Case 2:22-md-03034-TGB ECF No. 145-3, PageID.10551 Filed 05/17/23 Page 1 of 75
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`Exhibit 3
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`Case 2:22-md-03034-TGB ECF No. 145-3, PageID.10552 Filed 05/17/23 Page 2 of 75
`Trials@uspto.gov
`Paper 8
`571-272-7822
`Entered: May 4, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`v.
`NEO WIRELESS LLC,
`Patent Owner.
`
`IPR2022-01567
`Patent 10,447,450 B2
`
`
`Before HYUN J. JUNG, CHARLES J. BOUDREAU, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
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`
`
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`

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`Case 2:22-md-03034-TGB ECF No. 145-3, PageID.10553 Filed 05/17/23 Page 3 of 75
`IPR2022-01567
`Patent 10,447,450 B2
`
` INTRODUCTION
`Volkswagen Group of America, Inc. (“Petitioner”) filed a Petition
`requesting inter partes review of claims 1–18 of U.S. Patent No. 10,447,450
`(Ex. 1001, “the ’450 patent”). Paper 2 (“Pet.”). Neo Wireless LLC (“Patent
`Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2020). We may not
`institute an inter partes review “unless . . . there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a).
`Upon consideration of the arguments and evidence presented, we
`determine that Petitioner has demonstrated a reasonable likelihood of
`prevailing with respect to at least one of the challenged claims.
`Accordingly, we institute inter partes review of claims 1–18 of the
`’450 patent on all asserted grounds. See 37 C.F.R. § 42.108(a) (“When
`instituting . . . review, the Board will authorize the review to proceed on all
`of the challenged claims and on all grounds of unpatentability asserted for
`each claim.”).
`
` BACKGROUND
`
`A. Real Parties in Interest
`Petitioner and Patent Owner identify themselves as the real parties in
`interest, and Petitioner identifies itself as a subsidiary of Volkswagen AG.
`Pet. 3; Paper 5, 1 (Patent Owner’s Mandatory Notices).
`B. Related Matters
`The parties advise us that the ’450 patent is or has been involved in at
`least 23 ongoing or terminated district court proceedings, including, among
`others, Neo Wireless LLC v. Volkswagen Group of America, Inc., No. 1:22-
`
`2
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`IPR2022-01567
`Patent 10,447,450 B2
`cv-00076 (E.D. Tenn.), filed March 29, 2022, and terminated June 14, 2022;
`In re Neo Wireless, LLC Patent Litigation, 2:22-md-03034 (E.D. Mich.),
`filed June 23, 2022; and Neo Wireless LLC v. Volkswagen Group of
`America, Inc., No. 2:22-cv-11404 (E.D. Mich.), filed June 28, 2022.
`Pet. 3–4; Paper 5, 1–3. The ’450 patent also was the subject of a petition for
`inter partes review in Dell Inc. v. Neo Wireless, LLC, IPR2021-01486
`(petition filed September 16, 2021, Paper 3; institution denied April 14,
`2022, Paper 12). We additionally note that Ford Motor Company and
`American Honda Motor Co., Inc. (“Honda”) also have filed petitions for
`review of the ’450 patent. IPR2023-00763, Paper 1; IPR2023-00793,
`Paper 3. Honda’s petition is substantially identical to the instant Petition and
`was accompanied by a motion for joinder as a petitioner in this proceeding.
`IPR2023-00793, Paper 2.
`C. The ’450 Patent
`The ’450 patent, titled “Method and System for Multi-carrier Packet
`Communication with Reduced Overhead,” issued October 15, 2019, from an
`application filed August 14, 2017, and claims priority through a series of
`continuation applications from a provisional application filed September 28,
`2005. Ex. 1001, codes (22), (45), (54), (60), (63).
`According to the ’450 patent, bandwidth efficiency is one of the most
`important system performance factors for wireless communication systems.
`Ex. 1001, 1:33–34. In order to support the high degree of flexibility needed
`to accommodate different applications having different sized application
`payloads and different quality of service (“QoS”) requirements in packet-
`based data communication, however, wireless communication systems
`generally must provide a high degree of flexibility. Id. at 1:34–40. In
`wireless systems based on the IEEE 802.16 standard, for example, multiple
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`Patent 10,447,450 B2
`packet streams are established for each mobile station to support different
`applications, and each packet stream is mapped into a wireless connection.
`Id. at 1:42–47. Special scheduling messages, DL-MAP and UL-MAP, are
`utilized to broadcast scheduling decisions to the mobile stations. Id.
`at 1:47–50. According to the ’450 patent, the MAP scheduling method
`defined by the IEEE 802.16 standard involves significant control overhead,
`amounting altogether to 52 bits, representing as much as 32.5% of overall
`data communication for application such as voice-over-IP (“VoIP”) and
`resulting in a relatively low spectral efficiency. Id. at 1:51–2:13.
`With the goal of improving spectral efficiency, the ’450 patent
`describes a system and method for minimizing the control overhead in a
`multi-carrier wireless communication network by using a “time-frequency
`resource.” Ex. 1001, 2:13–16, 2:45–47. One or more zones in the time-
`frequency resource may be dedicated for particular applications, such as
`VoIP applications. Id. at code (57), 2:47–50. By grouping applications of a
`similar type together within a zone, a reduction can be achieved in the
`number of bits necessary for mapping a packet stream to a portion of the
`time-frequency resource. Id. at 2:50–54.
`Figure 3 of the ’450 patent is reproduced below.
`
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`IPR2022-01567
`Patent 10,447,450 B2
`Figure 3, above, is a block diagram depicting a division of communication
`capacity in a physical media resource (e.g., radio or cable) into frequency
`and time domains. Ex. 1001, 2:25–26, 4:16–18. With reference to Figure 3,
`the frequency is divided into two or more subchannels 305, represented as
`subchannels 1, 2, . . . m; and time is divided into two or more time slots 310,
`represented as time slots 1, 2, . . . n. Id. at 4:18–22. The ’450 patent
`explains that “[t]he canonical division of the resource by both time and
`frequency provides a high degree of flexibility and fine granularity for
`resource sharing between multiple applications or multiple users of the
`resource.” Id. at 4:22–26.
`Figure 6 of the ’450 patent is reproduced below.
`
`Figure 6, above, is a block diagram of a frequency-time resource utilized by
`a wireless communication network. Ex. 1001, 2:32–33, 5:32–34. The
`’450 patent explains that Figure 6 depicts an alternative way of managing
`multiple packet streams in order to overcome the inefficiencies associated
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`IPR2022-01567
`Patent 10,447,450 B2
`with the mapping of packet streams in typical wireless systems based on the
`IEEE 802.16 standard. Id. at 5:34–43. In Figure 6, time-frequency
`resource 600 is divided into zones 605a, 605b, . . . 605n, each of which is
`associated with a particular type of application (e.g., VoIP, video
`applications). Id. at 5:43–49. By grouping like applications together, the
`’450 patent explains, the amount of control overhead in MAC headers is
`reduced. Id. at 5:49–51. More particularly, according to the ’450 patent,
`when applications of a similar type are grouped together within a zone, a
`reduction in the number of bits necessary for mapping a packet stream to a
`time-frequency segment can be achieved. Id. at 5:54–57. In some
`embodiments, the identification of the time-frequency segment associated
`with a particular packet stream can be indicated by the starting time-
`frequency coordinate and the ending time-frequency coordinate relative to
`the starting point of the zone. Id. at 5:57–61. If the time-frequency resource
`is divided into two or more zones, the amount of control information
`necessary to map to a location relative to the starting point of the zone may
`be significantly less than the amount of information necessary to map to an
`arbitrary starting and ending coordinate in the entire time-frequency
`resource. Id. at 5:64–6:2.
`The ’450 patent further explains that within each zone 605a, 605b, . . .
`605n, the time-frequency resource may be further divided in accordance
`with certain rules to accommodate multiple packet streams V1, V2, . . . Vm.
`Ex. 1001, 6:3–6. For example, as depicted in Figure 6, zone 605a is divided
`into multiple columns, and the packet streams are arranged from top down in
`each column and from left to right across the columns. Id. at 6:6–9. The
`width of each column can be a certain number of subcarriers, and each
`packet stream V1, V2, . . . Vm may be associated with an application. Id.
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`IPR2022-01567
`Patent 10,447,450 B2
`at 6:9–11. For example, V1 is the resource segment to be used for the first
`voice packet stream, V2 is the resource segment to be used for the second
`voice packet stream, etc. Id. at 6:12–14. Further, according to the
`’450 patent, when the zones are further subdivided into time-frequency
`segments in accordance with certain rules, a mapping of packet streams to
`segments may be achieved using a one-dimensional offset with respect to the
`origin of the zone rather than the two-dimensional (i.e., starting time-
`frequency coordinate and ending time-frequency coordinate relative to the
`starting point of the zone) mapping method discussed above. Id. at 6:22–29.
`The ’450 patent further describes use of a “basic resource unit,” which
`is the resource utilized by the highest available modulation coding scheme
`(“MCS”) associated with a particular packet stream, such that the resources
`used by other MCSs can be represented as integer multiples of the basic unit.
`Ex. 1001, 6:45–52. Once the MCS is selected for each packet stream
`contained in a particular zone, the offset to a segment representing a
`particular packet stream may be easily calculated, and the index for any
`selected packet stream is defined as the sum of all basic resource units
`associated with each packet stream preceding the selected packet stream,
`with an optional adjustment depending on the location where the division of
`the time-frequency resource is started. Id. at 7:7–18. The ’450 patent
`explains that using basic resource units as the granularity of a location offset
`to the packet stream thus reduces the number of bits required to represent its
`location with the zone. Id. at 7:28–30.
`
`7
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`Case 2:22-md-03034-TGB ECF No. 145-3, PageID.10559 Filed 05/17/23 Page 9 of 75
`IPR2022-01567
`Patent 10,447,450 B2
`D. Illustrative Claim
`Among the challenged claims, claims 1, 7, and 13 are independent.
`Claim 1, reproduced below, is illustrative of the challenged claims.
`1. An operating method for a wireless network comprising at
`least a base station and a mobile station, the wireless network
`employing a frame structure of multiple frames for transmission,
`each frame comprising a plurality of time intervals, each time
`interval comprising a plurality of orthogonal frequency division
`multiplexing (OFDM) symbols, and each OFDM symbol
`containing a plurality of frequency subcarriers, the method
`comprising:
`assigning an identifier to the mobile station;
`transmitting a signal containing information from the base
`station
`to
`the mobile station over a segment of
`time-frequency resource, the segment having a starting
`time-frequency coordinate and the segment comprising N
`time-frequency resource units within a time interval, each
`unit containing a set of frequency subcarriers in a group of
`OFDM symbols, where N=2, 4, or 8; and
`receiving by the mobile station the transmitted signal; and
`recovering by the mobile station the information from the
`received signal based on the starting time-frequency
`coordinate and N in conjunction with the identifier
`assigned to the mobile station.
`Ex. 1001, 12:47–67.
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`Case 2:22-md-03034-TGB ECF No. 145-3, PageID.10560 Filed 05/17/23 Page 10 of 75
`IPR2022-01567
`Patent 10,447,450 B2
`E. Evidence
`Petitioner relies on the following prior art references in the
`asserted grounds of unpatentability:
`Name
`Reference
`Vijayan089 Vijayan et al., US 2005/0058089 A1, published
`March 17, 2005
`Wu et al., US 2005/0063345 A1, published
`March 24, 2005
`Vijayan475 Vijayan et al., US 2005/0141475 A1, published
`June 30, 2005
`Choi et al., US 2005/0243774 A1, published
`November 3, 2005
`Laroia et al., US 2005/0277429 A1, published
`December 15, 2005
`
`Wu
`
`Choi
`
`Laroia
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`Exhibit
`1005
`
`1008
`
`1006
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`1009
`
`1007
`
`Pet. 6. Petitioner asserts that “all references relied upon qualify as prior art
`with respect to September 28, 2005,” the filing date of the provisional
`application from which the ’450 patent claims priority. Id. at 5. According
`to Petitioner, Vijayan089, Wu, Vijayan475, Choi, and Laroia all are prior art
`under at least pre-AIA 35 U.S.C. § 102(e); and Vijayan089, Vijayan475, and
`Wu additionally are prior art under pre-AIA 35 U.S.C. § 102(a).1 Id.
`Petitioner also relies on a Declaration of Sarah Kate Wilson, Ph.D.
`(Ex. 1003). Patent Owner relies on a Declaration of William P. Alberth, Jr.
`(Ex. 2001).
`
`
`1 Because the application from which the ’450 patent issued was one in a
`series of continuation applications of which the earliest was filed before
`March 16, 2013, the pre-AIA (“America Invents Act”) versions of §§ 102
`and 103 apply. Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011); see Ex. 1001, code (63).
`
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`Case 2:22-md-03034-TGB ECF No. 145-3, PageID.10561 Filed 05/17/23 Page 11 of 75
`IPR2022-01567
`Patent 10,447,450 B2
`F. Asserted Grounds
`Petitioner asserts that claims 1–18 are unpatentable under 35 U.S.C.
`§ 103(a) on the following grounds:
`Claim(s) Challenged
`35 U.S.C. §
`1–5, 7–11, 13–17
`103(a)
`1–5, 7–11, 13–17
`103(a)
`6, 12, 18
`103(a)
`6, 12, 18
`103(a)
`
`
`Reference(s)/Basis
`Vijayan089, Laroia
`Vijayan475, Wu
`Vijayan089, Laroia, Choi
`Vijayan475, Wu, Choi
`
` ANALYSIS
`
`A. Legal Standards
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes
`review petitions to identify “with particularity . . . the evidence that supports
`the grounds for the challenge to each claim”)). This burden of persuasion
`never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden
`of proof in inter partes review).
`A patent claim is unpatentable for obviousness if the differences
`between the claimed subject matter and the prior art are “such that the
`subject matter as a whole would have been obvious at the time the invention
`was made to a person having ordinary skill in the art to which said subject
`matter pertains.” Pre-AIA 35 U.S.C. § 103(a).2
`The ultimate determination of obviousness is a question of law,
`but that determination is based on underlying factual findings.
`
`
`2 See supra note 1.
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`Case 2:22-md-03034-TGB ECF No. 145-3, PageID.10562 Filed 05/17/23 Page 12 of 75
`IPR2022-01567
`Patent 10,447,450 B2
`The underlying factual findings include (1) “the scope and
`content of the prior art,” (2) “differences between the prior art
`and the claims at issue,” (3) “the level of ordinary skill in the
`pertinent art,” and (4) the presence of secondary considerations
`of nonobviousness such “as commercial success, long felt but
`unsolved needs, failure of others,” and unexpected results.
`In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (citation omitted)
`(quoting Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).
`“To satisfy its burden of proving obviousness, a petitioner cannot
`employ mere conclusory statements. The petitioner must instead articulate
`specific reasoning, based on evidence of record, to support the legal
`conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`1364, 1380 (Fed. Cir. 2016). Furthermore, in assessing the prior art, the
`Board must consider whether a person of ordinary skill would have been
`motivated to combine the prior art to achieve the claimed invention.
`Nuvasive, 842 F.3d at 1381.
`As the Supreme Court has held, “because inventions in most, if not
`all, instances rely upon building blocks long since uncovered, and claimed
`discoveries almost of necessity will be combinations of what, in some sense,
`is already known,” “it can be important to identify a reason that would have
`prompted a person of ordinary skill in the relevant field to combine the
`elements in the way the claimed new invention does.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 418–19 (2007).
`B. Level of Ordinary Skill in the Art
`Dr. Wilson opines in her Declaration that
`a person of ordinary skill in the art (“POSITA”) in the context of
`the ’450 patent as of September 28, 2005 (the earliest priority
`date of the ’450 patent), would have a B.S. degree in electrical
`engineering, computer engineering, or computer science, or an
`equivalent field, as well as at least 3–5 years of academic or
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`IPR2022-01567
`Patent 10,447,450 B2
`industry experience in mobile wireless communications, or
`comparable industry experience. A greater amount of education,
`i.e., a doctorate in electrical engineering, computer engineering,
`computer science, or an equivalent field would also qualify as a
`POSITA for the ’450 patent in lieu of a B.S. degree. Experience
`could take the place of some formal training, as domain
`knowledge may be learned on the job. This description is
`approximate, and a higher level of education or skill might make
`up for less experience and vice versa.
`Ex. 1003 ¶ 52; see also Pet. 18 (citing Ex. 1003 ¶¶ 52–53). Patent Owner
`does not provide its own assessment regarding the level of skill in the art, or
`otherwise dispute Dr. Wilson’s testimony. See generally Prelim. Resp.; see
`also Ex. 2001 ¶¶ 21–23 (Mr. Alberth acknowledging Dr. Wilson’s
`assessment and testifying that he “accept[s] Dr. Wilson’s proposed
`qualifications of a POSITA” for purposes of his Declaration).
`Based on our review of the record at this stage, we find Dr. Wilson’s
`assessment to be is consistent with the level of skill reflected in the prior art
`references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254,
`1256 (Fed. Cir. 2007) (listing the type of problems encountered in the art,
`prior art solutions to those problems, and the sophistication of the
`technology as factors that may be considered in determining the level of
`ordinary skill in the art). Nonetheless, we further find that the qualifier “at
`least” before the number of years of academic or industry experience
`introduces unnecessary ambiguity into the assessment as it lacks any upper
`bound. Accordingly, we adopt Dr. Wilson’s assessment, minus the qualifier
`“at least,” for purposes of determining whether there is a reasonable
`likelihood that Petitioner would prevail with respect to at least one of the
`claims challenged in the Petition.
`
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`Case 2:22-md-03034-TGB ECF No. 145-3, PageID.10564 Filed 05/17/23 Page 14 of 75
`IPR2022-01567
`Patent 10,447,450 B2
`C. Claim Construction
`We interpret claim terms
`using the same claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. 282(b),
`including construing the claim in accordance with the ordinary
`and customary meaning of such claim as understood by one of
`ordinary skill in the art and the prosecution history pertaining to
`the patent.
`37 C.F.R. § 42.100(b) (2021).
`Petitioner argues that “[t]he ’450 patent does not explicitly define any
`claim terms, and the claim terms recited in the challenged claims are
`sufficiently clear on their face.” Pet. 18. Thus, Petitioner asserts, no terms
`require explicit construction. Id. Nonetheless, Petitioner contends that
`Patent Owner argued in a previous litigation that the term “configured to”
`(which we find to be recited in claims 7 and 13) should be construed such
`that “[a]n apparatus/element is ‘configured to’ perform a function if it
`includes hardware and/or software enabling the apparatus/element to
`perform the function.” Id. at 18–19 (citing Ex. 1020, 4). Citing the
`testimony of Dr. Wilson, Petitioner argues that a person of ordinary skill in
`the art “would have understood this term to have its plain and ordinary
`meaning, but to the extent that this construction is adopted, the grounds of
`unpatentability presented [elsewhere in the Petition] still render this claim
`element obvious.” Id. at 19 (citing Ex. 1003 ¶¶ 54–57).
`Patent Owner responds that, while Petitioner proposes no construction
`beyond plain meaning in this proceeding, Petitioner is among nine
`defendants that submitted terms for construction in related district court
`litigation and participated in meet-and-confer negotiations with respect to
`those terms. Prelim. Resp. 4–5 (citing Ex. 2003, 1, 5–6 (Joint Claim
`
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`Patent 10,447,450 B2
`Construction Statement from In re Neo Wireless, LLC Patent Litigation)).
`Patent Owner acknowledges that Petitioner added “footnotes suggesting that
`it ‘do[es] not take a position on the constructions’” when the parties
`submitted the constructions to the court but contends that Petitioner later
`“stipulated in the District Court that it waives its rights to challenge those
`constructions, in that Court or in this proceeding, including on appeal.” Id.
`at 5 (citing Ex. 2004, 1 n.1 (App’x A: Agreed Claim Terms from In re Neo
`Wireless, LLC Patent Litigation); Ex. 2005 1 n.1 (App’x B: Disputed Claim
`Terms from In re Neo Wireless, LLC Patent Litigation); Ex. 2006 (Notice of
`Stipulation Regarding Claim Construction from In re Neo Wireless, LLC
`Patent Litigation)). Against that backdrop, Patent Owner argues that “[a]ll
`the parties agree, and Petitioner agrees not to challenge, that ‘time-frequency
`coordinate,’ which applies to all claims, should be construed as ‘one
`dimensional time-frequency coordinate’”; that “[t]he parties agree that, with
`respect to independent claim 7 and its dependent claims, the preamble is
`limiting and should be given its plain and ordinary meaning”; and that “the
`parties agree, with respect to dependent claim 11, that ‘wherein modular
`coding is applied to the time-frequency resource units in the segment of
`time-frequency resource’ should be construed as ‘wherein a modular coding
`scheme is applied to the time-frequency resource units in the segment of
`time-frequency resource.’” Id. at 6 (citing Ex. 2004, 2, 5).
`Further, Patent Owner argues, Patent Owner and the defendants in the
`district court litigation disagree as to the construction of the term “time-
`frequency resource unit,” which appears in each of the challenged
`independent claims, with Patent Owner asserting that the term should be
`given its “[p]lain and ordinary meaning” and that “[n]o construction [is]
`necessary,” while the litigation defendants propose to construe that term as
`
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`Patent 10,447,450 B2
`“a combination of time and frequency units designed according to the
`application requirements of the application that is being grouped.” Prelim.
`Resp. 6 (citing Ex. 2005, 3).
`Having considered the parties’ arguments, we agree with Petitioner
`that no terms or phrases in the claims require express construction at this
`stage of the proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368,
`1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those
`terms . . . that are in controversy, and only to the extent necessary to resolve
`the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999))). First, regardless of whether we adopt
`Patent Owner’s construction of “time-frequency coordinate” as “one
`dimensional time-frequency coordinate,” we find, as discussed in more
`detail below, that at least Vijayan089 teaches such a one-dimensional time-
`frequency coordinate. See, e.g., infra § III.E.3.c. Second, we also conclude
`that we need not expressly construe the term “time-frequency resource unit.”
`See Prelim. Resp. 6. Notwithstanding Patent Owner’s contention that
`Petitioner’s district court co-defendants proposed a construction for that term
`in co-pending litigation, Patent Owner itself points out that “Petitioner has
`made no attempt to apply Defendants’ proposed litigation construction . . .
`for any of its grounds” in this proceeding. Id. at 6–7 (citing Pet. 44–48, 74–
`80). Accordingly, we preliminarily find that the parties appear to agree that
`plain and ordinary meaning of “time-frequency resource unit” should apply
`in this proceeding.
`Nonetheless, we identify below a potential dispute with regard to the
`construction of the claim limitation “each unit containing a set of frequency
`subcarriers in a group of OFDM symbols” that is underdeveloped on the
`present record. See infra §§ III.E.3.c, III.F.3.c. The parties are advised to
`
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`Patent 10,447,450 B2
`address the construction of that limitation in their briefing in the course of
`trial.
`D. Discretionary Denial Under 35 U.S.C. § 314(a)
`Patent Owner contends the Board should exercise its discretion to
`deny institution under 35 U.S.C. § 314(a), contending that the instant
`challenge should be denied as an improper serial petition in view of the
`Board’s denial of institution in IPR2021-01486. Prelim. Resp. 45–53.
`Citing statements in the Petition that summarize the Board’s reasons for
`denying institution of inter partes review in IPR2021-01486 and explain
`why the instantly presented references and arguments differ from those
`presented in that earlier proceeding, Patent Owner contends that the Petition
`raises “particularly significant” “road-mapping concerns.” Id. at 46–48
`(citing Pet. 17, 97–98; Code200, UAB v. Bright Data Ltd., IPR2022-00861,
`Paper 18, 5 (Aug. 23, 2022) (precedential); General Plastic Co. v. Canon
`Kabushiki Kaisha, IPR2016-01357, Paper 19, 11, 16–17 (Sept. 6, 2017)
`(precedential); Synaptics, Inc. v. Amkor Tech, Inc., IPR2017-00085,
`Paper 12, 10 (Apr. 18, 2017)).
`1. Serial Petitioning
`In General Plastic, the Board articulated a non-exhaustive list of
`factors to consider in evaluating whether to exercise discretion under
`§ 314(a) to deny a petition that challenges a patent that was previously
`challenged before the Board. These factors are:
`1. whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
`2. whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should
`have known of it;
`
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`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision
`on whether to institute review in the first petition;
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the
`filing of the second petition;
`5. whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions directed
`to the same claims of the same patent;
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
`Gen. Plastic, Paper 19 at 9–10. These factors are “a non-exhaustive list”
`and “additional factors may arise in other cases for consideration, where
`appropriate.” Id. at 16, 18.
`a. Whether the same petitioner previously filed a petition
`directed to the same claims of the same patent
`As Patent Owner points out, all claims of the ’450 patent were
`challenged previously in IPR2021-01486, filed by Dell. Prelim. Resp. 1.
`The Board denied institution in that proceeding on April 14, 2022.
`IPR2021-01486 (Paper 12). While recognizing that Board decisions
`denying “follow-on” petitions have generally “concentrated upon the
`discretion to deny serial petitions by a single petitioner,” Patent Owner
`argues that “these concerns also apply when the petitioners are not the
`same,” citing Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-
`00062, Paper 11, 2, 15 (Apr. 2, 2019) (precedential) and Ericsson Inc. v.
`Uniloc 2017, LLC, IPR2019-01550, Paper 8, 12 (Mar. 17, 2020). Prelim.
`Resp. 48–50.
`
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`We have considered Patent Owner’s arguments but determine that the
`first General Plastic factor weighs against exercising our discretion to deny
`institution. In General Plastic, the petitioner filed a set of five follow-on
`petitions after its own earlier petitions for inter partes review of the same
`two patents were denied on the merits. Gen. Plastic, Paper 19 at 2–3.
`Petitioner here, as Patent Owner admits, has not previously filed any petition
`directed to the ’450 patent. Moreover, although General Plastic has not
`been limited to instances where multiple petitions are filed by the same
`petitioner (see, e.g., Valve, Paper 11 at 9 (stating that “when different
`petitioners challenge the same patent, we consider any relationship between
`those petitioners when weighing the General Plastic factors”)), we find no
`evidence of record in the present case that Petitioner shares any relationship
`with Dell. Unlike in Valve, in which the Board found a “substantial
`relationship” to exist between different petitioners where the earlier and later
`petitioners not only were co-defendants in district court litigation but the
`earlier petitioner’s accused products in the litigation incorporated technology
`licensed from the later petitioner, we find no evidence in the record before
`us of any similar relationship between Petitioner and Dell. We are not
`persuaded that Petitioner’s and Dell’s both being defendants in district court
`litigation involving the ’450 patent rises to the type of “significant
`relationship” described in Valve. Cf. Valve, Paper 11 at 10. This case also
`differs from Ericsson, where the Board found that a petitioner had
`“implicitly created” a relationship with earlier petitioners “by using the prior
`petitioners’ work as a menu and picking and choosing from their work
`product.” Ericsson, Paper 8 at 12. Notwithstanding Patent Owner’s citation
`of Ericsson (Prelim. Resp. 49), Petitioner here does not rely on prior art
`“pick[ed] and cho[sen]” from any earlier petitions.
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`b. Whether, at the time of filing of the first petition, the
`petitioner knew of the prior art asserted in the second
`petition or should have known of it
`Patent Owner does not contend that Petitioner knew or should have
`known of the prior art asserted in the Petition at the time Dell filed the
`petition in IPR2021-01486. Indeed, it appears from the record that the
`’450 patent had not yet been asserted against Petitioner as of the time De