IPR2019-01541 (P.T.A.B. Jul. 7, 2020)

Uniloc 2017 LLC

Patent Trials and Appeals BoardJul 7, 2020

IPR2019-01541 (P.T.A.B. Jul. 7, 2020)

Trials@uspto.gov Paper 10 571-272-7822 Date: July 7, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD GOOGLE LLC, Petitioner, v. UNILOC 2017, LLC, Patent Owner. IPR2019-01541 Patent 7,016,676 B2 Before JAMESON LEE, KEVIN F. TURNER, and MICHELLE N. WORMMEESTER, Administrative Patent Judges. LEE, Administrative Patent Judge. DECISION Denying Petitioner’s Request for Rehearing 37 C.F.R. § 42.71 IPR2019-01541 Patent 7,016,676 B2 2 I. INTRODUCTION On March 20, 2020, Petitioner Google LLC filed a Request for Rehearing (Paper 9, “Reh’g Req.”) under 37 C.F.R. § 42.71(d) of the Board’s Decision Denying Institution of Inter Partes Review (Paper 8, “Decision” or “Dec.”) of claims 1, 2, 4, and 9 of U.S. Patent No. 7,016,676 B2 (“the ’676 patent”). The Request 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., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). 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 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 The sole issue raised by the Rehearing Request is that Petitioner disagrees with our determining that in the context of Gardner as a prior art reference Petitioner relied only on the frequency range from 800 to 900 MHz as the claimed “common frequency band” of claim 1. Reh’g Req. 1. A key part of the Petition states the following: Gardner explains that the two radio interface standards (AMPS and CDPD) “share[] the same carrier frequencies,” disclosed to be within the range of 800 to 900 MHz. (See IPR2019-01541 Patent 7,016,676 B2 3 Gardner at 1:37–39, 5:23–24, 6:27–29, 8:63–66 (“CDPD system shares existing AMPS radio frequenc[ies]”).) This frequency band is further divided into frequency “channels,” which can be used for either AMPS voice transmissions or CDPD data transmissions. (See id. at 4:38–59, 8:14–23, 8:55-9:47.) Because AMPS and CDPD share both the broader frequency band as well as channels within that band (that are themselves frequency bands), Gardner discloses two radio interface standards operating on at least “one common frequency band,” as claimed. (Ex. 1004 ¶ 73.) Pet. 23–24. In the Decision, we explained that the above-quoted statement in the Petition is “vague as to exactly what Petitioner regards as the frequency band relied on to meet the ‘common frequency band’ of claim 1,” the 800 to 900 MHz range or a single channel within that broad frequency range. Dec. 21. We looked elsewhere in the Petition for clarification. Id. at 21–22. In the Rehearing Request, Petitioner contends that the last sentence in the above-quoted text is an “express” statement that Petitioner “considered an individual channel to be the ‘common frequency band.’” Reh’g Req. 1. It is not. At best, the sentence is ambiguous, consistent with how we have characterized the entire paragraph. Also, Petitioner asserts that this sentence refutes our determination “[n]ot once does Petitioner refer to a single channel as a ‘common frequency band,’ but consistently, without exception, refers to the broad frequency band containing the multiple channels as the ‘common frequency band.’” Id. at 4 (quoting Dec. 22). It does not. Petitioner asserts that when looking elsewhere in the Petition for clarification, we misapprehended or overlooked its contentions regarding how a single channel of Gardner constitutes the claimed common frequency band. Reh’g. Req. 3. Petitioner states as follows: IPR2019-01541 Patent 7,016,676 B2 4 For instance, in addressing claim constructions proposed by Marvell in another proceeding, Google stated that “Marvell also explained that its proposed grounds satisfied the term to the extent the ‘frequency band’ limitation could be met by operations on a single channel within the frequency band.” (Petition at 42 n. 9.) Google then stated that, “[i]f the Board adopts any of these constructions, the above proof demonstrates unpatentability for the same reasons discussed above.” (Id.) Thus, Google separately explained that “operations on a single channel” meet the claimed “frequency band” limitation based on the proof discussed in the Petition. Id. We did not misapprehend or overlook the discussion about Marvell’s contentions in another proceeding.1 They are, however, Marvell’s contentions in another proceeding, not Petitioner’s contention here. Also, Marvell’s contentions were made with respect to a channel in a different prior art reference, not Gardner. Further, the above-quoted text refers to the pre-condition “[i]f the Board adopts any of these constructions.” We have made no construction of the kind in this proceeding. These statements about Marvell’s contentions do not refute our determination that here, with respect to Gardner, Petitioner relied only on the 800 to 900 MHz frequency range as the claimed common frequency band. Petitioner asserts that in explaining how the “common frequency band” is met, it discussed how channels are assigned and freed among and between AMPS devices and CDPD devices. Id. at 4. That discussion, however, is not directed to identifying the “common frequency band.” Rather, it presupposes that the common frequency band already is identified. We did not overlook that explanation. Indeed, we addressed it by the following discussion in the Decision: 1 “Marvell” is Marvell Semiconductor Inc., and the other proceeding is either IPR2019-01349 or IPR2019-01350. IPR2019-01541 Patent 7,016,676 B2 5 Because the common frequency band relied on by Petitioner includes all of the individual channels within the frequency band, when Gardner’s AMPS cellular phones and CDPD data devices use different channels at the same time, they are not exhibiting alternating use of the common frequency band. Instead, they are concurrently operating within the common frequency band, albeit by using different portions of the band. For instance, when CDPD communication on a channel is preempted by AMPS communication and then the CDPD communication is switched to a different channel, the two communications are using the common frequency band concurrently, not alternatingly as is required by claim 1. Dec. 23. Petitioner additionally asserts: The Petition’s mapping of channels to the “common frequency band” is so prevalent that Patent Owner contended that “Petitioner improperly attempts to equate the claimed ‘frequency band’ with the particular communication channel being used by a radio at a particular time. The Petition repeatedly references the ‘channel’ used by a radio as if that ‘channel’ was the claimed ‘frequency band.’” (Paper 7 at 24–25 (emphasis added).) Patent Owner then cited six examples to support that Google linked the claimed “frequency band” to individual channels. (Id.) Reh’g Req. 5. The argument is misplaced. Petitioner conflates the initial identification of “common frequency band” with the subsequent explanation of what meets the identified common frequency band. If anything, Patent Owner’s observations as noted by Petitioner above supports our determining that Petitioner sufficiently identified only Gardner’s 800 to 900 MHz frequency range as the claimed common frequency band. Had Patent Owner recognized that Petitioner identified one individual channel as the claimed common frequency band, there would have been no point for Patent Owner to IPR2019-01541 Patent 7,016,676 B2 6 state that “[t]he Petition repeatedly references the ‘channel’ used by a radio as if that ‘channel’ was the claimed ‘frequency band.’” The “as if that ‘channel’ was the claimed ‘frequency band’” phrase is premised on an understanding that a single channel is not the common frequency band. Petitioner does not persuade us that we overlooked or misapprehended any matter, or sufficiently show that not instituting an inter partes review of claims 1, 2, 4, and 9 of the ’676 patent was an abuse of discretion. IV. ORDER For the reasons given, it is: ORDERED that Petitioner’s Request for Rehearing is denied. IPR2019-01541 Patent 7,016,676 B2 7 FOR PETITIONER: Erika H. Arner Jason E. Stach Nicholas Petrella FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP erika.arner@finnegan.com jason.stach@finnegan.com nicholas.petrella@finnegan.com FOR PATENT OWNER: Ryan Loveless Brett Mangrum James Etheridge Jeffrey Huang ETHERIDGE LAW GROUP ryan@etheridgelaw.com brett@etheridgelaw.com jim@etheridgelaw.com jeff@etheridgelaw.com