Sony Corporationv.Yissum Research Development Company of the Hebrew University of Jerusalem

Patent Trial and Appeal Board

Nov 21, 2013

09861859 (P.T.A.B. Nov. 21, 2013)

Trials@uspto.gov Paper 33
Tel: 571-272-7822 Entered: November 21, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
SONY CORPORATION
Petitioner

v.
YISSUM RESEARCH DEVELOPMENT COMPANY OF THE HEBREW
UNIVERSITY OF JERUSALEM
Patent Owner
_______________

Case IPR2013-00219
1

Patent 7,477,284 B2
_______________

Before SALLY C. MEDLEY, KARL D. EASTHOM, and
JAMES B. ARPIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION
Petitioner’s Request for Rehearing
37 C.F.R. § 42.71

1
The IPR2013-00327 proceeding has been joined with this proceeding.
Case IPR2013-00219
Patent 7,477,284 B2

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I. INTRODUCTION
Petitioner, Sony Corporation, filed a request for rehearing (Paper 22; “Req.”)
of the Board’s September 23, 2013, decision (Paper 16; “Dec.”), which instituted
inter partes review of claims 1-3, 10, 20, 27-29, 36, and 37 of Patent No.
US 7,477,284 B2 (Ex. 1001; “the ’284 Patent”). Petitioner argues that (1) the
grounds based on Ishiguro (Ex. 1005)

for challenging the patentability of claims 1-
4, 7, 10, 27-29, 36, and 38
2
are not redundant; (2) the Board should institute inter
partes review of challenged claims 20 and 37 based on Kawakita (Ex. 1004);
(3) the Board should institute inter partes review of challenged claims 20 and 37
based on Ishiguro; and (4) the Board should institute inter partes review of
challenged claim 38 based on Asahi. Req. 2-3; see Dec. 8 (listing full citations to
the references).
On October 16, 2013, Patent Owner filed a response (Paper 23) opposing
Petitioner’s request for rehearing; and, on October 18, 2013, Petitioner filed a reply
(Paper 24) responding to Patent Owner’s opposition to the request for rehearing.
Rule 42.71(d), however, does not provide for a party to file an opposition to a
request for rehearing without first obtaining authorization from the Board. See
SAP America, Inc. v. Versata Software, Inc., CBM2012-00001, Paper 73 (PTAB
July 15, 2013) (Order Authorizing Additional Briefing). Patent Owner did not
seek the Board’s authorization to file its response, and, therefore, Patent Owner’s
response has not been considered. Moreover, because we have not considered
Patent Owner’s unauthorized response to Petitioner’s request for rehearing, we also
have not considered Petitioner’s reply to the unauthorized response.

2
In its decision in IPR2013-00327, Paper 14, dated September 24, 2013, the Board
instituted inter partes review of claims 4, 7, and 38 of the ’284 Patent. In view of
the contemporaneous decision joining IPR2013-00327 with IPR2013-00219,
Petitioner refers to the claims identified in each petition in its request for rehearing.
Case IPR2013-00219
Patent 7,477,284 B2

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For the reasons set forth below, Petitioner’s request is denied.
II. STANDARD OF REVIEW
Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a
panel will review the decision for an abuse of discretion.” 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)
(citations omitted). The request must identify, with specificity, all matters that the
moving party believes the Board misapprehended or overlooked. 37 C.F.R.
§ 42.71(d).
III. DISCUSSION
Petitioner argues that the grounds for challenging claims 1-4, 7, 10, 27-29,
36, and 38 of the ’284 Patent based on Ishiguro are not redundant in view of the
institution of inter partes review with respect to those claims based on Kawakita
because Ishiguro is “better in some respect” than Kawakita. Req. 4-5 (quoting
Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00003,
Paper 7, at 3 (PTAB Oct. 25, 2012)). In particular, Petitioner argues that, unlike
Kawakita, Patent Owner does not challenge Ishiguro’s status as a printed
publication. Id. at 4.
The Board is charged with securing the just, speedy, and inexpensive
resolution of every proceeding and has the discretion to deny some grounds to
ensure that objective is met. 37 C.F.R. §§ 42.1(b), 42.108(b). In our decisions in
the now-joined proceedings, we instituted inter partes review based on grounds
covering all of the challenged claims, going forward on the grounds that the Board
determined to be the most sufficient substantively. In that regard, the Board
determined that, based on the record evidence, Kawakita is a publicly accessible
Case IPR2013-00219
Patent 7,477,284 B2

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reference. Pet. 52-55 (citing, e.g., Ex. 1015, Ex. 1024, and Ex. 1031). For
purposes of the decision to institute, Petitioner established that Kawakita was
publicly accessible, and the Board was not persuaded by Patent Owner’s
arguments to the contrary. Dec. 19-20; see Prelim. Resp. 18-19.
Therefore, as indicated, the issue of the public accessibility of Kawakita was
not raised for the first time in Patent Owner’s preliminary response. Rather,
Petitioner addressed the issue directly and persuasively in its petition. Pet. 52-55.
Petitioner directed the Board to evidence, including three separate and consistent
declarations (see Ex. 1015, Ex. 1024, and Ex. 1031), to establish facts sufficient to
show that Kawakita is available as a reference at this point in the proceeding, and
Patent Owner failed to persuade us otherwise. Based on the Board’s determination
that Kawakita was a publicly accessible reference as of the putative, priority date
of the ’284 Patent, the Board determined to institute review on grounds of
unpatentability with respect to challenged claims 1-3, 10, 20, 27-29, 36, and 37,
based on Kawakita and to deny institution on grounds of unpatentability based on
Ishiguro. Dec. 35.
Lastly, for purposes of our decision, the Board was not persuaded that
Ishiguro necessarily describes “a display that receives a plurality of the mosaics
and displays them so as to provide a sense of depth of the scene,” as recited in
independent claims 1 and 27. Dec. 16-17 ( construing a “display”); see also
Prelim. Resp. 20-21. Consequently, Petitioner does not argue in its petition, and
we do not determine from Petitioner’s petition and Patent Owner’s preliminary
response, that Ishiguro is “better in some respect” than Kawakita, as Petitioner
asserts (see Req. 3-4); and we, therefore, decline to modify the decision to institute.
For these reasons, we are not persuaded that the Board abused its discretion in not
instituting inter partes review on grounds based on Ishiguro.
Case IPR2013-00219
Patent 7,477,284 B2

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Petitioner argues that the Board should institute inter partes review of
claims 1-4, 7, 10, 27-29, 36, and 38 on grounds based on Ishiguro because the
Board instituted inter partes review on grounds based on Ishiguro in related
IPR 2013-00218, involving Patent No. US 6,665,003 B1 (“the ’003 Patent”).
Req. 5-6. Further, Petitioner argues that the Board should institute inter partes
review of claims 20 and 37 on grounds based on Kawakita alone or Kawakita and
Chen (Ex. 1008; see Dec. 9) because the Board instituted inter partes review of
allegedly, “substantively similar” claim 22 of the ’003 Patent on those grounds.
Req. 7-9. Petitioner argues that, because these claims are “substantively similar,”
“the Board invites contradictory outcomes” by failing to institute on the same
grounds in each inter partes review. Id. at 6 (emphasis added); see also Req. 8.
Initially, we note that the challenged claims of the ’003 Patent differ from
the challenged claims of the ’284 Patent. Significantly, challenged apparatus
claim 1 of the ’284 Patent recites that the imaging apparatus comprises “a display
that receives a plurality of the mosaics and displays them so as to provide a sense
of depth of the scene.” See Ex. 1001, Claim 1; see also Ex. 1001, Claim 38
(reciting a “displaying” step). No such limitation appears in independent claim 1
or 34
3
of the ’003 Patent.
Petitioner also argues that claims 20 and 37 of the ’284 Patent are
“substantively similar” to claim 22 of the ’003 Patent. Req. 7-8. Petitioner argues
that, “[f]or the sake of consistency and to avoid conflicting rulings,” the Board also
should institute inter partes review of claims 20 and 37 on grounds based on
Kawakita, or Kawakita and Chen. Id. at 8-9. Nevertheless, claims 20 and 37 of
the ’284 Patent and claim 22 of the ’003 Patent are dependent claims; and, for the

3
Petitioner challenged independent claim 34 in IPR2013-00326 that is joined with
IPR2013-00218.
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reasons noted above regarding their respective base claims, we determine that
challenged claims 20 and 37 of the ’284 Patent differ from challenged claim 22 of
the ’003 Patent.
Petitioner notes that the Scheduling Orders for IPR2013-00218 and
IPR2013-00219 contain identical Due Dates. Req. 7. Petitioner argues that,
because these cases may be argued together, the Board already will hear the
parties’ arguments regarding (1) Ishiguro with respect to claims 1 and 34 of the
’003 Patent and (2) Kawakita, and Kawakita and Chen, with respect to claim 22 of
the ’003 Patent. Id. at 7-8. Consequently, Petitioner argues that the Board should
institute on the allegedly similar claims of the ’284 Patent on the same grounds.
Id.
The Board has coordinated the Scheduling Orders for IPR2013-00218 and
IPR2013-00219, so that the Due Dates in each proceeding fall on the same dates
and, in particular, so that any oral hearings in these proceedings occur on the same
date, but these proceedings are not joined. The Board coordinated the Due Dates
of these separate, inter partes reviews for the convenience of the parties, their
counsel, and the Board, and in view of the concern expressed by Patent Owner in
its opposition (IPR2013-00327, Paper 11; “Opp.”) to the Petitioner’s motion for
joinder over possible delay in the resolution of these proceedings. Opp. 9-10.
In addition, Petitioner argues that the Board should institute inter partes
review of challenged claims 20 and 37 of the ’284 Patent as unpatentable over
Ishiguro and over Ishiguro and Chen (1) because the Board instituted inter partes
review of allegedly, substantively similar claim 22 of the ’003 Patent over Ishiguro
and over Ishiguro and Chen and (2) because Patent Owner is challenging whether
Kawakita is a printed publication. Req. 9. For the reasons discussed above, we
determine that Petitioner fails to demonstrate that the Board abused its discretion in
Case IPR2013-00219
Patent 7,477,284 B2

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not instituting inter partes review of claims 20 and 37 as unpatentable over
Ishiguro or over Ishiguro and Chen, or both.
As noted above, Petitioner argues in its request for rehearing that the Board
should institute inter partes review on the same grounds in IPR2013-00218 and
IPR2013-00219 to ensure consistency in their outcomes. Req. 6, 8. Because the
challenged claims of the ’284 and ’003 Patents differ, we discern no present danger
of inconsistency. For these reasons, Petitioner fails to demonstrate that the Board
abused its discretion in not instituting inter partes review on the same grounds for
distinct claims in IPR2013-00218 and IPR2013-00219.
Petitioner argues that the Board should institute inter partes review of
challenged, independent claim 38 of the ’284 Patent as anticipated by Asahi
because the Board instituted inter partes review of allegedly, substantively similar,
independent claims 1 and 27 of the ’284 Patent as anticipated by Asahi. Req. 10.
In particular, Petitioner argues that, although claim 38 is a method claim, claim 38
“recites essentially the same claim limitations for purposes of patentability as
claims 1 and 27.” Id.
Petitioner has not shown, however, that the Board’s decision not to institute
inter partes review of claim 38 based on Asahi was an abuse of discretion.
37 C.F.R. § 42.71(c). In the request for rehearing, Petitioner argues that, “[f]or the
sake of consistency, in order to avoid conflicting rulings among similar claims, and
because the additional burden of considering anticipation of claim 38 by Asahi will
be minimal if not nonexistent, the Board should institute review of claim 38 as
anticipated by Asahi.” Req. 10. We are not persuaded that the Board’s decision to
institute review of method claim 38 on grounds based on Kawakita, rather than on
both Kawakita and Asahi, creates the danger of inconsistencies or conflicting
rulings. Further, even if the added burden imposed on the Board in considering an
Case IPR2013-00219
Patent 7,477,284 B2

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additional ground as to the same claim were minimal, Petitioner fails to
demonstrate that the total burden added to the proceeding and to the parties is not.
37 C.F.R. § 42.1(b) (The Board is tasked with securing “the just, speedy, and
inexpensive resolution” of this proceeding.) For the reasons discussed above, we
determine that Petitioner fails to demonstrate that the Board abused its discretion in
not instituting inter partes review of claim 38 as anticipated by Asahi.

IV. ORDER
Accordingly, it is hereby:
ORDERED that Petitioner’s request for rehearing is denied.

FOR PETITIONER:

Walter Hanley
Michelle Carniaux
Kenyon & Kenyon, LLP
whanley@kenyon.com
mccarniaux@kenyon.com

FOR PATENT OWNER:

David L. McCombs
David O’Dell
Haynes and Boone, LLP
David.mccombs.ipr@haynesboone.com
David.odell.ipr@haynesboone.com

Robert Gerrity
William Nelson
Tensegrity Law Group, LLP
Robert.gerrity@tensegritylawgroup.com
William.nelson@tensegritylawgroup.com