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`Paper No.
`Filed: January 13, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`WINTEK CORPORATION
`Petitioner
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`v.
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`TPK TOUCH SOLUTIONS INC.
`Patent Owner
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`Case IPR2013-00567
`Case IPR2013-00568
`Patent 8,217,902
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`Joint Motion to Stay Ex Parte Reexamination
`of U.S. Patent No. 8,217,902
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`Case IPR2013-00567 & 568
`Joint Motion to Stay Ex Parte Reexamination
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`Brief Statement of Relief Requested
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`I.
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`In response to the Board’s order issued on January 9, 2014, Petitioner
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`Wintek Corp. (“Wintek” or “Petitioner”) and Patent Owner TPK Touch Solutions
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`Inc. (“TPK” or “Patent Owner”) jointly request the Board to stay the ex parte
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`reexamination (control no. 90/012,869) of U.S. Patent No. 8,217,902 (“the ’902
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`patent”) pending resolution of this inter partes review of the ’902 patent.
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`II.
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`1.
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`Statement of Material Facts
`A. Litigation
`TPK asserted the ’902 patent against Wintek in a patent infringement
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`litigation filed on May 15, 2013 in the Northern District of California (case
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`no. 3:13-cv-2218).
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`B.
`Ex Parte Reexamination Control No. 90/012,869
`On May 17, 2013, a request for ex parte reexamination of claims 1-68 of the
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`2.
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`’902 patent was filed, which was assigned control no. 90/012,869 (“the ’869
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`reexamination”). The request proposed 18 grounds of rejection based on the
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`following six references: Japanese Published Patent Application No.
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`60-75927 (“Fujitsu”); U.S. Patent No. 6,137,427 (“Binstead”); Japanese
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`Published Patent Application No. 61-84729 (“Honeywell”); Published UK
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`Patent Application GB 2 168 816 A (“Lambert”); U.S. Patent Application
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`1
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`Case IPR2013-00567 & 568
`Joint Motion to Stay Ex Parte Reexamination
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`Publication No. 2005/0030048 (“Bolender”); and U.S. Patent No. 5,374,787
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`(“Miller”).
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`3.
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`On June 20, 2013, the Office found that the prior art identified in the
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`reexamination request raises substantial new questions of patentability of
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`claims 1-68 of the ’902 patent and ordered ex parte reexamination.
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`4.
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`On November 15, 2013, the Office issued an office action, rejecting claims
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`1-68 based on the 18 grounds of rejection proposed in the request.
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`5.
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`On January 6, 2014, TPK filed a response to the Office Action. In its
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`response, TPK added 7 new independent claims 69-75. The ’869
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`reexamination remains pending before the Office.
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`C.
`IPR2013-00567 and IPR2013-00568
`On September 4, 2013, Wintek filed two petitions for inter partes review
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`6.
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`(“IPR”) of claims 1-68 of the ’902 patent. These petitions were assigned
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`case nos. IPR2013-00567 (“the 567 Petition”) and IPR 2013-00568 (“the
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`568 Petition”). The 567 and 568 Petitions collectively present a total of 18
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`grounds that challenge the patentability of claims 1-68 of the ’902 patent.
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`The IPR petitions also rely on substantially the same prior art identified in
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`the ’869 reexamination, namely Fujitsu, Binstead, Honeywell, Lambert,
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`Bolender, and Miller, and one additional reference, U.S. Patent Application
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`Publication No. 2007/0229469 (“Seguine”). In particular, the 567 Petition
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`2
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`Case IPR2013-00567 & 568
`Joint Motion to Stay Ex Parte Reexamination
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`involves nine grounds based on two primary prior art references Binstead
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`and Lambert, along with various combinations of those references with
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`Honeywell, Bolender, Miller, and Seguine. The 568 Petition involves nine
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`grounds based on two primary prior art references Fujitsu and Honeywell,
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`along with various combinations of those references with Binstead, Miller,
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`Seguine, and Bolender.
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`7.
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`TPK filed preliminary responses in the IPR2013-00567 and IPR2013-00568
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`proceedings on December 11, 2013. The Board has not yet decided whether
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`to institute trial in these two IPR proceedings.
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`III. Full Statement of the Reasons for Stay
`Under 35 U.S.C. § 315(d), “if another proceeding or matter involving the
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`patent is before the Office, the Director may determine the manner in which the
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`inter partes review or other proceeding or matter may proceed, including providing
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`for stay, transfer, consolidation, or termination of any such matter or proceeding.”
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`35 U.S.C. § 315(d); see also 37 C.F.R. §§ 42.122(a), 42.3(a). In determining
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`whether to grant a stay of a pending reexamination proceeding, the Board
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`considers several factors including: (1) whether claim amendments in one
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`proceeding could interfere with another proceeding; (2) whether the proceedings
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`include common issues, such that conducting the proceedings concurrently would
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`result in an inefficient use of Office resources or produce inconsistent results; and
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`3
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`(3) whether an IPR proceeding could result in a decision on the merits before a
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`Case IPR2013-00567 & 568
`Joint Motion to Stay Ex Parte Reexamination
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`final decision in a reexamination, simplifying the issues remaining in the
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`reexamination proceeding. See, e.g., Goertek, Inc. v. Knowles Elecs., LLC,
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`IPR2013-00614, Paper 11 at 3 (Nov. 13, 2013).1 The issues involved with respect
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`to the IPR2013-00567 and IPR2013-00568 proceedings and the ’869
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`reexamination warrant granting a stay of the ’869 reexamination.
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`First, claim amendments made in the ’869 reexamination could interfere
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`with the conduct of the IPR2013-00567 and IPR2013-00568 proceedings. Indeed,
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`TPK added seven new independent claims in its response to the first Office Action
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`in the ’869 reexamination, demonstrating the potential for amendments in that
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`proceeding. The new claims include some limitations that track those of issued
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`claims 1-68 of the ’902 patent. These and/or any other claim amendments
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`introduced in the ’869 reexamination could interfere with the IPR2013-00567 and
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`1 See also Samsung Elecs. Co. Ltd. v. Fractus, S.A., IPR2014-00008, Paper 14 at 4
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`(Nov. 12, 2013); Google, Inc. v. Grandeye, Ltd., IPR2013-00548, Paper 7 at 2
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`(Sept. 30, 2013); Lumondi Inc. v. Lennon Image Techs. LLC, IPR2013-00432,
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`Paper 7 at 2 (Aug. 6, 2013); CB Distributors, Inc. v. Ruyan Investments (Hldgs.)
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`Ltd., IPR2013-00387, Paper 6 at 2 (July 24, 2013); The Scotts Co., LLC v. Encap,
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`LLC, IPR2013-00110, Paper 10 at 2-3 (May 13, 2013).
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`4
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`IPR2013-00568 proceedings by changing or affecting the scope of the claims at
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`Case IPR2013-00567 & 568
`Joint Motion to Stay Ex Parte Reexamination
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`issue before the Board. Similarly, any amendments to the claims (including new
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`claims) in this IPR2013-00567 and IPR2013-00568 proceedings could interfere
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`with the ’869 reexamination. Staying the ’869 reexamination would prevent
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`proliferation of inconsistent claim amendments between the reexamination and IPR
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`proceedings.
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`Second, conducting the ’869 reexamination concurrently with the
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`IPR2013-00567 and IPR2013-00568 proceedings would result in inefficient use of
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`the Office resources and could produce inconsistent results in the three
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`proceedings. All three proceedings involve the same claims and substantially the
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`same prior art, and raise substantially similar issues. Specifically, the ’869
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`reexamination involves the patentability of issued claims 1-68 of the same ’902
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`patent. Likewise, the IPR2013-00567 and IPR2013-00568 proceedings challenge
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`the patentability of the same issued claims. Further, the two IPR proceedings rely
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`on substantially the same prior art and raise substantially similar patentability
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`challenges as in the ’869 proceeding. Thus, for example, the Office’s Central
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`Reexamination Unit and the Board may reach contrasting positions, at different
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`stages of the proceedings in connection with interpretations of the claims, the prior
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`art, or other issues. Given the similarity of the prior art and the issues between the
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`reexamination and IPR proceedings, conducting the ’869 reexamination
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`5
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`concurrently with the IPR2013-00567 and/or IPR2013-00568 proceedings would
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`Case IPR2013-00567 & 568
`Joint Motion to Stay Ex Parte Reexamination
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`result in an inefficient use of Office resources and could produce inconsistent
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`results.
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`Third, the Board’s final determination in the IPR2013-00567 and
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`IPR2013-00568 proceedings could simplify issues in the ’869 reexamination. The
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`Board must determine whether to institute an inter partes review within three
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`months of the filing of a preliminary response by the patent owner. 35 U.S.C.
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`§ 314(b). If instituted, the Board will be required to issue its final determination
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`within one year of the date of institution of trial, absent good cause for an
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`extension up to six months. 35 U.S.C. § 316(a)(11). Here, because TPK filed its
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`preliminary responses in the IPR2013-00567 and IPR2013-00568 proceedings on
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`December 11, 2013, the Board must determine whether to institute trials in these
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`IPR proceedings by March 11, 2014, and, if instituted, issue a final written
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`decision by March 11, 2015 (absent an extension). It is thus likely that any final
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`written decision issued by the Board in the IPR2013-00567 and/or IPR2013-00568
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`proceedings will precede any final decision in the ’869 reexamination. Staying the
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`’869 reexamination, therefore, would most likely simplify the issues remaining in
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`that proceeding based on the Board’s decision(s) in the IPR matters.
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`6
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`Case IPR2013-00567 & 568
`Joint Motion to Stay Ex Parte Reexamination
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`IV. Conclusion
`For at least the reasons set forth above, Petitioner and Patent Owner jointly
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`request that the Board stay the ’869 reexamination until the IPR2013-00567 and
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`IPR2013-00568 proceedings are completed, whether by final written decision,
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`decision not to institute inter partes review, or other mechanisms provided for by
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`the Rules.
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`Dated: January 13, 2014
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`Respectfully submitted,
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`
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`By: /Joseph E. Palys/
`Joseph E. Palys (Lead Counsel for Wintek)
`Registration No. 46,508
`Finnegan, Henderson, Farabow, Garrett
` & Dunner, LLP
`11955 Freedom Drive
`Reston, VA 20190-5675
`(571) 203-2700
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`By: /Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti (Lead Counsel for TPK)
`Registration No. 47,024
`BRYAN CAVE, LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-1092
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
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`7
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`Case IPR2013-00567 & 568
`Joint Motion to Stay Ex Parte Reexamination
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`CERTIFICATE OF SERVICE
`I hereby certify that on this 13th day of January 2014, a copy of Joint
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`Motion to Stay Ex Parte Reexamination of U.S. Patent No. 8,217,902 was
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`served by electronic mail upon the Lead and Backup Counsel for TPK Touch
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`Solutions Inc.:
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`Joseph J. Richetti (Lead Counsel for TPK)
`BRYAN CAVE, LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-1092
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
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`Dated: January 13, 2014
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`David Bilsker (Backup Counsel for TPK)
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`General Tel: (415) 875-6600
`Direct Tel: (415) 875-6432
`Fax: (415) 875-6700
`Email: davidbilsker@quinnemanuel.com
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`
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`By: /Joseph E. Palys/
`Joseph E. Palys
`Registration No. 46,508
`Finnegan, Henderson, Farabow, Garrett
` & Dunner, LLP
`11955 Freedom Drive
`Reston, VA 20190-5675
`(571) 203-2700
`
`Counsel for Wintek Corp.
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`1
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