Paper 8
`Trials@uspto.gov
`571-272-7822 Entered: December 3, 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 CBM2018-00025
`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
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: December 3, 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 CBM2018-00025
`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
`
`
`
`
`
`
`CBM2018-00025
`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. 1101, “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, 19. Patent Owner timely filed a
`Preliminary Response. Paper 7 (“Prelim. Resp.”).
`Upon consideration of the record, as explained in detail below,
`we determine that the ’813 patent is a covered business method patent
`and that the Petition satisfies the institution threshold, so we grant the
`Petition and institute a covered business method review proceeding.
`
`
`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))).
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`
`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
`CBM2018-00024 and CBM2018-00026. Pet. 2–3; Paper 4, 2 (Patent
`Owner’s Mandatory Notices). Petitioner 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. 1; 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. 1101, (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.
`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,
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`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
`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.
`
`4
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`Patent 8,577,813 B2
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`
`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.
`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.
`1.
`An electronic ID device configured to allow a user
`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;
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`
`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.
`Ex. 1101, 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
`
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`
`Basis
`§ 103(a)4
`
`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;
`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; 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):
`References
`Jakobsson2 and
`Maritzen3
`
`2 WO Patent Publication No. WO 2003/051585 A2, published June 17,
`2003 (“Jakobsson,” Ex. 1115).
`3 U.S. Patent Publication No. US 2003/0236632 A1, published Nov.
`25, 2003 (“Maritzen,” Ex. 1116).
`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.
`
`Claims Challenged
`1, 2, 4–11, 13, 16–20, and 24
`
`7
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`
`References
`Jakobsson, and
`Labrou5
`
`Basis
`§ 103(a)
`
`Claims Challenged
`14, 15, 22, 23, 25, and 26
`
`Petitioner also relies upon the Declaration of Victor Shoup, Ph.D.
`(Ex. 1102) to support its challenges.
`
`II. DISCUSSION OF PRELIMINARY MATTERS
`
`A. Standing to File a Petition for CBM Review
`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
`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
`
`
`5 U.S. Patent Publication No. US 2003/0107170 A1, published Jun. 3,
`2003 (“Labrou,” Ex. 1117).
`
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`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, 1377 (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,
`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
`
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`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. 9–19; Prelim. Resp. 26–43. 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, and 25–26 all explicitly recite financial transactions, user
`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. at 11–12 (citing
`
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`Ex. 1101, 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. (citing Ex. 1101, 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. 1001, 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.”
`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
`
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`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 1101, 10:1–11:28;
`citing Ex 1102 ¶ 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. 26–43. Patent Owner specifically
`argues: (1) Petitioner fails to analyze the claims’ limitations in detail
`and merely makes conclusory statements regarding the claims’
`purported lack of novelty and obviousness without pointing to a single
`prior art reference; (2) Petitioner’s assertion that the claims do not
`disclose a “technological feature” improperly rest on only hardware
`components and fails to analyze the software; (3) Petitioner fails to
`address the claimed subject matter as a whole; and (4) Petitioner
`neglects software contributions in the claims and mischaracterizes the
`technical problems addressed and the technical solutions provided by
`the ’813 patent. Id. at 27–28.
`According to Patent Owner, the ’813 patent provides a technical
`solution to the technical problem of “how to securely and reliably
`authenticate the identity of a user of an electronic device and
`authenticate the electronic device itself for use in a distributed
`electronic transaction involving a point-of-sale device, even when
`distributed electronic transactions necessarily require electronic
`transmission of data vulnerable to interception to the provider.” Id. at
`32. Patent Owner further argues that the Petition fails to appreciate the
`
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`contributions of the software that functions as part of the claimed
`invention to provide a technical solution. Id. at 32–33.
`Despite Patent Owner’s arguments, we agree with Petitioner and
`find that each step uses a technological feature that was known in the
`art as of the patent’s earliest priority date. See Pet. 13–14 (citing
`Ex. 1101, 43:54–44:7). Additionally, as noted by Petitioner, the steps
`appear to be implemented in a conventional manner using non-specific
`software. See Pet. 16–18.
`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.”).
`C.
`Analysis of 35 U.S.C. § 324(a)
`Patent Owner contends we should use our discretion under
`35 U.S.C. § 324(a) to deny the Petition.6 Prelim. Resp. 19–21 (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.,
`
`
`6 Patent Owner’s argument erroneously refers to § 314(a), which
`applies to inter partes review proceedings. Prelim. Resp. 19–21. 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)).
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`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) and that the prior petitioner
`(Unified Patents) was a proxy for the current Petitioner. Id. at 20–21.
`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;
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`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.
`
`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, including through a
`proxy. Prelim. Resp. 21. Patent Owner specifically argues the
`petitioner in the ’067 proceeding (Unified Patents) is a for-profit
`company seeking to “mitigate NPE risk for its members,’” and
`routinely files IPRs on patents that Apple is accused of infringing. Id.
`(citing Ex. 2005, 1; Ex. 2006, 2, 4; Ex. 2007). We note, however,
`Patent Owner did not argue the current Petitioner (Apple) was a real
`party-in-interest or in privity with Unified Patents in the ’067
`proceeding’s briefing. See Unified Patents Inc. v. Universal Secure
`Registry LLC, IPR2018-00067, Paper 7 (Patent Owner’s Preliminary
`Response), Paper 13 (Patent Owner’s Supplemental Preliminary
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`Response). Nor does Patent Owner make such an argument here.7
`Moreover, Patent Owner has not sought discovery either in this case or
`in the ’067 proceeding to determine whether Petitioner and Unified
`Patents are in privity.
`Patent Owner next argues that Petitioner has filed two other
`petitions directed to the exact same claims of the ’813 patent:
`CBM2018-00025 and CBM2018-00026. Id. at 21–22. 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 one of the
`secondary references asserted in the Petition (Labrou) because it was
`the basis for the challenges in the previously instituted
`’067 proceeding. Prelim. Resp. 22. Patent Owner then argues that the
`Petitioner in the ’067 proceeding (Unified Patents) contacted the
`inventor of the Jakobsson reference, suggesting that Unified Patent was
`aware of the Jakobsson reference. Id. at 22–23. Patent Owner,
`
`
`7 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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`however, makes an insufficient showing that the current Petitioner had
`any prior knowledge of Jakobsson. As Patent Owner concedes, with
`different parties 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. 23. According to
`Patent Owner this gave Petitioner time 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. Id. Thus, Patent Owner contends
`this factor weighs in favor of denial. Id.
`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 be neutral with regards to institution.
`
`17
`
`
`
`CBM2018-00025
`Patent 8,577,813 B2
`
`
`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
`references in the petition in the ’067 proceeding when it was filed in
`October 2017 [which is before the filing of this Petition] because it was
`filed by “its proxy, Unified Patents.” Prelim. Resp. 24. There is
`nothing, however, to substantiate Patent Owner’s contentions
`regarding the earliest date that Petitioner should have known of
`Jakobsson, Maritzen, or Labrou. Accordingly, we find this factor to
`weigh in favor of institution.
`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. 24–25. 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. 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
`
`18
`
`
`
`CBM2018-00025
`Patent 8,577,813 B2
`
`later filed-petitions against the same patent and claims.” Prelim.
`Resp. 25 (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.
`(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. Prelim. Resp. 25–26. 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. Id. at 26.
`
`19
`
`
`
`CBM2018-00025
`Patent 8,577,813 B2
`
`
`Although the ’067 proceeding has been instituted, we do not find
`that evaluating this Petitioner’s grounds from three petitions filed on
`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)(2) (emphasis added). The estoppel
`provision 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. 13–19.
`According to Patent Owner, “it is of no moment that the
`’067 proceeding was brought by a different petitioner, nor that
`different references are cited, nor even that the two p
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