AOL Inc v. Coho Licensing,

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Trials@uspto.gov 	Paper 12
571-272-7822 	Entered: March 24, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
AOL INC. and CLOUDERA, INC.,
Petitioner,
v.
COHO LICENSING LLC,
Patent Owner.
Case IPR2014-00771
Patent 8,024,395 B1
Before MIRIAM L. QUINN, LINDA M. GAUDETTE,
WILLIAM A. CAPP, Administrative Patent Judges.
QUINN, Administrative Patent Judge.
Opinion concurring-in-part and dissenting-in-part filed by CAPP,
Administrative Patent Judge
DECISION
Denying Petitioner’s Request for Rehearing
37 C.F.R. § 42.71

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I. BACKGROUND
AOL Inc. and Cloudera, Inc. (“Petitioner”) filed a request for
rehearing titled “Petitioner’s Request for Rehearing by an Expanded Panel
Pursuant to 37 C.F.R. §§ 42.71(C)-(D).” Paper 11 (“Req. for Reh’g”). In
that request, Petitioner asserts that a dissent from the denial of institution
strongly favors rehearing, and an expanded panel. Req. for Reh’g 2.
Petitioner also argues the panel misapprehended that Spawn’s1 entire
premise is to “provide a solution” for allocation of tasks. Id.
Petitioner’s request that an expanded panel be allocated to deciding
the merits of the request for rehearing is improper, and we determine that we
did not misapprehend the matters alleged in the request for rehearing.
A. Expanded Panel Request
The members of the Board deciding an institution matter do not, under
the Patent Statute, select themselves, or, of their own accord, select other
Board members to decide the matter, upon request of a party or otherwise.
The designation of panel members is within the sole authority of the
Director, which may be delegated. The Board’s Standard Operating
Procedures state that the Chief Judge, on behalf of the Director, may act to
expand a panel on a “suggestion” from a judge or panel. Accordingly,
parties are not permitted to request, and panels do not authorize, panel
expansion. Neither does a Standard Operating Procedure of the Board create
any legally enforceable rights. BPAI SOP 1 (Rev. 13) (Feb. 12, 2009) at 1.
1 Waldspurger et al., Spawn: A Distributed Computational Economy, IEEE
TRANSACTIONS ON S OFTWARE ENGINEERING , 18(2), 103–117 (1992)
(Ex. 1003).
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Furthermore, whether to expand the panel in an inter partes review
matter on a “suggestion” involves consideration of whether the issue is one
of conflict with an authoritative decision of our reviewing courts or a
precedential decision of the Board, or whether the issue raises a conflict
regarding a contrary legal interpretation of a statute or regulation. See, e.g.,
Decision Granting Petitioner’s Request for Rehearing, Target Corp. v.
Destination Maternity Corp., Case IPR2014-00508, slip op. at 56 (PTAB
Feb. 12, 2015) (Paper 28) (stating that “[t]he inconsistencies in the
interpretation of the statute presented by the Decision Denying Joinder in the
instant proceeding are a sufficient reason for expanding the panel”); see also
Apple Inc., v. Rensselaer Polytechnic Instit., LLC., Case IPR2014-00319
(PTAB Dec. 12, 2014) (Paper 20) (per curiam) (expanded panel considering
allegations of improper application of 35 U.S.C. § 315(b)). A dissent in the
denial of institution based on the sufficiency of the evidence presented in the
Petition, by itself, is not a reason to expand the panel. It shows neither an
abuse of discretion nor a conflict that weighs in favor of panel expansion.
That is, it is unpersuasive for Petitioner to suggest expansion merely because
of a disagreement among the judges in the panel concerning the facts or
evidence presented.
B. Subject Matter Alleged to have been Misapprehended or
Overlooked
In our Decision on Institution (Paper 10 (“Dec. on Inst.”)), the
majority concluded that the Petition failed to show how Spawn discloses that
the subtasks are transferred or allocated to an allocated computer. Dec. on
Inst. 6. In its Request for Rehearing, Petitioner for the first time expands on
various disclosures of Spawn not explained in the Petition to show that the
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reference discloses the limitation. For example, Petitioner now argues that
“spawning subtasks,” as disclosed in pages 10 and 16, show transfer of
tasks. Req. for Reh’g 4. But these explanations were not included in the
Petition at pages 2526, where Petitioner purportedly identified how the top-
level node in Spawn performs the limitation of transfer to a sub-allocating
computer. See Pet. 25 (“As shown in Figure 1 of Spawn, the system
includes a ‘top-level application’ node that runs the ‘root application
manager.’ . . . This meets the ‘allocating computer’ limitation because the
top-level node divides a task and allocated the portions to other nodes, or
computers.”). The Petition also does not explain how the mere disclosure of
“spawning” meets the limitation of transferring to a sub-allocating computer.
See Req. for Reh’g 4 (pointing to pages 2122, which generally cite to
Spawn, but do not explaining how “spawning” of subtasks is interpreted by a
person of ordinary skill in the art such that Spawn discloses the “transfer”
recited in the claims).
Petitioner also attempts to explain disclosure in Spawn that was not
cited in the Petition to support its contention that Spawn discloses the
limitation. For example, the Request for Rehearing expands on how to
interpret Spawn’s description of a “leaf” of the tree at page 13 to argue that
Spawn discloses recursive subtask allocations. Req. for Reh’g 4. The
Petition, however, does not cite to this description as disclosing the
limitation, nor does it provide explanation regarding the “leaf” description of
Spawn.
It is also unpersuasive for Petitioner to allege that the majority
misapprehended disclosures of Spawn cited and explained for other
limitations. For example, Petitioner argues that Spawn’s “remote initiation
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of a subtask is achieved by transferring and allocating the subtask to a
computer other than the computer processing the parent task.” Req. for
Reh’g 4 (emphasis not included). But this remote initiation disclosure was
not presented in the Petition for the limitation-at-issue. In fact, the only
contention the Petition presents for the “transfer to a sub-allocating
computer” is that Spawn’s top-level node running the root application
manager is the “allocating computer” that transfers a task portion to a sub-
allocating computer. See Pet. 25. The remote initiation of tasks was
presented in the Petition as disclosing the “sub-allocating computer
transferring a subtask portion to an allocated computer.” See Pet. 27. This
is a different limitation (transfer by a sub-allocating computer), and,
therefore, a contention different from the one presented in the Petition for
the transfer by the allocating computer.
A request for rehearing is not an opportunity to expand on evidence
and arguments not presented, or to mend gaps in the evidence relied on in
the Petition. We could not have overlooked or misapprehended an operation
of Spawn alleged to anticipate the claim when that operation was not
developed sufficiently in the Petition. Arguing for the first time on
rehearing that Spawn necessarily transfers or allocates tasks to a sub-
allocating computer is insufficient to show that the panel misapprehended
Spawn, because this argument was not presented in the Petition. Req. for
Reh’g 6. We further disagree that Spawn is “very clear” in its disclosure of
“the process for” transferring a subtask (id.). The lack of clarity of Spawn
and the dearth of explanation in the Petition are paramount to the majority’s
determination that Petitioner has failed to show a reasonable likelihood of
prevailing in its contention that Spawn anticipates claim 1.
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Further, Petitioner contends that the majority overlooked the admitted
state of the prior art. Req. for Reh’g 10. We could not have overlooked an
argument that was not made in the Petition. The ground of anticipation
proffered in the Petition does not rely on admitted prior art or on the
knowledge of a person of ordinary skill at the time of the invention. It relies
solely on Spawn as disclosing all the limitations of the claim. See Pet. 23
(“GROUND 1: CLAIMS 12, 48, 1020 ARE INVALID UNDER 35
U.S.C. § 102 AS ANTICIPATED BY SPAWN”); Ex. 1005 at 2868
(Joseph Declaration on anticipation ground not relying on any admitted prior
art). The majority did not abuse its discretion, because it could not have
considered facts not presented in the Petition. We deemed insufficient the
facts and explanations presented for the contention that Spawn discloses the
“transfer” limitation. To contend now that admitted prior art and knowledge
of a person of ordinary skill support the contention that Spawn discloses the
limitation is to do so too late. See 37 C.F.R. § 42.104 (b)(4) (“the petition
must set forth . . . [h]ow the construed claim is unpatentable under the
statutory ground identified. The petition must specify where each element
of the claim is found in the prior art patents or printed publications relied
upon.”) (emphasis added); id. § 42.71(d) (“The [rehearing] request must
specifically identify . . . the place where each matter was previously
addressed in the motion, an opposition, or reply.”).
Finally, we note that the Petitioner argues it did not need to show how
the transfer and allocation of tasks occurs in Spawn because the “claims at
issue are not limited to a particular manner for transfer and allocation.” Req.
for Reh’g 13. First, this argument is at odds with Petitioner’s contention that
Spawn is “very clear” about the process of transferring. Indeed, we disagree
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with that contention, as stated above. Further, we are not persuaded that
Petitioner meets its burden by asserting that a reference discloses
transferring a task when the majority views Spawn as providing very little
detail on this aspect of its operation, and when no explanation for how
Spawn transfers a task is provided in the Petition. Section 314 of the statute
requires that Petitioner demonstrate a reasonable likelihood that it will
prevail as to at least one of the challenged claims, and our rules require that
the Petition set forth how the construed claim is unpatentable as anticipated
by Spawn. See 37 C.F.R. § 42.104 (a)(4). Petitioner’s evidence and
argument presented in the Petition simply is insufficient to meet the
threshold for institution. None of the arguments presented in the Request for
Rehearing persuade us otherwise.
II. ORDER
It is
ORDERED that Petitioner’s Request for Rehearing is denied.
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CAPP, Administrative Patent Judge, concurring-in-part and dissenting-in-
part.
I agree with that portion of the decision regarding expanding the
panel. The vast majority of our decisions are decided by three judge panels.
Those decisions are not always unanimous. The mere fact that a panel of the
Board issues a split decision should not be interpreted as an invitation to
seek an expanded panel on rehearing in the hopes that there will be a shift in
the numbers of the respective majority and minority positions.
Otherwise, I would have instituted a trial in this case for the reasons
previously set forth in my dissent in the decision denying institution, which
do not require repetition here. Paper 10.
For PETITIONER:
David Pekarek Krohn
dpekarekkrohn@perkinscoie.com
For PATENT OWNER:
Victor M. Rodriguez-Reyes
vrodriguezreyes@ferraiuoli.com
Eugenio J. Torres-Oyola
etorres@ferraiuoli.com
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