Rovi Guides, Inc.

Patent Trials and Appeals Board

Jun 24, 2020

IPR2019-01434 (P.T.A.B. Jun. 24, 2020)

Trials@uspto.gov Paper 24
571-272-7822 Date: June 24, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

COMCAST CABLE COMMUNICATIONS, LLC,
Petitioner,
v.
ROVI GUIDES, INC.,
Patent Owner.

IPR2019-01434
Patent 8,973,069 B2

Before WILLIAM M. FINK, Vice Chief Administrative Patent Judge, and
BARBARA A. PARVIS and KRISTI L. R. SAWERT, Administrative
Patent Judges.
SAWERT, Administrative Patent Judge.

DECISION
Denying Patent Owner’s Request on Rehearing of
Decision Granting Institution of Inter Partes Review
35 C.F.R. § 42.71(d)

IPR2019-01434
Patent 8,973,069 B2
2
I. INTRODUCTION
Rovi Guides, Inc. (“Patent Owner”) filed a Request for Rehearing
(Paper 16, “Req. Reh’g”) of the Decision Granting Institution of Inter Partes
Review (Paper 14, “Institution Decision” or “Inst. Dec.”) of claims 1–20
(the “challenged claims”) of U.S. Patent No. 8,973,069 B2 (“the ’069
patent”). In its Request for Rehearing, Patent Owner “also requests that the
Precedential Opinion Panel (POP) resolve this rehearing request.” Req.
Reh’g 2. The Board, however, did not receive a formal request for POP
review as set forth in Standard Operating Procedure 2 (“PTAB SOP2”).1
See PTAB SOP2 (rev. 10, Sept. 20, 2018) at 5 (§ II.C.1). Patent Owner filed
a Petition Under 37 C.F.R. § 1.181(a)(3) Invoking the Supervisory Authority
of the Director (Paper 17), which was denied (Paper 21). For the reasons set
forth below, Patent Owner’s Request for Rehearing is denied.
II. STANDARD OF REVIEW
When rehearing a decision on institution, we do not review the merits
of the decision de novo, but instead review the decision for an abuse of
discretion. 37 C.F.R. § 42.71(c). 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 judgment.” PPG Indus. Inc. v.
Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir.
1988). The party requesting rehearing has the burden to show that the
decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the
request for rehearing “must specifically identify all matters the party

1 We note that Patent Owner filed POP requests in related IPRs involving the
same Petitioner. See, e.g., IPR2019-00224, Ex. 3001. The POP requests
were denied. Id., Paper 38.
IPR2019-01434
Patent 8,973,069 B2
3
believes the Board misapprehended or overlooked, and the place where each
matter was previously addressed in a motion, an opposition, or a reply.” Id.
III. ANALYSIS
Patent Owner’s Request for Rehearing focuses on the Federal
Circuit’s decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941.3d 1320
(Fed. Cir. 2019). See generally Reh’g Req. Patent Owner argues that the
instant proceeding should be stayed or terminated because:
(1) the Federal Circuit’s mandate has not issued in Arthrex, and
thus, the Administrative Patent Judges presiding over the instant
proceeding remain unconstitutionally appointed, Reh’g Req. 5–
7;
(2) the Arthrex remedy does not go far enough and violates the
Administrative Procedure Act (APA), see id. at 7–11 (citing, e.g.,
concurring opinion in Polaris Innovations Ltd. v. Kingston Tech.
Co., 792 Fed. Appx. 820 (Fed. Cir. 2020) (unpublished) (Hughes,
J. and Wallach, J., concurring)); and
(3) intervention from Congress and agency rulemaking may be
necessary to remedy the defect identified in Arthrex, see id. at
11–13.
The Federal Circuit’s mandate has now issued. Arthrex, Inc. v. Smith
& Nephew, Inc., No. 2018-2140, Dkt. No. 119 (Fed. Cir. April 6, 2020)
(Ex. 3001). As to the contended insufficiency in the remedy set forth in
Arthrex, Patent Owner’s position is contrary to that decision by our
reviewing court. See Arthrex, 941 F.3d at 1337 (“This as-applied severance
. . . cures the constitutional violation.”).
Further, as set forth in the Institution Decision, we determined that
Arthrex did not warrant terminating or staying this case. Inst. Dec. 40–41.
First, we set forth that “this is a Decision on Institution and ‘no
constitutional infirmity [exists] in an institution decision.’” Id. (citing
Arthrex, 941 F.3d at 1340 (brackets in original)). Second, we noted that “the
IPR2019-01434
Patent 8,973,069 B2
4
Board generally declines to stay proceedings pending an appeal to the
Federal Circuit or the Supreme Court.” Id. (citing Askeladden LLC v. Purple
Leaf, LLC, IPR2016-01720, Paper 22 at 2 (PTAB Sept. 11, 2017)). Patent
Owner’s disagreement with Arthrex and the sufficiency of its remedy does
not meet Patent Owner’s burden on rehearing. In sum, Patent Owner’s
arguments do not identify any matter misapprehended or overlooked in our
Decision, nor do they identify any abuse of discretion.
IV. CONCLUSION
On this record, Patent Owner neither persuades us that we overlooked
or misapprehended any matter, nor sufficiently shows that instituting an
inter partes review of claims 1–20 of the ’069 patent was an abuse of
discretion.
V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Request for Rehearing is denied.
IPR2019-01434
Patent 8,973,069 B2
5
FOR PETITIONER:
Frederic M. Meeker
Bradley C. Wright
John H. Fleming
John H. Curry
Shambhavi Patel
Blair A. Silver
BANNER & WITCOFF LTD.
FMeeker@bannerwitcoff.com
BWright@bannerwitcoff.com
JFleming@bannerwitcoff.com
JCurry@bannerwitcoff.com
SPatel@bannerwitcoff.com
BSilver@bannerwitcoff.com

FOR PATENT OWNER:
Jason D. Eisenberg
Robert E. Sokohl
STERNE, KESSLER, GOLDSTEIN & FOX PLLC
JasonE-ptab@sternekessler.com
Rsokohl-ptab@sternekessler.com