Trials@uspto.gov
`571-272-7822
`
`
`
`
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`Paper 12
`Entered: July 1, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC.,
`Patent Owner.
`
`
`
`Case IPR2015-00404
`Patent 7,365,871 B2
`
`
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 12
`Entered: July 1, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC.,
`Patent Owner.
`
`
`
`Case IPR2015-00404
`Patent 7,365,871 B2
`
`
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2015-00404
`Patent 7,365,871 B2
`
`
`I.
`INTRODUCTION
`LG Electronics, Inc. (“Petitioner”)1 filed a Petition requesting inter
`partes review of claims 1–8 and 12–15 (“the challenged claims”) of U.S.
`Patent No. 7,365,871 B2 (Ex. 1001, “the ’871 patent”). Paper 3 (“Pet.”). e-
`Watch, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 11
`(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which
`provides that an inter partes review may be authorized only if “the
`information presented in the petition . . . and any [preliminary] response . . .
`shows that there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`§ 314(a). Upon consideration of the Petition, we determine that the
`information presented by Petitioner establishes that there is a reasonable
`likelihood that Petitioner would prevail in showing the unpatentability of
`claims 1–8 and 12–15 of the ’871 patent. Accordingly, pursuant to 35
`U.S.C. § 314, we institute an inter partes review of claims 1–8 and 12–15 of
`the ’871 patent.
`
`A. Related Proceedings
`The ’871 patent is involved in eleven co-pending district court cases
`in the U.S. District Court for the Eastern District of Texas. Pet. 1–2; Paper
`5, 2–3. The ’871 patent also is the subject of IPR2014-00439 (terminated),
`IPR2014-00987, IPR2015-00404, IPR2015-00406, IPR2015-00411,
`
`
`1 The Petition also identifies Microsoft Mobile OY (Pet. 1). After the
`Petition was filed, however, Microsoft Mobile OY and e-Watch filed a Joint
`Motion to Terminate with Respect to Microsoft Mobile OY (Paper 7), which
`we granted (Paper 10).
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`IPR2015-00412, and IPR201-00413. Pet. 2; Paper 4, 3–4. Petitioner also
`filed a petition in IPR2015-00401 involving related U.S. Patent No.
`7,643,168 B2. Pet. 2; Paper 5, 4.
`
`B. The ’871 Patent
`The ’871 patent relates generally to “image capture and transmission
`systems and is specifically directed to an image capture, compression, and
`transmission system for use in connection with landline and wireless
`telephone systems.” Ex. 1001, 1:17–20. According to the ’871 patent, the
`system “is particularly well-suited for sending and/or receiving images via a
`standard Group III facsimile transmission system and permits capture of the
`image at a remote location using an analog or digital camera.” Id. at 5:3–6.
`Figure 1 of the ’871 patent is reproduced below.
`
`
`Figure 1 is a block diagram of a basic facsimile camera configuration for
`capturing an image via a camera and transmitting it via Group III facsimile
`transmission to a standard hard copy medium. Id. at 4:27–30.
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`Figure 7A of the ’871 patent is reproduced below.
`
`
`Figure 7A depicts “a hand[-]held device for capturing, storing, and
`transmitting an image in accordance with the invention.” Id. at 4:46–48,
`11:3–20.
`
`C. Illustrative Claim
`Of the challenged claims, claims 1, 6, and 12 are independent. Claim
`1 is reproduced below:
`telephone and
`1.
`A handheld self-contained cellular
`integrated image processing system for both sending and
`receiving telephonic audio signals and for capturing a visual
`image and transmitting it to a compatible remote receiving
`station of a wireless telephone network, the system comprising:
`a manually portable housing;
`an integral image capture device comprising an electronic
`camera contained within the portable housing;
`a display for displaying an image framed by the camera,
`the display being supported by the housing, the display and the
`electronic camera being commonly movable in the housing
`when the housing is moved by hand;
`a processor in the housing for generating an image data
`signal representing the image framed by the camera;
`a memory associated with the processor for receiving and
`storing the digitized framed image, accessible for selectively
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`displaying in the display window and accessible for selectively
`transmitting over the wireless telephone network the digitized
`framed image;
`a user interface for enabling a user to select the image
`data signal for viewing and transmission;
`a telephonic system in the housing for sending and
`receiving digitized audio signals and for sending the image data
`signal;
`alphanumeric input keys in the housing for permitting
`manually input digitized alphanumeric signals to be input to the
`processor, the telephonic system further used for sending the
`digitized alphanumeric signals;
`for
`adapted
`a wireless
`communications device
`transmitting any of the digitized signals to the compatible
`remote receiving station; and
`a power supply for powering the system.
`Ex. 1001, 14:4915:13.
`
`D. References Relied Upon
`Petitioner relies upon the following references:
`Nagai2
`JP H09-37129
`Feb. 7, 1997
`Lemelson
`US 4,485,400
`Nov. 27, 1984
`Ohnsorge
`US 5,485,504
`Jan. 16, 1996
`Sasaki
`US 5,018,017
`May 21, 1991
`Nagamine
`US 6,564,070 B1 May 13, 2003
`
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
`Ex. 1008
`
`
`2 Unless otherwise noted, citations are to the certified English translation of
`Nagai at pages 10–30 of Exhibit 1004.
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`Pet. 4–5. Petitioner also relies upon the Declaration of Dr. Robert Stevenson
`(“Stevenson Decl.”) (Ex. 1003).
`
`E. The Asserted Grounds of Unpatentability
`Petitioner argues that the challenged claims are unpatentable as
`obvious over the following grounds:
`Basis Claims challenged
`References
`§ 103 1–8 and 12–15
`Nagai and Lemelson
`§ 103 1–3, 5–7, 12, 14, and 15
`Lemelson and Ohnsorge
`Lemelson, Ohnsorge, and Sasaki § 103 4, 8, and 13
`Nagamine
`§ 103 1–7 and 12–15
`Nagamine and Sasaki
`§ 103 4, 8, and 13
`
`II. ANALYSIS
`
`A. 35 U.S.C. § 325(d)
`The sole contention raised by Patent Owner in its Preliminary
`Response is that we should exercise our discretion under 35 U.S.C. § 325(d)
`to deny institution because the present Petition overlaps with ten other
`petitions asserting unpatentability of the ’871 patent. Prelim. Resp. 1–3.
`Patent Owner alleges specifically that there is substantial overlap with
`respect to the prior art cited and associated grounds of unpatentability in one
`of the other petitions, IPR2015-00402. Id. at 4; Ex. 2001.
`We are cognizant of the burden on the Patent Owner and on the Office
`to rehear the same or substantially the same prior art or arguments that are
`being considered by the Office in another proceeding. We determine,
`however, that the prior art and arguments asserted in the other ten petitions
`do not warrant exercise of our jurisdiction under § 325(d) in this proceeding.
`Only one of those petitions—IPR2015-00402—asserts the same grounds of
`unpatentability as asserted here; the other petitions rely on different prior art.
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`With respect to IPR2015-00402, it was filed by a different petitioner, we
`have not yet decided whether to institute, and, even if we do, the parties to
`that proceeding may settle prior to a final determination as to the
`unpatentability of the challenged claims in view of the asserted grounds.
`Accordingly, we decline to exercise our discretion under § 325(d) to reject
`this Petition.
`
`B. Prior Art Status of the Asserted References
`During prosecution, a declaration (Ex. 1002, 187–191, “Monroe
`Declaration”) was submitted by the Applicant, in response to an Office
`Action, to claim a priority date of March 18, 1993. Ex. 1002, 165–177. The
`Examiner determined that the Monroe Declaration sufficiently antedated the
`reference. Ex. 1002, 348.
`Petitioner argues that the Monroe Declaration fails to support the
`March 18, 1993, date and, therefore, the ’168 patent should be entitled to a
`priority date no earlier than January 12, 1998 (the filing date of its parent
`application). Pet. 8–10. If the ’168 patent is accorded the March 18, 1993
`filing date, none of the references asserted here are prior art and institution
`must be denied.
` Although the Examiner determined that the Monroe Declaration
`sufficiently antedated the reference (Ex. 1002, 348), we are not bound by
`that determination. We have reviewed the Monroe Declaration and
`determine, for reasons discussed below, that it is insufficient to establish a
`priority date earlier than January 12, 1998.
`Priority of invention goes to the first party to reduce to practice unless
`the other party can show that it was the first to conceive the invention and
`that it exercised reasonable diligence in later reducing that invention to
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`practice. Brown v. Barbacid, 276 F.3d 1327, 1337 (Fed. Cir. 2002); Cooper
`v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998); Mahurkar v. C.R. Bard,
`Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996). An inventor’s testimony,
`standing alone, is insufficient to prove conception, as some form of
`corroboration is required. Mahurkar, 79 F.3d at 1577; Price v. Symsek, 988
`F.2d 1187, 1194 (Fed. Cir. 1993). A rule of reason applies to determine
`whether the inventor’s testimony has been corroborated. Price, 988 F.2d at
`1194. During the period in which reasonable diligence must be shown, there
`must be continuous exercise of reasonable diligence. In re McIntosh, 230
`F.2d 615, 619 (CCPA 1956); see also Burns v. Curtis, 172 F.2d 588, 591
`(CCPA 1949) (referring to “reasonably continuous activity”). A party
`alleging diligence must account for the entire critical period. Griffith v.
`Kanamuru, 816 F.2d 624, 626 (Fed. Cir. 1987); Gould v. Schawlow, 363
`F.2d 908, 919 (CCPA 1966). Even a short period of unexplained inactivity
`is sufficient to defeat a claim of diligence. Morway v. Bondi, 203 F.2d 742,
`749 (CCPA 1953); Ireland v. Smith, 97 F.2d 95, 99–100 (CCPA 1938). In In
`re Mulder, 716 F.2d 1542, 1542–46 (Fed. Cir. 1983), for example, the
`Federal Circuit affirmed a determination of lack of reasonable diligence,
`where the evidence of record was lacking for a two-day critical period.
`Likewise, in Rieser v. Williams, 255 F.2d 419, 424 (CCPA 1958), there was
`no showing of diligence where no activity was shown during the first
`thirteen days of the critical period.
`A party alleging diligence must provide corroboration with evidence
`that is specific both as to facts and dates. Gould, 363 F.2d at 920; Kendall v.
`Searles, 173 F.2d 986, 993 (CCPA 1949). The rule of reason does not
`dispense with the need for corroboration of diligence that is specific as to
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`dates and facts. Gould, 363 F.2d at 920; Kendall, 173 F.2d at 993; see
`Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985).
`Of the asserted prior art references, Nagamine has the latest priority
`date: September 2, 1997. If the Monroe Declaration cannot antedate
`Nagamine, it cannot antedate any of the asserted prior art references. We
`therefore analyze the Monroe Declaration with respect to the September 2,
`1997 filing date of Nagamine.
`The Monroe Declaration does not establish, adequately, conception of
`the subject matter of any challenged claim prior to September 2, 1997. The
`Monroe Declaration does not correlate the elements of the challenged claims
`of the ’871 patent to that which purportedly was conceived by him prior to
`September 2, 1997. For example, Mr. Monroe testified that he conceived
`“the invention” at least as early as March 18, 1993 (Ex. 1002, 191, ¶ 17), but
`did not explain how the evidence of that conception correspond to the
`elements of any challenged claim. The Monroe Declaration also does not
`make a sufficient showing of continuous exercise of reasonable diligence
`from just prior to September 2, 1997 to the effective filing date of the ’871
`patent (January 12, 1998). For example, the Monroe Declaration does not
`adequately explain the activity from “mid-1997” (a prototype of the first
`commercial embodiment of the invention) (Ex. 1002, 190, ¶ 14) to “late
`1997” (first commercial handheld R.I.T.) (Ex. 1002, 191, ¶ 17) to January
`1998 (filing of the parent application).
`Although the Monroe Declaration alleges an actual reduction to
`practice, the alleged date of actual reduction to practice is unclear. It is also
`unclear what particular completed structure, successfully tested for its
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`intended purpose, is relied on as that actual reduction to practice. In that
`regard, paragraph 19 of the Monroe Declaration (Ex. 1002) states as follows:
`The above facts establish reduction to practice prior to the
`earliest effective dates of the 131 Prior Art, or as a minimum,
`establish conception of the invention prior to the earliest
`effective date of the 131 Prior Art coupled with due diligence
`from prior to this date to a subsequent reduction of practice
`culminating in the prototype of the commercial embodiment
`Exhibit 15 in mid-1997.
`It is axiomatic that evidence has to be explained. Paragraph 17 of the
`Monroe Declaration (Ex. 1002) states:
`As shown by the Exhibits attached hereto, I conceived the
`invention at least as early as March 18, 1993 and worked
`diligently
`in developing a commercially viable product
`culminating in the first commercial handheld R.I.T. in late
`1997.
` This handheld R.I.T. used cellular
`telephone
`transmission technology, as evidenced by Exhibits 15–17 as
`first conceived and document[ed] as early as March 18, 1993,
`see Exhibits (6–13).
`It is unclear whether the Monroe Declaration, with regard to its assertion of
`actual reduction to practice, relies on the structure of the “prototype of the
`commercial embodiment Exhibit 15 in mid-1997,” the structure of a
`“commercial handheld R.I.T. [product] in late 1997” (id. at ¶¶ 17, 19) or
`some other structure allegedly completed at another time. In any event, the
`Monroe Declaration does not explain how any such completed structure was
`successfully tested for its intended purpose or meets all requirements of any
`challenged claim.
`Moreover, an actual reduction to practice date after September 12,
`1997 would not be of help to the Patent Owner, because the effective filing
`date of Nagamine is September 12, 1997, and the Monroe Declaration is
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`deficient with regard to demonstration of continuous exercise of reasonable
`diligence from a time just prior to September 12, 1997, to constructive
`reduction to practice on January 12, 1998.
`
`C. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their “broadest reasonable construction in light of
`the specification of the patent” in which they appear. 37 C.F.R. § 42.100(b);
`see also In re Cuozzo Speed Techs., LLC., 778 F.3d 1271, 1281–82 (Fed.
`Cir. 2015) (“Congress implicitly adopted the broadest reasonable
`interpretation standard in enacting the AIA,” and “the standard was properly
`adopted by PTO regulation.”). Applying that standard, we interpret the
`claim terms according to their ordinary and customary meaning in the
`context of the patent’s written description. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007).
`1. “selectively displaying”
`Claims 1, 6, 9, and 12 recite “selectively displaying.” Petitioner
`proposes that this term be construed to mean “choosing from one or more for
`display.” Pet. 5 (citing Ex. 1001, 5:6–10, 6:37–45). At this stage, Patent
`Owner does not dispute Petitioner’s proposed construction. On this record,
`and for purposes of this decision, we adopt Petitioner’s proposed
`construction.
`2. “selectively transmitting”
`Claims 1, 6, 9, and 12 recite “selectively transmitting.” Petitioner
`proposes that this term be construed to mean “choosing from one or more for
`transmission.” Pet. 5–6 (citing Ex. 1001, 5:6–10, 6:37–45). At this stage,
`Patent Owner does not dispute Petitioner’s proposed construction. On this
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`record, and for purposes of this decision, we adopt Petitioner’s proposed
`construction.
`
`D. Challenged Claims – Obvious over Nagai and Lemelson
`Petitioner argues that the claims 1–8 and 12–15 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Nagai and Lemelson. Pet. 10–22.
`Nagai (Exhibit 1004)
`Nagai describes a still camera that wirelessly communicates images.
`Ex. 1004, Abstract. The camera includes a display and a microcomputer and
`memory controller. Id. The user interface to the microcomputer is a touch
`panel that may be activated to display an image on the display. Id.
`Lemelson (Exhibit 1005)
`Lemelson describes an apparatus and method for transmitting video
`data over telephone lines. Ex. 1005, Abstract. In one embodiment, the
`apparatus is a portable self-contained unit that has a television camera, a
`television display screen and image retaining means, a speaker, and a
`microphone. Id.
`Analysis
`In light of the arguments and evidence, Petitioner has established a
`reasonable likelihood that claims 1–8 and 12–15 are unpatentable as obvious
`over Nagai and Lemelson.
`For claim 1, for example, we are persuaded by Petitioner’s citations
`that Nagai teaches each of the recited limitations. Pet. 12–15. With respect
`to “alphanumeric input keys,” we are persuaded that this limitation is taught
`by either of Nagai’s touch panel 12A or Lemelson’s digitally encoded
`keyboard 76. Pet. 14. With respect to “a power supply for powering the
`system,” we are persuaded by Dr. Stevenson’s testimony that “[o]ne of skill
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`in the art would readily understand that the camera telephone of Nagai
`would include an internal power supply such as a battery.” Ex. 1003 ¶¶ 36,
`49; Pet. 11, 15. We also are persuaded that this limitation is taught by
`Lemelson’s power supply. Pet. 15 (citing Ex. 1005, 6:36–40). At this stage,
`Patent Owner does not dispute these contentions.
`Petitioner argues that a person of ordinary skill in the art would have
`been motivated to combine Nagai and Lemelson in the particular manner
`proposed by Petitioner because “integrating a power supply in the portable
`telephone of Nagai as taught by Lemelson would allow for greater
`portability (one of the goals of Nagai),” and “incorporating a physical
`keyboard (as taught by Lemelson) rather than a touch panel would result in
`greater tactile feedback to the user.” Pet. 11. At this stage, Patent Owner
`does not dispute these contentions. On the record before us, we are
`persuaded that Petitioner has provided sufficiently an articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
`(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`Conclusion
`On this record, we are persuaded that Petitioner has established a
`reasonable likelihood that it would prevail in showing that claims 1–8 and
`12–15 are unpatentable as obvious over Nagai and Lemelson.
`
`E. Claims 1–3, 5–7, 12, 14, and 15 – Obvious over Lemelson and Ohnsorge
`Petitioner argues that the claims 1–3, 5–7, 12, 14, and 15 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Lemelson and
`Ohnsorge. Pet. 22–32.
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`Ohnsorge (Exhibit 1005)
`Ohnsorge describes a radiotelephone device with a handset-shaped
`housing for hand-held operation. Ex. 1006, Abstract. The device includes a
`video camera mounted in the housing and a liquid crystal display mounted in
`the housing for video pickup and display. Id. The device includes electronic
`circuitry tor transmitting and receiving signals with an external telephone
`network. Id. at Abstract, 2:60–64.
`Analysis
`In light of the arguments and evidence, Petitioner has established a
`reasonable likelihood that claims 1–3, 5–7, 12, 14, and 15 are unpatentable
`as obvious over Lemelson and Ohnsorge.
`For claim 1, for example, we are persuaded by Petitioner’s citations
`that Lemelson teaches all but two of the recited limitations. Pet. 24–28.
`With respect to “a telephonic system in the housing for sending and
`receiving digitized audio signals and for sending the image data signal,” we
`are persuaded that this limitation is taught by Ohnsorge’s radiotelephone
`device. Pet. 26. With respect to “a wireless communications device adapted
`for transmitting any of the digitized signals to the compatible remote
`receiving station,” we are persuaded that this limitation is taught by the
`electronic circuitry disposed within Ohnsorge’s radiotelephone device. Pet.
`27. At this stage, Patent Owner does not dispute these contentions.
`Petitioner argues that a person of ordinary skill in the art would have
`been motivated to combine Lemelson and Ohnsorge in the particular manner
`proposed by Petitioner because (1) “[o]ne of ordinary skill in the art would
`understand that the telephonic system of Ohnsorge can be combined with the
`video telephone of Lemelson to further advance the portability of the
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`Lemelson telephone” (Pet. 26); and (2) “in order to take advantage of the
`available data networks already in place and further advance the portability
`of the Lemelson telephone” (Pet. 27–28). At this stage, Patent Owner does
`not dispute these contentions. On the record before us, we are persuaded
`that Petitioner has provided sufficiently an articulated reasoning with some
`rational underpinning to support the legal conclusion of obviousness. See
`KSR, 550 US at 418. (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`Conclusion
`On this record, we are persuaded that Petitioner has established a
`reasonable likelihood that it would prevail in showing that claims 1–3, 5–7,
`12, 14, and 15 are unpatentable as obvious over Lemelson and Ohnsorge.
`
`F. Claims 4, 8, and 13 – Obvious over Lemelson, Ohnsorge, and Sasaki
`Petitioner argues that the claims 4, 8, and 13 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Lemelson, Ohnsorge, and Sasaki. Pet.
`32–33.
`Sasaki (Exhibit 1007)
`Sasaki describes an electronic still camera with an insertion slot 14 for
`receiving a removable memory card 15 that stores captured image data
`signals. Ex. 1007, 5:14–19, 5:63–68, 6:49–68.
`Analysis
`In light of the arguments and evidence, Petitioner has established a
`reasonable likelihood that claims 4, 8, and 13 are unpatentable as obvious
`over Lemelson, Ohnsorge, and Sasaki.
`For claim 4, for example, we are persuaded by Petitioner’s citations
`that Sasaki teaches the recited “removable memory module . . . able to be
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`removably housed in the housing for storing captured image data signals.”
`Pet. 33. At this stage, Patent Owner does not dispute these contentions.
`Petitioner argues that a person of ordinary skill in the art would have
`been motivated to combine Lemelson and Ohnsorge in the particular manner
`proposed by Petitioner because “[a]t the time of filing the ’871 patent,
`removable storage media had already gained wide-spread use,” and “[o]ne of
`ordinary skill in the art would have realized the benefit of using a memory
`card, such as providing the ability to utilize multiple cards to increase
`storage capacity and ease of data transfer.” Pet. 32 (citing Ex. 1003 ¶¶ 57,
`69. At this stage, Patent Owner does not dispute these contentions. On the
`record before us, we are persuaded that Petitioner has provided sufficiently
`an articulated reasoning with some rational underpinning to support the legal
`conclusion of obviousness. See KSR, 550 at 418 (citing In re Kahn, 441
`F.3d 977, 988 (Fed. Cir. 2006)).
`Conclusion
`On this record, we are persuaded that Petitioner has established a
`reasonable likelihood that it would prevail in showing that claims 1–3, 5–7,
`12, 14, and 15 are unpatentable as obvious over Lemelson and Ohnsorge.
`
`G. Other Asserted Grounds
`We have discretion to institute inter partes review as to some asserted
`grounds and not others. 37 C.F.R. § 42.108(a); see also 35 U.S.C. § 314(a)
`(authorizing institution of inter partes review under particular
`circumstances, but not requiring institution under any circumstances). This
`discretion is consistent with the requirement that the regulations for inter
`partes review proceedings take into account “the efficient administration of
`the Office” and “the ability of the Office to timely complete [instituted]
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`proceedings,” 35 U.S.C. § 316(b), as well as with the requirement that the
`rules for inter partes review proceedings be “construed to secure the just,
`speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.
`§ 42.1(b). Accordingly, for reasons of administrative necessity, and to
`ensure timely completion of the instituted proceeding, we exercise our
`discretion and do not institute a review of (1) claims 1–7 and 12–15 as
`obvious over Nagamine; and (2) claims 4, 8, and 13 as obvious over
`Nagamine and Sasaki.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that Petitioner has
`established that there is a reasonable likelihood that Petitioner would prevail
`in establishing the unpatentability of claims 1–8 and 12–15 of the ’871
`patent.
`The Board has not made a final determination on the patentability of
`any challenged claims.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`hereby instituted on the following grounds:
`1. Claims 1–8 and 12–15 under 35 U.S.C. § 103 as obvious over
`Nagai and Lemelson;
`2. Claims 1–3, 5–7, 12, 14, and 15 under 35 U.S.C. § 103 as obvious
`over Lemelson and Ohnsorge; and
`3. Claims 4, 8, and 13 under 35 U.S.C. § 103 as obvious over
`Lemelson, Ohnsorge, and Sasaki; and
`
`17
`
`
`
`IPR2015-00404
`Patent 7,365,871 B2
`
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial on the
`grounds of unpatentability authorized above; the trial commences on the
`entry date of this Decision.
`
`
`18
`
`
`
`19
`
`IPR2015-00404
`Patent 7,365,871 B2
`
`For PETITIONER:
`
`Timothy W. Riffe
`Brian J. Livedalen
`FISH & RICHARDSON PLLC
`IPR18768-0064IP1@fr.com
`
`
`
`For PATENT OWNER:
`
`Robert C. Curfiss
`bob@curfiss.com
`
`
`and
`
`David O. Simmons
`IVC Patent Agency
`dsimmons1@sbcglobal.net
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