DoggyPhone LLC

Patent Trials and Appeals Board

Dec 10, 2021

IPR2021-00260 (P.T.A.B. Dec. 10, 2021)

Trials@uspto.gov Paper 11
571-272-7822 Date: December 10, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

TOMOFUN, LLC,
Petitioner,
v.
DOGGYPHONE LLC,
Patent Owner.

IPR2021-00260
Patent 9,723,813 B2

Before PATRICK R. SCANLON, SCOTT A. DANIELS, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
SCANLON, Administrative Patent Judge.
DECISION
Denying Petitioner’s Request for Rehearing of Decision
Denying Institution of Inter Partes Review
37 C.F.R. § 42.71(d)

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I. INTRODUCTION
Tomofun, LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
requesting an inter partes review of claims 7‒9 of U.S. Patent No. 9,723,813
B2 (Ex. 1001, “the ’813 patent”). Doggyphone LLC (“Patent Owner”) filed
a Preliminary Response (Paper 8, “Prelim. Resp.”).
On May 24, 2021, we issued a Decision Denying Institution of Inter
Partes Review. Paper 9 (“Decision” or “Dec.”). Petitioner requests
rehearing of our Decision. Paper 10 (“Rehearing Request” or “Reh. Req.”).
For the reasons set forth below, Petitioner’s Request for Rehearing is denied.
II. ANALYSIS
A. Legal Standards
The applicable requirements for a request for rehearing are set forth in
37 C.F.R. § 42.71(d), which provides:
A party dissatisfied with a decision may file a single request for
rehearing, without prior authorization from the Board. 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 the place where each matter was previously
addressed in a motion, an opposition, or a reply.
We review our Decision under an abuse of discretion standard. 37 C.F.R.
§ 42.71(c). An abuse of discretion may arise if a decision is based on an
erroneous interpretation of law, if a factual finding is not supported by
substantial evidence, or if the decision represents an unreasonable judgment
in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d
1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340
(Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).
“Substantial evidence is ‘such relevant evidence as a reasonable mind might
accept as adequate to support a conclusion.’” OSI Pharm., LLC v. Apotex
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Inc., 939 F.3d 1375, 1381 (Fed. Cir. 2019) (quoting Consol. Edison Co. v.
N.L.R.B., 305 U.S. 197, 229 (1938)). “The substantial evidence standard
asks ‘whether a reasonable fact finder could have arrived at the agency’s
decision.’” OSI Pharm., 939 F.3d at 1381–82 (quoting Gartside, 203 F.3d at
1312).
B. Background
Independent claim 7 of the ’813 patent recites, in pertinent part, a
delivery module that “in response to the received treat delivery command,”
“plays via the audio device an audio signal that notifies the pet of
availability of a treat” (“the audio signal limitation”). Ex. 1001, 12:19–25.
The Petition challenges claims 7–9 on the following grounds:
Ground Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1 7 102(b) Alasaarela1
2 8 103(a) Alasaarela
3 7–9 102(b) Beccaria2
4 7–9 103(a) Carelli,3 Beccaria
5 7–9 103(a) Bloksberg,4 Beccaria
Pet. 4. Petitioner asserts that Alasaarela discloses the audio signal limitation
for Grounds 1 and 2. Id. at 23–24, 31. Petitioner asserts that Beccaria
discloses the audio signal limitation for Ground 3, and Carelli discloses the
audio signal limitation for Ground 4. Id. at 36–37, 48. For Ground 5,
Petitioner asserts that Bloksberg discloses the audio signal limitation. Id.
at 60.

1 FI 122052 B, published July 5, 2011 (certified English translation)
(Ex. 1006).
2 WO 2009/087451 A1, published July 16, 2009 (Ex. 1007).
3 US 8,588,967 B2, issued Nov. 19, 2013 (Ex. 1009).
4 US 2008/0282988 A1, published Nov. 20, 2008 (Ex. 1010).
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In the Decision, we determined that the Petition failed to establish
sufficiently that any of Alasaarela, Beccaria, Carelli, and Bloksberg
discloses the audio signal limitation. Dec. 12–13, 17–18, 21–22, 25–27.
C. Petitioner’s Arguments on Rehearing
Petitioner argues that, in the Decision, “the Board misapprehended
aspects of the Challenged Claims and misapprehended or overlooked several
of Petitioner’s arguments.” Reh. Req. 1. We analyze each argument in turn.
1. Bloksberg
In the Decision, we indicated that we were not persuaded on the
record before us that Bloksberg discloses the audio signal limitation.
Dec. 26. Petitioner argues that we overlooked the Office’s previous analysis
of Bloksberg in making this determination. Reh. Req. 1. Specifically,
Petitioner argues that “as identified in the Petition, the Office has already
determined that Bloksberg teaches playing an audio signal in response to a
treat delivery command.” Id. (citing Pet. 9). Petitioner also argues that we
overlooked the Board’s policy to defer to previous Office analyses. Id. at 1–
2 (citing Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte
GmbH, IPR2019-01469, Paper 6 at 9 (PTAB Feb. 13, 2020) (precedential)).
The Petition states that “[t]he Examiner cited Bloksberg[] for each and
every element of claim 27 except for the recitation of ‘cause the audio
device to stop playing the audio signal when the pet accesses the food tray to
obtain the treat.’” Pet. 9 (citing Ex. 1003, 319).5 This statement, however,
does not state expressly that the Examiner found Bloksberg to disclose the

5 Page 319 of Exhibit 1003, which Petitioner cites, provides the Examiner’s
findings with respect to then-pending claim 1, rather than then-pending
claim 27. The Examiner appears to have made similar findings with respect
to claim 27. See Ex. 1003, 321–22.
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audio signal limitation of claim 7 of the ’813 patent. Rather, one must
deduce that pending claim 27 eventually issued as claim 7 and, that “each
and every element of claim 27” except the limitation identified included a
limitation in claim 27 that corresponded to the audio signal limitation of
claim 7.
More importantly, the statement does not identify the Examiner’s
finding as a basis for asserting that Bloksberg discloses the audio signal
limitation. Nor does any other portion of the Petition. Instead, the Petition
points to Bloksberg’s disclosures in ¶ 27 (using function control 218 to
schedule meals, treats, pre-recorded talks, and music programs) and claim 17
(performing activities, such as broadcasting a sound signal, in response to a
user command) as teaching the audio signal limitation. Pet. 60. This
position is not consistent with, or is at least different than, the Examiner’s
finding that speaker 308 in Figure 3 of Bloksberg discloses the claim 1
limitation “caus[ing] the audio device to play an audio signal that notifies
the pet of the presence of a treat in a food tray.” Ex. 1003, 319; see also id.
at 322 (citing ¶¶ 31–33 of Blocksberg as disclosing a similar limitation in
claim 27).
As such, the Petition does not indicate with sufficient particularity that
Petitioner relies on the Examiner’s finding as a basis for asserting that
Bloksberg discloses the audio signal limitation and, thus, does not satisfy
Petitioner’s burden on this point. See Harmonic Inc. v. Avid Tech., Inc., 815
F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden
from the onset to show with particularity why the patent it challenges is
unpatentable.” (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio-
Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir.
2016) (“It is of the utmost importance that petitioners in the IPR proceedings
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adhere to the requirement that the initial petition identify ‘with particularity’
the ‘evidence that supports the grounds for the challenge to each claim.’”
(quoting 35 U.S.C. § 312(a)(3))). Because the Petition did not indicate
clearly that it was relying on the Examiner’s finding, we could not have
misapprehended or overlooked such a position. In addition, Patent Owner
was not afforded a fair opportunity to dispute any reliance on the Examiner’s
finding or the reasoning underlying the finding.
Furthermore, the lack of a persuasive showing that Bloksberg
discloses the audio signal limitation was not the only reason for our
determination that the Petition fails to establish a reasonable likelihood that
claim 7 would have been obvious over Bloksberg and Beccaria. We also
determined that Petitioner did not show sufficiently that Bloksberg discloses
the claim 7 limitation of the delivery module “receiv[ing] input from the
pet” “in response to the received treat delivery command.” Dec. 27–28.
Petitioner does not present any arguments regarding this determination in its
Rehearing Request. Therefore, even if Petitioner’s arguments regarding the
audio signal limitation were persuasive, that position alone would not be a
sufficient basis to modify the Decision with respect to Ground 5.
2. Alasaarela
Regarding Grounds 1 and 2, which both rely on Alasaarela, Petitioner
argues that “[t]he Board’s decision stems from a mischaracterization of what
is required by the claim and how the disclosure of Alasaarela operates.”
Reh. Req. 5.
First, with respect to our statement in footnote 8 on page 12 of the
Decision, Petitioner argues that claim 7 does not require a temporal
relationship between playing the audio signal and the availability of the
treat, and we overlooked that the audio signal may be played before a treat is
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delivered. Id. The statement in question is: “Although Petitioner contends
that Alasaarela discloses the music indicates that the owner provided or will
provide food, we note that Alasaarela actually discloses only that the owner
will provide food, indicating a future, as opposed to a current, availability of
food.” Dec. 12 n.8 (citing Ex. 1006, 9:25–28). As such, the footnote merely
conveys that we were not persuaded by Petitioner’s argument that
Alasaarela’s music indicates that the owner had already provided food. The
footnote was not a basis for our determination that Alasaarela did not
disclose the audio signal limitation. Instead, we were not persuaded that
Alasaarela discloses playing an audio signal in response to a treat delivery
command because we determined that “Alasaarela discloses playing music
or the owner’s voice over a loudspeaker but is silent as to how these audio
signals are actuated.” Id. at 13 (citing Ex. 1006, 9:23–32). This
determination was not dependent on the relative timing between the music
being played and the availability of the food.
Second, Petitioner argues that our “analysis discounts Petitioner’s
arguments and explanations as to how each of the devices in Alasaarela
responds to a treat delivery command.” Reh. Req. 5. According to
Petitioner, the Petition and Petitioner’s expert, Dr. Olivier, “explained that
[Alasaarela’s] computer 17 receives commands via internet 19 and then
sends those commands over wireless communication network 16 to the
computer programming portions of the devices in the pet care environment
10, . . . thereby causing the end devices to perform their intended function.”
Id. at 6 (citing Pet. 23; Ex. 1004 ¶ 106). Petitioner also argues that one of
ordinary skill in the art would have understood “that the computer 17 also
must instruct the loudspeaker to play pet owner’s voice in connection with
treat delivery.” Id. at 6–7 (citing Pet. 23–24; Ex. 1004 ¶¶ 108–109).
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We disagree. The Petition states that a person having ordinary skill in
the art would have understood “that when computer 17 receives commands
from internet 19, it delivers the commands via wireless communication
network 16 to either food dispenser 12a or treat dispenser 12c to dispense
food.” Pet. 23 (citing Ex. 1006, Fig. 1; Ex. 1004 ¶¶ 105, 107) (emphasis
added). This passage refers to only the food dispensers as receiving
commands from computer 17 and, contrary to Petitioner’s current assertion,
does not describe any other devices as receiving commands from
computer 17. Also, in discussing playing the audio signal, the Petition
makes no mention of the audio signal being played in response to a treat
delivery command. Pet. 23–24. Dr. Olivier’s testimony also does not state
that Alasaarela’s loudspeaker is played in response to a specific command.
Ex. 1004 ¶¶ 105, 107–109.
Furthermore, we did not discount Petitioner’s arguments and
explanations, as Petitioner now asserts. Instead, we addressed Petitioner’s
arguments and determined that “neither the Petition nor Dr. Olivier explains
sufficiently why this treat delivery command would cause music or the
owner’s voice to be played over the loudspeaker.” Dec. 13 (citing Pet. 23–
24; Ex. 1004 ¶¶ 108–109.
3. Beccaria
Petitioner states that we denied institution of Ground 3 because we
were not persuaded that Beccaria discloses the audio signal limitation. Reh.
Req. 7 (citing Dec. 17). Petitioner then contends that “the Petition asserts in
Ground 3 that the claims are obvious based on Beccaria, not that Beccaria
anticipates the claims,” and “the question is not whether or not Beccaria
explicitly discloses that the audio signals are played in response to a singular
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treat delivery command,” but “whether or not a [person having ordinary skill
in the art] would find that sequence obvious.” Id.
We disagree with Petitioner’s characterization of Ground 3 as being
based on obviousness. Rather, the Petition clearly asserts for Ground 3 that
“Claims 7-9 are anticipated under 35 U.S.C. § 102 by Beccaria[].” Pet. 4;
see also id. at 32 (“Ground 3 – Claims 7–9 Are Unpatentable As Anticipated
By Beccaria[]”). Petitioner’s Ground 3 analysis of claim 7 relies on
Beccaria disclosing each limitation, including the audio signal limitation. Id.
at 32–40. Petitioner’s Rehearing Request does not direct us to any portion
of the Petition for Ground 3 that asserts any claim limitation would have
been obvious over Beccaria, alone or in combination with another reference.
Accordingly, we are not persuaded that we misapprehended
Petitioner’s argument with respect to Beccaria.
4. Carelli
In the Decision, we indicated that we were not persuaded that Carelli
discloses playing an audio signal in response to the “treat delivery
command” identified by Petitioner (i.e., the signal transmitted from Carelli’s
remote control device. Dec. 21. Specifically, we determined that
Carelli discloses that pressing treat button 32 causes a signal to
be sent by control circuit electronics portion 42 to initiate
dispensing of a treat. . . . . Carelli, however, does not disclose[]
that this signal corresponding to the treat delivery command
causes audio portion 93 or speaker 95 to play audio that can be
heard by the pet. Instead, Carelli discloses that selecting audio
button 33 initiates either the playing of a recorded message or
live interaction between the owner and the pet.
Id. at 21–22 (citing Ex. 1009, 14:29–33; 15:57–67). Petitioner argues that
the Petition demonstrates that Carelli teaches (1) a treat delivery command
that causes a treat to be dispensed, and (2) playing a recorded message with
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treat delivery. Reh. Req. 11 (citing Pet. 48). Thus, according to Petitioner,
the Petition asserts that one of ordinary skill in the art would have found the
claimed recitations obvious. Id.
We disagree that we misapprehended or overlooked Petitioner’s
argument. Instead, we considered the argument but found it not persuasive,
determining that “we are not persuaded that Carelli discloses playing audio
signals in response to the treat delivery command, that is, in response to
pressing treat button 32.” Dec. 22. In other words, even in view of Carelli’s
disclosure that a recorded message can be played as the pet treat is dispensed
(Ex. 1009, 10:53–64), the recorded message is played in response to the
owner selecting audio button 33 (id. at 15:57–67), and not in response to the
signal triggered by selecting treat button 32 (id. at 14:29–33). The fact that
audio button 33 can be selected at the same time that treat button 32 is
selected does not mean that the recorded message is played in response to
the signal generated by treat button 32.
5. Conclusion
For the above reasons, we determine Petitioner has not carried its
burden of showing that we misapprehended or overlooked any matter or that
the Decision denying institution of inter partes review was an abuse of
discretion.
III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner’s Request for Rehearing is denied.
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FOR PETITIONER:
Jonathan Giroux
GREENBERG TRAURIG, LLP
girouxj@gtlaw.com

FOR PATENT OWNER:
David Lowe
Benedict Dugan
LOWE GRAHAM JONES PLLC
Lowe@LoweGrahamJones.com
Dugan@LoweGrahamJones.com