UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. FACEBOOK, INC., Petitioner

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD FACEBOOK, INC., Petitioner v. SOUND VIEW INNOVATIONS, LLC, Patent Owner Case No. Patent No. 6,125,371 PETITIONER S REQUEST FOR PARTIAL REHEARING OF INSTITUTION DECISION UNDER 37 C.F.R (d)(2)

2 The Petitioner respectfully submits the following request for partial rehearing of the Board s institution decision of September 5, 2017, with respect to the Board s decision declining to institute trial only with respect to claims 1-3 of the 371 patent. When rehearing a decision on petition, a panel will review the decision for an abuse of discretion. 37 C.F.R (c). An abuse of discretion generally occurs when a court misunderstands or misapplies the relevant law or makes clearly erroneous findings of fact. Renda Marine, Inc. v. United States, 509 F.3d 1372, 1379 (Fed. Cir. 2007) (citation omitted). As explained below, Petitioner respectfully submits that the Board exceeded its discretion because (a) it misapplied the law governing interpretation of means-plus-function claim limitations by not deciding in the first instance whether the controller terms were governed by 35 U.S.C ; and (b) it made a clearly erroneous finding with respect to the Petitioner s claim construction positions in this IPR proceeding. BACKGROUND The underlying facts are straightforward. The Petitioner filed its Petition for Inter Partes Review (IPR) on February 28, 2017, challenging claims 1-3 and 8-10 based on a single obviousness ground. Independent claim 1 is a system claim that recites a time stamping controller, a versioning controller, and an aging controller for performing certain functions. Independent claim 8 is a method claim that recites identical functions as claim 1, but does not include the controller terms. 1

3 The Petition explained that the system and method claims presented no material differences for purposes of applying the prior art. (Petition, Paper 2, at pp ) With respect to independent claim 1, the Petition explained that the Board should adopt the plain and ordinary meaning of controller because the Petitioner was not taking the position in this IPR and under the broadest reasonable interpretation (BRI) standard that controller triggered means-plus-function treatment under 112, 6. (Id., at pp.4-7.) The Petition observed that the patent owner appeared to have taken the same position. Because neither party sought to overcome the presumption against means-plus-function treatment, the Petitioner argued, there was no basis for applying 112, 6 to the controller terms in this IPR. (Id., at pp.5-7.) The Petition cited several past decisions in which the Board adopted this approach for means-plus-function limitations. (Id., at pp.6-7.) Meanwhile, in the pending district court litigation, the Petitioner challenged the controller terms as being indefinite (as indefiniteness of the 371 patent can be challenged in district court but not in IPR). In particular, the Petitioner asserted in the litigation that the specification of the 371 patent disclosed no corresponding structure or algorithm for those terms, thus rendering them indefinite. On May 19, 2017, the district court rejected the Petitioner s argument and agreed with the patent owner that controller did not invoke 112, 6, and thus, the term did not warrant an explicit construction. (Ex. 2001, at pp.9-12.) 2

4 On July 14, 2017, the Board granted the patent owner s motion to adopt a district court-type claim construction under 37 C.F.R (b) because the 371 patent was due to expire during the pendency of this IPR proceeding. On July 27, 2017, as authorized by the Board, the Petitioner filed a Reply to the Patent Owner Preliminary Response to address certain claim construction issues raised by the patent owner and the district court litigation. (Paper 14.) The Petitioner acknowledged the Board s recent order concluding that the Phillips claim construction standard would apply to this proceeding, but the Petitioner reiterated its position that it does not contend in this IPR that the controller terms were meansplus-function limitations. (Id., at 2-3.) THE BOARD SHOULD INSTITUTE IPR ON CLAIMS 1-3 The Board s decision to decline to institute IPR on claims 1-3 was based on the fact that the Petition did not provide any proposed constructions for the corresponding structure of the controller terms under 112, 6. (Decision, Paper 17, at ) However, Petitioner respectfully submits that the Board exceeded its discretion for two separate reasons: (a) it misapplied the law with respect to means-plus-function claim limitations; and (b) it made clearly erroneous findings with respect to the Petitioner s claim construction positions. 3

5 A. The Board Erred By Refusing to Assess Whether the Controller Terms Were Actually Means-Plus-Function Limitations It is well-established that identification of a corresponding structure under 112, 6 is only required if the claim limitation in question qualifies as a meansplus-function limitation in the first instance. See 35 U.S.C. 112, 6 (pre-aia); Williamson v. Citrix Online, LLC, 792 F.3d 1339, (Fed. Cir. 2015) (en banc). In other words, if a claim limitation is not a means-plus-function limitation, there is no need to identify any corresponding structure under 112, 6. And therein lies the problem. The Board correctly observed that no corresponding structure had been identified by the Petitioner for the controller terms and as noted, the Petitioner argued to the district court that the patent specification disclosed no such structure. But the Board made no finding that the controller terms were even subject to 112, 6, and in fact, declined to reach this issue. (Paper 17, at 13 ( On this record, we need not address whether the term controller is subject to treatment under 35 U.S.C. 112, 6 ).) Without a predicate finding that 112, 6 applies, the Petition s silence on the identity of a corresponding structure had no relevance to the issue of claim construction. Stated another way, the Board should not have faulted the Petitioner for failing to identify a corresponding structure without first determining that such a structure was even required, particularly where neither party took the position in the IPR proceeding that the controller limitations were subject to 112, 6. 4

6 B. The Board Misapprehended the Petitioner s Claim Construction Positions With Respect to the Controller Terms The Board correctly acknowledged that when there are parallel proceedings before the district court and the Board, the parties may present different arguments and evidence to each tribunal in support of their constructions. (Paper 17, at 12.) In this case, there was nothing wrong with the Petitioner choosing to accept for purposes of this IPR where indefiniteness cannot be challenged the patent owner s assertions that controller is not a means-plus-function limitation, and that the limitations in claim 1 reciting that term are not indefinite. The Board s decision rested primarily on the misunderstanding that the Petitioner argued, for purposes of this IPR proceeding, that the controller terms were means-plus-function limitations if a district court claim construction standard were adopted. But the Petitioner did not take that position. The Board cited a footnote in the original IPR Petition stating that [u]nder the narrower Phillips claim construction standard applicable in litigation, the controller terms would be subject to 112, 6 treatment and are indefinite. (Decision, Paper 17, at 10 (quoting Petition, at 7 n.1).) At the time the original IPR Petition containing that statement was filed, the claims were subject to the BRI standard (and would have remained so had the patent owner not filed its motion under 37 C.F.R (b)). The footnote in the original Petition was intended to acknowledge and identify a claim construction position the Petitioner was taking in 5

7 the district court litigation. The Petitioner never took the position that the term controller should be subject to 112, 6, for purposes of this IPR proceeding, even if a district court claim construction standard applied. The Petitioner explicitly confirmed this in its Reply submitted on July 27, 2017, two weeks after the Board granted the patent owner s motion to adopt the Phillips claim construction standard. The Petitioner reiterated its position that it was not asserting that the controller terms were means-plus-function limitations in this IPR proceeding, notwithstanding the Board s decision to adopt a district court-type claim construction standard: Patent Owner also notes that the Phillips claim construction standard applies to this proceeding, not BRI. (POPR at ) But this issue is irrelevant. Petitioner does not dispute that the Board should apply the Phillips standard in view of Patent Owner s unopposed motion to do so. (Paper 6.) As noted previously, neither party argues in this proceeding that the term... is a means-plus function term or that it is indefinite, so there is no reason for the Board to reach a different conclusion. Kingston Tech., IPR , Paper 8 at 7, 16. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Id. at 7 (citing Vivid Techs., Inc. v. Am. Sci. & Eng g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))... Because both parties in this proceeding take the same 6

8 position that the district court adopted, the Board is free to confirm that controller is not subject to means-plusfunction treatment under (Paper 14, at 2-3 (underlining added).) Accordingly, the Board s reasoning that the Petitioner s proposed construction of the term controller and its statements regarding the term s treatment under 35 U.S.C. 112, 6, are clearly inconsistent, was inaccurate. (Decision, Paper 17, at 12.) To the extent the Board perceived any inconsistency based on the footnote in the original IPR Petition, any such inconsistency was resolved by the Petitioner s subsequent Reply brief, filed after the Petitioner had the benefit of the district court s order and the Board s decision to apply the Phillips standard. That Reply brief made clear that the Petitioner is not asserting in this IPR proceeding that the controller terms are means-plus-function limitations, even under the Phillips standard. (Paper 14, at 2-3.) The Petitioner was thus not required to identify any corresponding structure for the controller terms in its original Petition. Accordingly, the Board s decision to not institute IPR on claims 1-3, without making the threshold finding that the controller terms were subject to 112, 6 in the first instance, was an erroneous ruling that exceeded the Board s discretion. Finally, from a practical standpoint, the Board s decision is inconsistent with the Congressional purpose behind the IPR procedure. Under the broader (and non- 7

9 means-plus-function) interpretation of the controller terms, which both parties advocated here, there is no material difference in scope between non-instituted claims 1-3 and instituted claims 8-10 for purposes of applying the prior art. (Petition, Paper 2, at pp ) But it is unclear how any rulings by the Board with respect to claims 8-10 will apply to claims 1-3, despite the remarkable similarity in scope between the two sets of claims. The Board s decision will thus create the type of litigation uncertainty and inefficiency the IPR procedure seeks to avoid. This uncertainty extends to both the Delaware district court as well the California district court handling a more recently-filed suit against Hulu for alleged infringement of the 371 patent. (See Sound View Innovations, LLC v. Hulu, LLC, Case 2:17-cv (C.D. Cal.).) The Petitioner respectfully submits that the efficiency and litigation streamlining purposes of the IPR procedure would be better served by also instituting IPR on claims 1-3 so the system claims can be evaluated in the same proceeding as corresponding method claims In fact, the Board s decision all but invites other third parties accused under the 371 patent to file separate IPR petitions on claims 1-3 based on the same prior art and analysis used to institute trial on claims Given the overwhelming similarity between the instituted claims and those not instituted, there is little reason not to resolve claims 1-3 in the same proceeding as claims 8-10, and failing to do so 8

10 CONCLUSION The Petitioner respectfully submits that the Board should have followed one of the following two approaches in addressing claims 1-3: (1) adopt the parties position that the controller terms in claim 1 were not subject to 112 6, and institute trial on claims 1-3 on the same ground as claims 8-10, or at a minimum (2) assess whether the controller terms are means-plus-function terms, and if they are, deny institution on the basis that no corresponding structure has been identified. But the Board in this case did neither, thus creating an anomalous ruling in which IPR was denied for failing to identify a corresponding structure without any finding that such a structure was required. For the reasons set forth above, Petitioner respectfully requests that the Board grant this Request and institute trial on claims 1-3 of the 371 patent. Dated: September 19, 2017 COOLEY LLP ATTN: Patent Group 1299 Pennsylvania Avenue NW, Suite 700 Washington, DC Tel: (650) Fax: (650) Respectfully submitted, By: /Heidi L. Keefe/ Heidi L. Keefe Reg. No. 40,673 Counsel for Petitioner would be inconsistent with the Board s policy of secur[ing] the just, speedy, and inexpensive resolution of every proceeding. 37 C.F.R. 42.1(b). 9

11 CERTIFICATE OF SERVICE I hereby certify, pursuant to 37 C.F.R. Section 42.6, that a complete copy of the attached PETITIONER S REQUEST FOR PARTIAL REHEARING and related documents, are being served on the 19 th day of September, 2017, via electronic mail upon the Patent Owner by serving counsel of record in this proceeding as follows: Kenneth J. Weatherwax (Reg. No. 54,528) weatherwax@lowensteinweatherwax.com Nathan Lowenstein lowenstein@lowensteinweatherwax.com LOWENSTEIN & WEATHERWAX LLP SVI_IPRs@lowensteinweatherwax.com Dated: September 19, 2017 COOLEY LLP ATTN: Patent Docketing 1299 Pennsylvania Avenue NW, Suite 700 Washington, D.C Tel: (650) Fax: (650) / Heidi L. Keefe / Heidi L. Keefe Reg. No. 40,673