SAS INSTITUTE, INC. v COMPLEMENTSOFT, LLC

Patent Trial and Appeal BoardFeb 25, 2014

09992624 (P.T.A.B. Feb. 25, 2014)

Trials@uspto.gov Paper 17 Tel: 571-272-7822 Entered: February 25, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ SAS INSTITUTE, INC. Petitioner v. COMPLEMENTSOFT, LLC Patent Owner _______________ Case IPR2013-00581 Patent 7,110,936 B2 _______________ Before KEVIN F. TURNER, JUSTIN T. ARBES, and JENNIFER S. BISK, Administrative Patent Judges. BISK, Administrative Patent Judge. DECISION Request for Rehearing 37 C.F.R. § 42.71(d) Case IPR2013-00581 Patent 7,110,936 B2 2 I. INTRODUCTION SAS Institute, Inc. (“SAS”) requests rehearing, pursuant to 37 C.F.R. §§ 42.71(c) and (d), of the Board’s Decision Denying Institution of Inter Partes Review (Paper 15; “Decision”). Paper 16 (“Rehearing Req.”). SAS contends that the Board erred in denying SAS’s proposed grounds of obviousness of claims 1-16 of U.S. Patent No. 7,110,936 (“the ’936 patent”) by (1) substituting its own views for undisputed expert testimony; and (2) applying an overly restrictive obviousness analysis. SAS also contends that the Board erred in denying review under 35 U.S.C. § 325(d) as to challenged claims 3-10. For the reasons that follow, SAS’s request for rehearing is denied. II. ANALYSIS The applicable standard for granting a request for rehearing is abuse of discretion. The requirements are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a 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. SAS argues that the Board erred as a matter of law by “substitut[ing] its own views for the undisputed factual testimony” of an expert. Rehearing Req. 5 (citing Brand v. Miller, 487 F.3d 862, 869 (Fed. Cir. 2007)). At the heart of this argument is SAS’s assertion that the Board did not credit SAS’s testimonial evidence in support of its reasoning why a person of ordinary skill would have found obvious Case IPR2013-00581 Patent 7,110,936 B2 3 the combination of teachings of the asserted references. Id. at 9. The Board, however, is not required to take every statement by a petitioner’s expert as established fact simply because the patent owner does not submit contradictory expert testimony. In fact, at this stage of an inter partes review proceeding, under 37 C.F.R. § 42.107(c), the patent owner is not permitted to present new testimonial evidence with its preliminary response. The one-sidedness of testimony at this stage does not bolster the credibility of a petitioner’s expert, much less render the testimony free of evaluation by the Board. In fact, it is the petitioner who bears the burden of establishing a reasonable likelihood of unpatentability of one or more claims. 37 C.F.R. § 42.108(c). Thus, the Board is still required to assess the persuasiveness of the testimony in light of other factual evidence in the record, e.g., the explicit wording of the prior art and the scope of the claimed invention. Here, the Board assessed the disclosures of the asserted references and found unpersuasive SAS’s conclusory explanation of why a person of ordinary skill in the art would have found obvious the combination of those references. Decision 9-12. Being unpersuaded does not equate to a finding of fact to the contrary. The Board did not find facts based on its own knowledge or expertise. Rather, the Board identified and discussed deficiencies in SAS’s arguments and the supporting testimony based on the disclosures of the asserted references. Moreover, the Board properly considered Dr. Roussopoulos’ testimony, but noted that it was conclusory and lacking sufficient rationale and factual support. Id. at 12. Nothing in the Federal Rules of Evidence or Federal Circuit jurisprudence requires a fact finder to credit the unsupported conclusions or assertions of an expert witness. Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997); see also 37 C.F.R. § 42.65(a) (“Expert testimony that Case IPR2013-00581 Patent 7,110,936 B2 4 does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). SAS also argues that the Board erred in applying an overly restrictive obviousness analysis. Rehearing Req. 10. This argument, however, is simply a restatement of SAS’s first argument that the Board’s analysis was too strict in light of SAS’s proffered expert testimony. Id. at 11. As discussed above, we do not find this argument persuasive. In its rehearing request, SAS also newly articulates two theories explaining why a person of ordinary skill would have combined Polo with the other proposed references: (1) Oracle8 Primer was an example of applying a known technique (disclosed in Coad) to a known system (disclosed in Polo) to yield predictable results; and (2) it would have been a matter of common sense to combine the teachings of Coad with Polo. Id. at 12. SAS does not point to where, in its petition, these theories were addressed. A request for rehearing is not a means to reargue a petition, but rather a means for review of a previous decision. See 37 C.F.R. § 42.71(c) (“a panel will review the decision for an abuse of discretion”). Regardless, we do not find these new theories persuasive. Finally, SAS argues that the Board erred by concluding that the grounds based on the Oracle Primer references constituted “substantially the same prior art and arguments” set forth in IPR2013-00226. Rehearing Req. 13. SAS argues that: (1) “the time constraint associated with an IPR minimizes the harm of a seriatim attack” (id. at 13); (2) no weight should be given to the argument that ComplementSoft, LLC (“ComplementSoft”) would be prejudiced either by a separate second trial or by being subjected to a compressed timeframe if the two proceedings were joined because other IPR proceedings have been joined at an equivalent point in time (id. at 14); (3) the page limit requirements prevented SAS Case IPR2013-00581 Patent 7,110,936 B2 5 from placing all of the most salient grounds of rejection in the first petition (id.); and (4) “the Board was already aware of the benefits of the Oracle Primer references over the other references when it instituted the related IPR proceeding (i.e., IPR2013-00226)” (id. at 14-15). The language of 35 U.S.C. § 325(d) provides the Director with discretion to determine whether to institute an inter partes review. Specifically, Section 325(d) states, “[i]n determining whether to institute or order a proceeding . . . the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We are not persuaded by SAS’s policy arguments that the Board abused that discretion. III. CONCLUSION For the reasons discussed above, because SAS has not shown that the Board abused its discretion in declining to institute inter partes review on the ’936 patent based on the petition in this case, the rehearing request is denied. IV. ORDER For the reasons given, it is ORDERED that the Request for Rehearing is denied. Case IPR2013-00581 Patent 7,110,936 B2 6 PETITIONER: John V. Biernacki David B. Cochran John A. Marlott Joshua Nightingale JONES DAY jvbiernacki@jonesday.com dcochran@jonesday.com jamarlott@jonesday.com jrnightingale@jonesday.com PATENT OWNER: James Hanft George Yu SCHIFF HARDIN LLP jhanft@schiffhardin.com gyu@schiffhardin.com