`571-272-7822
`
`Paper 10
`Entered: November 20, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC,
`Patent Owner.
`____________
`
`
`
`Case CBM2018-00024
`Patent 8,577,813 B2
`____________
`
`
`
`
`Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`CBM2018-00024
`Patent 8,577,813 B2
`
`
`I. INTRODUCTION
`This is a preliminary proceeding to decide whether, under § 18
`of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125
`Stat. 284, 331 (2011) (“AIA”), a covered business method patent
`review of U.S. Patent No. 8, 577,813 B2 (Ex. 1201, “the ’813 patent”
`or “the challenged patent”), should be instituted under 35 U.S.C.
`§ 324(a).1 A covered business method patent review may not be
`instituted “unless . . . the information presented in the petition . . . , if
`such information is not rebutted, would demonstrate that it is more
`likely than not that at least 1 of the claims challenged in the petition is
`unpatentable.” 35 U.S.C. § 324(a); see 37 C.F.R. § 42.208. We have
`authority under 35 U.S.C. § 324(a).
`Apple Inc. filed a Petition requesting covered business method
`patent review of claims 1, 2, 4–11, 13–20, and 22–26 of the challenged
`patent. Paper 3 (“Pet.”), 1, 18. Patent Owner timely filed a
`Preliminary Response. Paper 9 (“Prelim. Resp.”).
`Upon consideration of the record, as explained in detail below,
`we determine that the ’813 patent qualifies as a covered business
`method patent for purposes of the AIA. We further determine the
`information presented in the Petition demonstrates it is more likely
`than not that at least one claim of the ’813 patent is unpatentable.
`
`1 GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309, 1310 (Fed. Cir. 2015)
`(describing transitional program for review of covered business
`method patents, pursuant to the AIA, as subject to “the ‘standards and
`procedures of[] a post-grant review under . . . 35 U.S.C. §§ 321–329,’”
`absent exceptions not applicable here (alteration in original) (quoting
`AIA § 18(a)(1))).
`
`2
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`CBM2018-00024
`Patent 8,577,813 B2
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`Accordingly, we institute a covered business method patent review of
`claims 1, 2, 4–11, 13–20, and 22–26. See 35 U.S.C. § 324(a).
`A. Related Matters
`As required by 37 C.F.R. § 42.8(b)(2), each party identifies
`several judicial or administrative matters that would affect or be
`affected by a decision in this proceeding, including concurrently filed
`CBM2018-00025 and CBM2018-00026. Pet. 2–4; Paper 4, 2 (Patent
`Owner’s Mandatory Notices). Petitioner specifically identifies co-
`pending district court proceeding Universal Secure Registry, LLC v.
`Apple Inc. et al., No. 17-585-VAC-MPT (D. Del.). Pet. 9 (citing Ex.
`1203). Petitioner, however, does not identify IPR2018-00067, which
`instituted a trial proceeding with a different Petitioner on many of the
`same claims of the ’813 patent under 35 U.S.C. § 103(a). Prelim.
`Resp. 12–13; see Unified Patents Inc. v. Universal Secure Registry
`LLC, Case IPR2018-00067, slip op. 4 (PTAB, May 2, 2018) (Paper
`14)..
`
`B. The ’813 Patent
`The ’813 patent is titled “Universal Secure Registry” and is
`directed to authenticating a user using biometric and secret information
`provided to a user device, encrypted, and sent to a secure registry for
`validation. Ex. 1201, (54), Abstract. The ’813 patent issued
`November 5, 2013, from an application filed September 20, 2011.
`Id. at (45), (22). The ’813 patent includes a number of priority claims,
`including dates as early as February 21, 2006. Id. at (63), (60), 1:6–32.
`
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`1. Written Description
`The specification describes one aspect of the invention as an
`“information system that may be used as a universal identification
`system and/or used to selectively provide information about a person to
`authorized users.” Id. at 3:65–4:1. One method described for
`controlling access involves “acts of receiving authentication
`information from an entity at a secure computer network,
`communicating the authentication information to the secure registry
`system, and validating the authentication information at the secure
`registry system.” Id. at 4:43–48. The “universal secure registry”
`(“USR”) is described as a computer system with a database containing
`entries related to multiple people, with a variety of possible
`information about each person, including validation, access, and
`financial information. Id. at 9:35–12:18.
`Validation information in the ’813 patent “is information about
`the user of the database to whom the data pertains and is to be used by
`the USR software 18 to validate that the person attempting to access
`the information is the person to whom the data pertains or is otherwise
`authorized to receive it.” Id. at 12:19–23. Such information must
`“reliably authenticate the identity of the individual” and may include
`“a secret known by the user (e.g., a pin, a phrase, a password, etc.), a
`token possessed by the user that is difficult to counterfeit (e.g., a secure
`discrete microchip), and/or a measurement such as a biometric (e.g., a
`voiceprint, a fingerprint, DNA, a retinal image, a photograph, etc.).”
`Id. at 12:23–31. The ’813 patent describes using such information in
`combination with other information “to generate a one-time
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`Patent 8,577,813 B2
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`nonpredictable code which is transmitted to the computer system” and
`used “to determine if the user is authorized access to the USR
`database.” Id. at 12:50–60; see id. at 45:55–46:36. According to the
`’813 patent, certain systems may relay communication between a user
`device and the secure registry through a point-of-sale (“POS”) device.
`Id. at 43:4–44:31.
`One such system embodiment is illustrated in Figure 31,
`reproduced below.
`
`
`As shown above, in Figure 31, system 350 facilitates financial
`transactions using point-of-sale device 354, user device 352, and USR
`356, which can communication with one another wirelessly over
`network 357. Id. at 43:4–6. The ’813 patent defines the term
`“financial transaction” can include any of sales transactions including
`transactions conducted on-line or at a point of sale using credit or debit
`accounts, banking transactions, purchases or sales of investments and
`financial instruments or generally the transfer of funds from a first
`account to a second account. Id. at 43:6–12.
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`2. Illustrative Claims
`Petitioner challenges claims 1, 2, 4–11, 13–20, and 22–26.
`
`Pet. 1. Claims 1, 16, and 24 are independent. Claims 1 and 24 are
`illustrative of the challenged subject matter and reproduced below.
`An electronic ID device configured to allow a user
`1.
`to select any one of a plurality of accounts associated with
`the user to employ in a financial transaction, comprising:
`a biometric sensor configured to receive a biometric input
`provided by the user;
`a user interface configured to receive a user input including
`secret information known to the user and identifying
`information concerning an account selected by the user
`from the plurality of accounts;
`a communication interface configured to communicate
`with a secure registry;
`a processor coupled to the biometric sensor to receive
`information concerning the biometric input, the user
`interface and the communication interface, the processor
`being programmed to activate the electronic ID device
`based on successful authentication by the electronic ID . . .
`secret information, the processor also being programmed
`such that once the electronic ID device is activated the
`processor is configured to generate a non-predictable value
`and to generate encrypted authentication information from
`the non-predictable value, information associated with at
`least a portion of the biometric input, and the secret
`information, and
`to communicate
`the encrypted
`authentication
`information via
`the communication
`interface to the secure registry; and
`wherein the communication interface is configured to
`wirelessly
`transmit
`the
`encrypted
`authentication
`information to a point-of-sale (POS) device, and wherein
`the secure registry is configured to receive at least a portion
`of the encrypted authentication information from the POS
`device.
`
`6
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`Patent 8,577,813 B2
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`Ex. 1201, 51:65–52:29.
`24. A method of controlling access to a plurality of
`accounts, the method comprising acts of:
`generating, with an electronic ID device, a non-predictable
`value;
`generating, with the electronic ID device, encrypted
`authentication information from the non-predictable value
`generated by the electronic ID device, information
`associated with at least a portion of a biometric of the user
`received by the electronic ID device, and secret information
`provided to the electronic ID device by the user;
`communicating the encrypted authentication information
`from the electronic ID device to a secure registry via a
`point-of-sale (POS) device
`to authenticate or not
`authenticate the electronic ID device with the secure
`registry;
`initiate a financial
`to
`the POS device
`authorizing
`transaction involving a transfer of funds to or from the
`account selected by
`the user when
`the encrypted
`authentication information is successfully authenticated;
`and
`denying the POS device from initiation of the financial
`transaction involving a transfer of funds to or from the
`account selected by the user when the encrypted
`authentication
`information
`is
`not
`successfully
`authenticated.
`Id. at 54:24–46.
`C. Asserted Ground of Unpatentability
`Petitioner challenges the patentability of claims 1, 2, 4–11, 13–
`
`20, and 22–26 of the ’827 patent based on the following grounds
`(Pet. 18):
`
`7
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`
`References
`Maes2 and
`Jakobsson3
`Maes, Jakobsson,
`and Maritzen5
`Maes, Jakobsson,
`and Labrou6
`
`Claims Challenged
`Basis
`§ 103(a)4 1, 2, 4, 5, 11, 13, 16–20, and 24
`
`§ 103(a)
`
`6–10
`
`§ 103(a)
`
`14, 15, 22, 23, 25, and 26
`
`Petitioner also relies upon the Declaration of Victor Shoup, Ph.D. (Ex.
`1202) to support its challenges.
`
`II. DISCUSSION OF PRELIMINARY MATTERS
`
`Standing to File a Petition for CBM Review
`A.
`Section 18 of the AIA provides for the creation of a transitional
`program for reviewing covered business method patents. Section 18
`limits reviews to persons or their privies who have been sued or
`charged with infringement of a “covered business method patent.”
`AIA § 18(a)(1)(B); see 37 C.F.R. § 42.302. As discussed above in
`Section I.A., Petitioner represents it has been sued for infringement of
`the ’813 patent and is not estopped from challenging the claims on the
`
`
`2 U.S. Patent No. 6,016,476, issued Jan. 18, 2000 (“Maes,” Ex. 1213).
`3 WO Patent Publication No. WO 2004/051585 A2, published June 17,
`2004 (“Jakobsson,” Ex. 1214).
`4 The America Invents Act included revisions to, inter alia, 35 U.S.C.
`§ 103 effective on March 16, 2013. Because the ’813 patent issued
`from an application filed before March 16, 2013, the pre-AIA version
`of 35 U.S.C. § 103 applies.
`5 U.S. Patent Publication No. US 2004/0236632 A1, published Nov.
`25, 2004 (“Maritzen,” Ex. 1215).
`6 U.S. Patent Publication No. US 2004/0107170 A1, published Jun. 3,
`2004 (“Labrou,” Ex. 1216).
`
`8
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`CBM2018-00024
`Patent 8,577,813 B2
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`grounds identified in the Petition. Pet. 9 (citing Ex. 1203).
`
`B. Qualifying as a CBM Patent for CBM Review
`A threshold question is whether the ’813 patent is a “covered
`business method patent,” as defined by the AIA. The AIA defines a
`“covered business method patent” as “a patent that claims a method or
`corresponding apparatus for performing data processing or other
`operations used in the practice, administration, or management of a
`financial product or service . . . .” AIA § 18(d)(1); see 37 C.F.R.
`§ 42.301(a). “[Section] 18(d)(1) directs us to examine the claims when
`deciding whether a patent is a [covered business method] patent.” Blue
`Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016);
`Unwired Planet, LLC v. Google Inc., 841 F.3d 1376, 1382 (Fed. Cir.
`2016) (CBM patents “are limited to those with claims that are directed
`to methods and apparatuses of particular types and with particular uses
`‘in the practice, administration, or management of a financial product
`or service’” (emphasis added); see also Secure Axcess, LLC v. PNC
`Bank Nat’l Assoc., 848 F.3d 1370, 1378 (Fed. Cir. 2017) (“The
`statutory definition by its terms makes what a patent ‘claims’
`determinative of the threshold requirement for coming within the
`defined class” of a covered business method patent.) (cert. granted,
`judgement vacated as moot by PNC Bank Nat. Ass’n. v. Secure Axcess,
`LLC, 138 S. Ct. 1982 (2018)).
`A patent need have only one claim directed to a covered
`business method to be eligible for review. See Transitional Program
`for Covered Business Method Patents—Definitions of Covered
`Business Method Patent and Technological Invention; Final Rule,
`
`9
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`77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012); cf. Versata Dev. Grp.,
`Inc. v. SAP Am., Inc., 793 F.3d 1306, 1326–27 (Fed. Cir. 2015)
`(accepting single claim analysis to determine whether to institute a
`covered business method patent review). “When properly construed in
`light of the written description, the claim need only require one of a
`‘wide range of finance-related activities.’” Secure Axcess, 848 F.3d at
`1381; see also Versata, 793 F.3d at 1312–13, 1325–26 (identifying a
`qualifying claim); Blue Calypso, 815 F.3d at 1339–40 (identifying a
`qualifying claim); SightSound Techs., LLC v. Apple Inc., 809 F.3d
`1307, 1315–16 (Fed. Cir. 2015) (identifying a qualifying claim).
`The parties dispute whether the ’813 patent is a “covered
`business method patent,” as defined in the AIA and 37 C.F.R.
`§ 42.301. See Pet. 9–18; Prelim. Resp. 23–31. It is Petitioner’s burden
`to demonstrate that the’813 patent is a covered business method patent.
`See 37 C.F.R. § 42.304(a). For the reasons discussed below, we
`determine Petitioner has made a sufficient showing that the ’813 patent
`is a “covered business method patent.”
`1. Financial Product or Service
`Petitioner identifies several challenged claims that it contends
`satisfy the threshold financial requirement on the basis of their claim
`language. Pet. 11 (identifying claims 1, 2, 4–11, 13–20, 22–26).
`According to Petitioner, claims 1 and 24 (and those that depend from
`them) disclose a device and method for providing or denying access to
`information related to a user stored in a secure database in the context
`of a “financial transaction,” while dependent claims 7, 13, 14, 17, 20,
`22, 23, 25, and 26 all explicitly recite financial transactions, user
`
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`account numbers, purchases, and/or selection of products or services.
`Id. Additionally, Petitioner argues that all independent claims recite a
`“point of sale” or “POS” device. Id.
`Petitioner notes that the specification defines a financial
`transaction as including “transactions conducted on-line or at a point of
`sale using credit or debit accounts, banking transactions, purchases or
`sales of investments and financial instruments or generally the transfer
`of funds from a first account to a second account.” Id. (citing
`Ex. 1201, 43:6–12). Petitioner then contends the patent specification
`makes clear that the “accounts” recited in all challenged claims can be
`financial in nature. Id. at 11–12 (citing Ex. 1201, 6:66–7:1 (“In still
`another aspect, a user device is configured to allow a user to select any
`one of a plurality of accounts associated with the user to employ in a
`financial transaction.”), 7:47–50 (“authorizing the POS device to
`initiate a financial transaction involving a transfer of funds to or from
`the account selected by the user when the encrypted authentication
`information is successfully authenticated”)).
`We agree with Petitioner, because the challenged claims on their
`face explicitly recite financial terms and a financial product and/or
`service. See, e.g., Ex. 1201, 51:65–52:53 (claims 1, 16, and 24 recite a
`“point-of-sale (POS) device”; claim 7 received a “financial
`transaction”; claim 14 recites “options for purchase”; claims 15, 23,
`and 26 recite “at least one product or service”; claim 24 recites
`“financial transaction,” “transfer of fund to or from the account”;
`claims 22 and 25 recite “displaying option for purchase.”
`
`11
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`2. Exclusion for Technological Inventions
`Petitioner contends the ’813 patent is not directed to a
`“technological invention” because it leverages known technology for
`verifying an account holder’s identity based on codes and/or
`information related to the account holder before enabling a transaction.
`Pet. 15. Indeed, according to Petitioner, the ’813 patent concedes that
`the claimed invention is not tied to any particular technology, and can
`be implemented in “a general-purpose computer system” using “a
`commercially available microprocessor” running “any other
`commercially available operating system” and that the secure registry
`database itself “may be any kind of database,” which can communicate
`using “any [network] protocol.” Id. (quoting Ex 1201, 10:1–11:28;
`citing Ex 1202 ¶ 47).
`Patent Owner disputes Petitioner’s contentions, arguing that the
`’813 patent claims a “technological invention” and, thus, is ineligible
`for CBM review. Prelim. Resp. 23. According to Patent Owner, the
`’813 patent provides a technical solution to the technical problem of
`implementing privacy while providing identity authentication at the
`same time. Id. at 23–27 (citing Ex. 2001 ¶¶ 37–42). Patent Owner
`walks through the steps of the challenged claims noting all the
`technical concerns and the use of specific technology to accomplish
`each step. Id.
`Despite Patent Owner’s arguments, we agree with Petitioner and
`find that each steps uses a technological feature that was known in the
`art as of the patent’s earliest priority date. See Ex. 1201, 43:54–44:7.
`Additionally, as noted by Petitioner, the steps appear to be
`
`12
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`implemented in a conventional manner. See Pet. 14; see Ex. 1201,
`43:54–44:7.
`3. Conclusion
`Based on the foregoing analysis, we are satisfied at this time that
`the ’813 patent meets the statutory definition under AIA Section
`18(d)(1) and is eligible for CBM review. See Blue Calypso, 815 F.3d
`at 1340; see also, e.g., Secure Axcess, 848 F.3d at 1381 (“Necessarily,
`the statutory definition of a CBM patent requires . . . a claim that
`contains . . . a financial activity element.”).
`
`Analysis of 35 U.S.C. § 324(a)
`C.
`Patent Owner contends we should use our discretion under
`35 U.S.C. § 324(a) to deny the Petition.7 Prelim. Resp. 14–15 (citing
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, slip. op. at 9–10, 16 (PTAB Sept. 6, 2017) (Paper 19)
`(“General Plastic”); NVIDIA Corp. v. Samsung Elecs. Co., Ltd.,
`IPR2016-00134, slip op. at 7 (PTAB May 4, 2016) (Paper 9)
`(“NVIDIA Corp.”)). Although the petitioners are different, Patent
`Owner argues that a previously instituted petition in IPR2018-00067
`(“the ’067 proceeding”) challenging many of the same claims in the
`’813 patent using the same base reference is sufficient to exercise our
`discretion under 35 U.S.C. § 314(a). Id.
`
`
`7 Patent Owner’s argument erroneously refers to § 314(a), which
`applies to inter partes review proceedings. Prelim. Resp. 14–15. We,
`nonetheless, read Patent Owner’s arguments as a request for
`consideration under the proper statute applicable to covered business
`method reviews (i.e., 35 U.S.C. § 324(a)).
`13
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`Institution of a covered business method review is discretionary
`and is governed by the statute for post-grant proceedings. See
`35 U.S.C. § 324(a) (authorizing institution of a post-grant review under
`particular circumstances, but not requiring institution under any
`circumstances); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a
`matter committed to the Patent Office’s discretion. See [5 U.S.C.]
`§ 701(a)(2); 35 U.S.C. § 314(a) (no mandate to institute review)”
`(additional citation omitted)). As when determining whether to
`exercise our discretion under § 314(a) for the institution of an inter
`partes review proceeding, we consider the following non-exhaustive
`factors when considering the institution of a covered business method
`review proceeding under § 324(a):
`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;
`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. § 326(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
`
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`See General Plastic, slip op. at 15–16 (citing NVIDIA Corp., slip op. at
`6–7). For the reasons discussed in detail below, we do not exercise our
`discretion to deny institution based on § 324(a).
`1. Whether the same petitioner previously filed a petition
`directed to the same claims of the same patent?
`Patent Owner argues Petitioner has filed multiple petitions
`directed to the same claims of the ’813 patent. Prelim. Resp. 16.
`Patent Owner specifically notes Petitioner has filed two other petitions
`directed to the exact same claims of the ’813 patent: CBM2018-00025
`and CBM2018-00026.8 Id. Yet, we have determined that all three
`petitions were filed concurrently. We note that the factor articulated in
`General Plastic of “whether the same petitioner previously filed a
`petition directed to the same claims of the same patent” is about a
`“previously filed . . . petition,” and is not directed to concurrently filed
`petitions. See General Plastic, slip op. at 9. Thus, we find this factor
`strongly weighs in favor of instituting.
`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?
`Patent Owner argues Petitioner should have known of the
`primary reference asserted in the Petition (Maes) because it was the
`basis for the challenges in the previously instituted ’067 proceeding.
`Prelim. Resp. 16. As Patent Owner concedes, with different parties
`
`
`8 Patent Owner makes no assertions regarding how the
`’067 proceeding, filed by a different petitioner, should impact the
`analysis of this factor.
`
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`filing the respective petitions, this factor “could be neutral.” Id. Yet,
`for that exact reason, we find this factor to weigh in favor of
`institution.
`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?
`Patent Owner argues Petitioner had three months to tailor its
`arguments because, at the time the instant Petition was filed on May 3,
`2018, Patent Owner already had filed its preliminary response in the
`’067 proceeding on February 5, 2018. Prelim. Resp. 17. According to
`Patent Owner, Petitioner used the three months to tailor its arguments
`to address issues raised by Patent Owner, i.e., assert a new secondary
`reference to attempt to deal with the deficiencies of the secondary
`references in the ’067 proceeding. Thus, Patent Owner contends this
`factor weighs in favor of denial. Although Petitioner did not have the
`advantage of the Board’s perspective of either the petition or Patent
`Owner’s positions in the ’067 proceeding, if it was aware of the
`’067 proceeding, then it was afforded a glimpse into Patent Owner’s
`arguments regarding potential shortcomings to the previously filed
`petition. Therefore, we find this factor to weigh in favor of denial.
`The length of time that elapsed between the time the
`4.
`petitioner learned of the prior art asserted in the second petition
`and the filing of the second petition?
`Patent Owner argues Petitioner should have known of the
`primary reference, Maes, when the petition in the ’067 proceeding was
`filed in October 2017. Prelim. Resp. 17. According to Patent Owner,
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`because it had sued Petitioner in July 2017, “it is reasonable to expect
`that [Petitioner] would have been monitoring the PTO since that time
`and should have known of the filing of the ’067 proceeding.” Id. at
`17–18. Yet, Patent Owner acknowledges that Petitioner did not notify
`the District Court in the parallel proceeding of such institution until
`May 2018, which was after this Petition was filed. Id. (citing
`Ex. 2003). Therefore, there is nothing to substantiate Patent Owner’s
`contentions regarding the earliest date that Petitioner should have
`known of Maes. Accordingly, we find this factor to be neutral.
`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?
`Patent Owner argues Petitioner failed to cite to the
`’067 proceeding let alone explain the time lapse (seven months)
`between the filing of the petition in that case and the one in the instant
`case. Prelim. Resp. 18. Petitioner, however, is not a party to the
`’067 proceeding and Patent Owner provides insufficient evidence
`Petitioner was aware of the filings in the ’067 proceeding prior to filing
`the Petition. See, e.g., Ex. 2003. Accordingly, we find this factor to
`weigh in favor of institution.
`The finite resources of the Board and the requirement
`6.
`under 35 U.S.C. § 326(a)(11) to issue a final determination not
`later than 1 year after the date on which the Director notices
`institution of review?
`Patent Owner argues that “belatedly attempt[ing] to fix defects
`in earlier petitions” weighs in favor of denying of “incremental and
`later filed-petitions against the same patent and claims.” Prelim.
`
`17
`
`
`
`CBM2018-00024
`Patent 8,577,813 B2
`
`Resp. 18 (citing General Plastic, slip op. at 9–10; NVIDIA Corp., slip
`op. at 7; Skechers USA, Inc. v. Adidas, AG., IPR2017-00322, slip op. at
`8–9 (PTAB May 30, 2017) (Paper 9); Xactware Sols., Inc. v. Eagle
`View Techs., Inc., IPR2017-00034, slip op. at 7–8 (PTAB April 13,
`2017) (Paper 9)). Patent Owner also notes “it is more efficient for the
`parties and the Board to address a matter once rather than twice.” Id.
`at 19 (quoting Samsung Elec. Co. v. Rembrandt Wireless Techs., LP,
`IPR2015-00114, slip op. at 6 (PTAB Jan. 28, 2015) (Paper 14)).
`Patent Owner further argues that denial of institution is
`particularly warranted in this case due to the advanced stage of earlier
`proceedings challenging the ’813 patent. Id. (citing Duk San Neolux
`Co., Ltd. v. Idemitsu Kosan Co., Ltd., IPR2017-00197 at 10 (PTAB
`Mar. 31, 2017) (Paper 10) (advanced stage of earlier proceeding
`challenging the same patent weighed in favor of denial)). Furthermore,
`according to Patent Owner, the incremental petitioning here involves
`four separate petitions and would require the Board to adjudicate
`multiple petitions on the ’813 patent separately, thereby necessitating
`four separate trials on proceedings directed to the same patent and
`involving overlapping prior art. Id. Patent Owner concludes that the
`expense and wasted resources in hearing (and for Patent Owner,
`defending) against such serial, incremental petitioning is prejudicial to
`the Board and Patent Owner and exactly the kind of conduct that
`Congress sought to avoid by giving the Board discretion to deny
`institution. Prelim. Resp. 19.
`Although the ’067 proceeding has been instituted, we do not find
`that evaluating this Petitioner’s grounds from three Petitions filed on
`
`18
`
`
`
`CBM2018-00024
`Patent 8,577,813 B2
`
`the same day would waste Board resources. We note that the grounds
`asserted in this Petitioner’s Petitions have similarities that will allow
`the Board to evaluate the three petitions efficiently. As to General
`Plastic’s factor 7, we do not find that the Board’s resources will be
`taxed to the degree that final written decisions in these proceedings
`will not be completed on time. We also are cognizant of the estoppel
`provision of 35 U.S.C. § 325(e), which estops a petitioner from
`asserting in a civil action that a “claim is invalid on any ground that the
`petitioner raised or reasonably could have raised during that post-grant
`review.” 35 U.S.C. § 325(e)(1) (emphasis added). The estoppel
`requirement forces a petitioner to decide the breadth of the challenge to
`bring given the risk that certain grounds may not be brought in a
`parallel civil action. Accordingly, the statute contemplates that a
`petitioner may decide that the appropriate breadth of a challenge
`warrants multiple petitions. Thus, we find this factor weigh in favor of
`institution.
`For the above reasons, we do not exercise our discretion under
`35 U.S.C. § 324(a) to deny institution of a trial proceeding.
`
`Analysis of 35 U.S.C. § 325(d)
`D.
`Patent Owner contends we should use our discretion under
`35 U.S.C. § 325(d) to deny the Petition. Prelim. Resp. 20–23.
`According to Patent Owner, “it is of no moment that the
`’067 proceeding was brought by a different petitioner, nor that
`different secondary references are cited, nor even that the two
`proceedings involve slightly different dependent claims” because the
`Board routinely rejects such arguments. Id. at 20–21 (citing Google
`
`19
`
`
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`CBM2018-00024
`Patent 8,577,813 B2
`
`LLC v. Uniloc Lux. S.A., IPR2017-02081, slip op. at 8–12 (PTAB
`Mar. 29, 2018) (Paper 10) (“Google LLC”) (denying institution)9).
`Patent Owner argues that, for many of the same reasons proffered for
`why we should deny under 35 U.S.C. § 314(a), we should deny under
`35 U.S.C. § 325(d). Id. at 21–23.
`We have discretion under 35 U.S.C. § 325(d) to reject a petition
`when the same or substantially the same prior art or arguments were
`presented previously in another proceeding before the Office. The
`relevant portions of that statute are reproduced below:
`In determining whether to institute or order a proceeding
`under this chapter, chapter 30, or chapter 31, 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.
`35 U.S.C. § 325(d). In evaluating whether to deny institution on the
`basis of 35 U.S.C. § 325(d), the Board has considered certain
`non-exclusive factors: (1) the similarities and material differences
`between the asserted art and the prior art involved during examination;
`(2) the cumulative nature of the asserted art and the prior art evaluated
`during examination; (3) the extent to which the asserted art was
`evaluated during examination; (4) the extent of the overlap between the
`
`
`9 In the Google case, the primary reference forming the basis of all the
`challenges had been