Trials@uspto.gov
`Tel: 571–272–7822
`
`
`
`Paper 14
`Entered: January 28, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC, and
`SAMSUNG AUSTIN SEMICONDUCTOR, LLC,
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`Patent Owner.
`_______________
`
`Case IPR2015-00118
`Patent 8,023,580 B2
`
`
`Before JAMESON LEE, HOWARD B. BLANKENSHIP, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`BUSCH, Administrative Patent Judge.
`
`
`DECISION
`Denial of Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Denial of Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`Tel: 571–272–7822
`
`
`
`Paper 14
`Entered: January 28, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC, and
`SAMSUNG AUSTIN SEMICONDUCTOR, LLC,
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`Patent Owner.
`_______________
`
`Case IPR2015-00118
`Patent 8,023,580 B2
`
`
`Before JAMESON LEE, HOWARD B. BLANKENSHIP, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`BUSCH, Administrative Patent Judge.
`
`
`DECISION
`Denial of Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Denial of Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`IPR2015-00118
`US 8,023,580 B2
`
`I. INTRODUCTION
`
`Petitioner filed a Petition (Paper 1, “Pet.”) requesting an inter partes review
`of claims 23, 25, 29, 30, and 41 of U.S. Patent No. 8,023,580 B2 (Ex. 1301, “the
`’580 patent”). Petitioner also timely filed a motion requesting joinder (Paper 3,
`“Mot. Join.”) of this proceeding to IPR2014-00519, in which we instituted an inter
`partes review of claims 32, 34, 38, 40, 43, 44, and 47 of the ’580 patent, but denied
`review of claims 23, 25, 29, 30, and 41. Mot. Join. 2. Patent Owner filed a
`Preliminary Response (Paper 10, “Prelim. Resp.”) and an Opposition to the Motion
`for Joinder (Paper 8, “Opp.”). Petitioner filed a Reply (Paper 9, “Reply”) to Patent
`Owner’s Opposition. We have jurisdiction under 35 U.S.C. § 314.
`We have reviewed the aforementioned papers. For the reasons given below,
`we do not institute an inter partes review and we deny Petitioner’s Motion for
`Joinder.
`
`A. Related Matters
`
`Petitioner indicates that the ’580 patent was asserted against Petitioner in
`Rembrandt Wireless Technologies, LP v. Samsung Electronics Co., No. 2:13-cv-
`00213 (E.D. Tex.). Pet. 1.
`Petitioner seeks to join this proceeding to Samsung Electronics Co. v.
`
`Rembrandt Wireless Technologies, LP, Case IPR2014-00519 (PTAB) (trial
`instituted September 23, 2014) (hereinafter “IPR-519”), in which Petitioner
`challenged claims 23, 25, 29, 30, 32, 34, 38, 40, 41, 43, 44, and 47 of the ’580
`patent, but no trial was instituted with respect to claims 23, 25, 29, 30, and 41. Pet.
`1. The same parties and patent also are involved in Samsung Electronics Co. v.
`Rembrandt Wireless Technologies, LP, Case IPR2014-00514 (PTAB) (institution
`denied on Sept. 9, 2014); Samsung Electronics Co. v. Rembrandt Wireless
`
` 2
`
`
`
`
`
`
`
`IPR2015-00118
`US 8,023,580 B2
`Technologies, LP, Case IPR2014-00515 (PTAB) (institution denied on Sept. 9,
`2014); Samsung Electronics Co. v. Rembrandt Wireless Technologies, LP, Case
`IPR2014-00518 (PTAB) (trial instituted on Sept. 23, 2014); and Samsung
`Electronics Co. v. Rembrandt Wireless Technologies, LP, Case IPR2015-00114
`(PTAB). Id.
`
`B. The ’580 Patent (Ex. 1301)
`
`The specification of the ’580 patent describes “a data communications
`system in which a plurality of modulation methods are used to facilitate
`communication among a plurality of modem types.” Ex. 1301, 1:21–23. The
`’580 patent explains that the invention addresses the problem that conventional
`modem pairs can communicate successfully only when the modems use
`compatible modulation methods. Id. at 1:27–30, 1:45–47.
`Of the challenged claims, only claim 23 is independent and is reproduced as
`follows:
`23. A communications device, comprising:
`a processor; and
`a memory having stored therein executable instructions for
`execution by the processor, wherein the executable instructions direct
`transmission of a first data with a first modulation method followed
`by a second data with a second modulation method, wherein the first
`modulation method is different than the second modulation method,
`wherein the first data comprises an indication of an impending change
`from the first modulation method to the second modulation method,
`wherein the executable instructions direct transmission of a third data
`with the first modulation method after the second data, and wherein
`the third data indicates that communication has reverted to the first
`modulation method.
`
` 3
`
`
`
`
`
`
`
`IPR2015-00118
`US 8,023,580 B2
`
`C. The Asserted Grounds & Prior Art
`
`Petitioner asserts the following grounds of unpatentability under
`
`35 U.S.C. § 103:
`Evidence
`Boer1
`Boer and APA2
`
`
`Challenged Claim(s)
`23, 25, 30, and 41
`29
`
`Basis
`§ 103(a)
`§ 103(a)
`
`II. DISCUSSION
`
`A. Background
`
`In IPR-519, Petitioner asserted that claims 23, 25, 30, and 41 of the ’580
`patent are unpatentable as anticipated by Boer, that claims 23, 25, and 30 are
`unpatentable as obvious over Boer, and that claim 29 is unpatentable as obvious
`over Boer and APA. Pet. 1. We did not institute an inter partes review of claims
`23, 25, 29, 30, and 41 as anticipated by Boer, and explained as follows3:
`Boer’s system may be capable of transmitting a first
`message’s data
`field using
`either DQPSK or
`PPM/DQPSK followed, a subsequent message’s header
`field using DBPSK, where the subsequent message’s
`
`
`1 U.S. Patent No. 5,706,428 (filed Mar. 14, 1996, issued Jan. 6, 1998) (Ex. 1304)
`(“Boer”).
`2 Petitioner alleges that Figures 1 and 2 of the ’580 patent and the accompanying
`descriptions are admitted prior art. Pet. 37–38 (citing Ex. 1301, Figs. 1, 2, 2:16–
`20, 3:40–46) (“APA”).
`3 Institution of inter partes review with respect to the obviousness of claims 25 and
`30 in view of Boer and claim 29 in view of Boer and APA was denied because
`claims 25, 29, and 30 depend from, and incorporate the limitations of, claim 23.
`Further, with respect to claim 29, Petitioner did not show that APA cures the
`deficiencies identified with respect to claim 23.
`
` 4
`
`
`
`
`
`
`
`IPR2015-00118
`US 8,023,580 B2
`header field indicates that the subsequent message’s data
`field will be transmitted using DBPSK. However, the
`Petition has not established that the specific series of
`transmissions as recited in independent claim 23 is
`explicitly disclosed by or necessarily present in Boer.
`IPR-519, Dec. Inst. 8 (Paper 16); id. at 12–13.
`We did not institute an inter partes review of claims 23, 25, and 30 as
`obvious in view of Boer, and explained as follows:
`Petitioner presents no other argument regarding what
`aspects of Boer would need to be modified in order to
`meet the recited limitations and why. The underlying
`factual inquiries necessary for a proper obviousness
`analysis, as set forth in Graham v. John Deere Co., 383
`U.S. 1, 17–18 (1966), have not been discussed
`sufficiently. In particular, Petitioner has not submitted
`persuasive argument or evidence curing the deficiency
`identified with respect to its anticipation challenge.
`
`Id. at 9.
`
`Petitioner argues in the Petition in the instant proceeding that Boer explicitly
`teaches the limitations we found to be missing from Petitioner’s challenges to
`claims 23, 25, 29, 30, and 41, as explained in our institution decision in IPR-519.
`Pet. 11–12. In this proceeding, notwithstanding Petitioner’s arguments that Boer
`explicitly teaches the limitations, Petitioner presents challenges arguing why the
`limitations identified as not having been shown sufficiently as anticipated by Boer
`would have been obvious in view of Boer. Pet. 12–37. We do not reach the merits
`of Petitioner’s new argument that the previously insufficiently shown limitations
`would have been obvious. Instead, for the reasons discussed below, we exercise
`our discretion under 35 U.S.C. § 325(d) to deny institution of inter partes review in
`this proceeding.
`
` 5
`
`
`
`
`
`
`
`IPR2015-00118
`US 8,023,580 B2
`
`B. Relevant Law
`
`
`
`A petitioner is not entitled to multiple challenges against a patent:
`In determining whether to institute or order a proceeding
`under . . . 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) (titled: “MULTIPLE PROCEEDINGS”). Further, in construing our
`authority to institute inter partes review under 37 C.F.R. § 42.108, we are mindful
`of the guidance provided in § 42.1(b): “[37 C.F.R. § 42] shall be construed to
`secure the just, speedy, and inexpensive resolution of every proceeding.”
`
`C. Analysis
`
`On its face, it is more efficient for the parties and the Board to address a
`
`matter once rather than twice. The sole difference between what Petitioner
`presents in this proceeding and what Petitioner presented in IPR-519, with respect
`to the challenge of claims 23, 25, 29, 30, and 41 of the ’580 patent, is the presence
`of additional reasoning to support the assertion of unpatentability over the same
`prior art. Mot. Join. 1, 4; Opp. 1, 3, 9–10.
`Petitioner is requesting, essentially, a second chance to address claims 23,
`25, 29, 30, and 41. We, however, are not persuaded that a second chance would
`help “secure the just, speedy, and inexpensive resolution of every proceeding.”
`37 C.F.R. § 42.1(b). Permitting second chances without constraint ties up the
`Board’s limited resources; we must be mindful not only of this proceeding, but of
`“every proceeding.” Id.; see also ZTE Corp. v. ContentGuard Holdings, Inc., Case
`IPR2013-00454, slip op. at 5–6 (PTAB Sept. 25, 2013) (Paper 12) (“The Board is
`concerned about encouraging, unnecessarily, the filing of petitions which are
`partially inadequate.”). Accordingly, we look to see if this case presents a
`
` 6
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`
`
`
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`
`
`IPR2015-00118
`US 8,023,580 B2
`circumstance that merits a second chance. Cf. Ariosa Diagnostics v. Isis
`Innovation, Ltd., Case IPR2013-00250, slip op. at 2, 4 (PTAB Sept. 8, 2013)
`(Paper 25) (granting joinder when a new product was launched, leading to a threat
`of new assertions of infringement); Microsoft Corp. v. Proxyconn, Inc., Case
`IPR2013-00109, slip op. at 3 (PTAB Feb. 25, 2014) (Paper 15) (additional claims
`had been asserted against Petitioner in concurrent district court litigation).
`In this proceeding, however, we are not apprised of a reason that merits a
`second chance. Petitioner simply presents an argument now that it could have
`made in IPR-519, had it merely chosen to do so. In view of the above, and
`especially in light of the fact that, barring joinder, this Petition is time-barred under
`35 U.S.C. § 315(b), we exercise our discretion under 35 U.S.C. § 325(d) to deny
`the Petition, because it presents merely “the same or substantially the same prior
`art or arguments” presented to us in IPR-519. As a consequence, Petitioner’s
`motion for joinder is dismissed as moot.
`
`III. ORDER
`
`In view of the foregoing, it is hereby:
`ORDERED that no trial is instituted; and
`FURTHER ORDERED that Petitioner’s motion for joinder is dismissed.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` 7
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`
`IPR2015-00118
`US 8,023,580 B2
`PETITIONER:
`
`Jeffrey Miller
`millerj@dicksteinshapiro.com
`
`Daniel Cardy
`cardyd@dicksteinshapiro.com
`
`
`PATENT OWNER:
`
`Thomas Engellenner
`engellennert@pepperlaw.com
`
`Reza Mollaaghababa
`mollaaghababar@pepperlaw.com
`
`Lana Gladstein
`gladsteinl@pepperlaw.com
`
`
` 8
`
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`
`
`
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