 21. We explained that Petitioner and
Dr. Weissman did not account for the identifier recited in claim 1. Id. at 22.
In particular, we considered Petitioner’s arguments and evidence and found:
The disclosure of RFC1034, however, does not support
Petitioner’s assertion. RFC1034 describes returning the record
reproduced below in response to a “mailer tying to send mail to
Mockapetris@ISI.EDU [by asking] the resolver for mail
information about ISI.EDU, resulting in a query for
QNAME=ISI.EDU, QTYPE=MX, QCLASS=IN” (Ex. 1003,
17):

The response record reproduced above shows the domain name
ISI.EDU to be associated with two mail exchanges, namely
venera.isi.edu and vaxa.isi.edu. Id. Thus, contrary to
Petitioner’s argument, RFC1034 describes that in response to
requesting “mail information about ISI.EDU . . . [t]he response’s
answer section would be” both venera.isi.edu and vaxa.isi.edu,
not only venera.isi.edu, as Petitioner contends. Id. Petitioner’s
theory fails to account for vaxa.isi.edu and explain how the
entity/identifier relationship is allegedly disclosed in light
thereof.
Dec. on Inst. 21–22.
As to Petitioner’s additional arguments regarding the mail exchange
needs of any one institution, Petitioner fails to cite any portion of the
Petition setting forth this argument. See Reh’g Req. 7–8. Again, we do not
consider arguments and evidence not previously presented in the Petition
and a rehearing request is not an opportunity to argue what should have been
addressed therein. 37 C.F.R. § 42.71(d); 35 U.S.C. § 312(a)(3).
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IV. CONCLUSION
Having considered Petitioner’s arguments and the evidence of record,
Petitioner fails to show that we misapprehended or overlooked arguments or
evidence in our Decision. Petitioner, therefore, has not demonstrated that
we abused our discretion in denying institution.
V. ORDER
Accordingly, it is hereby:
ORDERED that Petitioner’s Request for Rehearing is denied.

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FOR PETITIONER:

Timothy Barron
Lisa Schoedel
Terri Mascherin
Adam Unikowsky
tbarron@jenner.com
lschoedel@jenner.com
tmascherin@jenner.com
aunikowsky@jenner.com

FOR PATENT OWNER:
Khue Hoang
Michael Flanigan
Jaime F. Cardenas-Navia
khoang@reichmanjorgensen.com
mflanigan@reichmanjorgensen.com
jcardenas-navia@reichmanjorgensen.com