Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 15
`Entered: July 10, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00611
`Patent 7,643,168 B2
`____________
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 15
`Entered: July 10, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00611
`Patent 7,643,168 B2
`____________
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`IPR2015-00611
`Patent 7,643,168 B2
`
`
`I. INTRODUCTION
`
`Samsung Electronics, Co., Ltd. and Samsung Electronics America,
`
`Inc. (“Samsung” or “Petitioner”) filed a Petition requesting inter partes
`
`review of U.S. Patent No. 7,643,168 (Ex. 1001, “the ’168 patent”)(“Pet.,”
`
`Paper 2). On May 7, 2015, e-Watch, Inc. (“Patent Owner”), filed a
`
`Preliminary Response (“Prelim. Resp.,” Paper 7). We have jurisdiction
`
`under 35 U.S.C. § 314.
`
`Concurrently with its Petition, Samsung filed a Motion for Joinder
`
`(“Motion” or “Mot.,” Paper 3). The Motion seeks to join this proceeding
`
`with Apple Inc. v. e-Watch, Inc., IPR2015-00414 (hereinafter “Apple IPR”
`
`or “Apple” when the petitioner is referenced). Mot. 1. Patent Owner did not
`
`file an opposition to the Motion.
`
`For the reasons explained below, we institute an inter partes review of
`
`claims 1–31 of the ’168 patent and grant Petitioner’s Motion for Joinder.
`
`II. INSTITUTION OF INTER PARTES REVIEW
`
`A. Analysis
`
`1. 35 U.S.C. § 325(d)
`
`Patent Owner asserts, as it did in the Apple IPR, that there are a total
`
`of eight IPR petitions filed asserting unpatentability of the claims of the ’168
`
`patent. Prelim. Resp. 1–3. Patent Owner also alleges the prior art relied on
`
`in this Petition was cited in parallel district court litigation. Id. at 3, 6–8.
`
`Patent Owner asks us to exercise our discretion under 35 U.S.C. 325(d) and
`
`deny institution of this petition. Id. at 3.
`
`Each of the proceedings includes a different petitioner and includes
`
`additional grounds to those asserted here. We need to be cognizant of the
`
`2
`
`
`
`IPR2015-00611
`Patent 7,643,168 B2
`
`interests of other petitioners as well as those of Patent Owner. Accordingly,
`
`we decline to exercise our discretion under § 325(d) to reject this Petition.
`
`2. Effective Filing Date of ’168 Patent–Claim of Priority
`
`The Petition asserts the same ground as the one on which we instituted
`
`review in the Apple IPR. Pet. 3; Mot. 5–7. On July 1, 2015, in our Decision
`
`on Institution (Paper 13, “Dec.”) in the Apple IPR we instituted inter partes
`
`review of claims 1–31 of the ’168 patent under 35 U.S.C. §102(b) as
`
`anticipated by Monroe.1 Institution of trial in the Apple IPR was based on
`
`our determination that the ’168 patent was not entitled to the January 12,
`
`1998, filing date of an earlier application. Dec. 13.
`
`Specifically, the ’168 patent issued from patent application No.
`
`11/617,509, filed December 28, 2006 (the ’509 application). Ex. 1001, at
`
`[21], [22]. The ’509 application is a continuation of application 10/336,470,
`
`filed on January 3, 2003 (“the ’470 application”).2 Id. at [63]. The ’470
`
`application is a divisional application of application 09/006,073 (“the ’073
`
`application”), filed on January 12, 1998. Ex. 1009, at [62].
`
`In the Apple IPR, on the record presented, we determined the claims
`
`of the ’168 patent are not entitled to the effective filing date of the ’073
`
`application (January 12, 1998). Dec. 13. The ’168 patent (’509 application)
`
`states the ’509 application is a division of the ’073 application, which is a
`
`misstatement of the relationship between the ’509 application and the ’073
`
`application. Id. This misstatement violates 37 C.F.R. § 1.78(a)(2)(i) (pre-
`
`AIA), which requires a reference indicating the relationship between the
`
`
`1 Int. Pub. Pat. App. WO 99/035818, to Monroe, published July 15, 1999
`(Ex. 1006, “Monroe”).
`2 The ’470 application issued as the ’871 patent. Ex. 1001, at[63]; Ex. 1009.
`
`3
`
`
`
`IPR2015-00611
`Patent 7,643,168 B2
`
`prior-filed application and the application seeking to claim the benefit of the
`
`prior-filed application. Id. Without the benefit of the filing date of the
`
`earlier-filed ’073 application, Monroe is prior art to the claims of the ’168
`
`patent. Id. Based on Monroe, we instituted inter partes review of claims 1–
`
`31 of the ’168 patent under 35 U.S.C. §102(b) as anticipated by Monroe. Id.
`
`at 14.
`
`Petitioner here makes the same argument using the same record as the
`
`Apple IPR. The issue of priority has been raised in the first instance by
`
`Petitioner. Patent Owner’s Preliminary Response does not respond to the
`
`issue and, necessarily, does not show that the ’168 patent is entitled to the
`
`earlier filing date of the ’073 application. See, e.g., Focal Therapeutics, Inc.
`
`v. SenoRx, Inc., Case IPR2014-00116, 2014 WL 1651257, at *6 (PTAB Apr.
`
`22, 2014) (Paper 8); Polaris Wireless, Inc. v. TruePosition, Inc., Case
`
`IPR2013-00323, 2013 WL 8563953, at *27 (PTAB Nov. 15, 2013) (Paper
`
`9).
`
`The challenge in the instant Petition is identical to the challenge in the
`
`petition in the Apple IPR. We are persuaded, on this record, Petitioner has
`
`shown sufficiently a reasonable likelihood that claims 1–31 of the ’168
`
`patent are anticipated under 35 U.S.C. §102(b) by Monroe.
`
`3. Effective Filing Date of ’168 Patent–Intentional Abandonment
`
`Petitioner makes an additional argument, not present in the Apple
`
`IPR, for why Monroe is prior art. The additional ground alleges that the’073
`
`application was intentionally abandoned. Pet. 10. The Patent Office revived
`
`the ’073 application based on a statement by Applicant that abandonment
`
`was unintentional. Pet. 12–13. Petitioner contends the abandonment was
`
`4
`
`
`
`IPR2015-00611
`Patent 7,643,168 B2
`
`intentional and the ’073 application should not have been revived. Id. at 10.
`
`Thus, according to Petitioner, the ’168 patent is not entitled to the filing date
`
`of the ’073 application because neither the ’470 application nor the ’509
`
`application were co-pending with the ’073 application. Id. at 10. Petitioner
`
`indicates, however, that it is willing to “drop [this] argument” if this case is
`
`joined to the Apple IPR. Mot. 7.
`
`Patent Owner argues that Petitioner’s position on intentional
`
`abandonment extends beyond the jurisdiction for these proceedings set forth
`
`in 35 U.S.C. §311 permits. Prelim. Resp. 8–11.
`
`As discussed above, we are proceeding on the same argument
`
`presented in the Apple IPR that the ’168 patent is not entitled to the filing
`
`date of the ’073 application and, because Petitioner has agreed not to pursue
`
`this argument, we need not address this separate argument.
`
`III. GRANT OF MOTION FOR JOINDER
`
`In a conference call on June 26, 2015, both Patent Owner and Apple
`
`stated they do not oppose the Motion so long as the conditions Petitioner
`
`proposed in the Motion are incorporated into the joinder. Paper 8; Apple
`
`IPR, Paper 13. Agreement to joinder was also conditional upon institution
`
`of the Apple IPR. Id. On July 1, 2015, we instituted inter partes review of
`
`claims 1–31 of the ’168 patent in the Apple IPR.
`
`The Petition in this proceeding has been accorded a filing date of
`
`January 23, 2015, and, thus, satisfies the requirement that joinder be
`
`requested no later than one month after the institution date of the Apple IPR.
`
`See 37 C.F.R. § 42.122(b); Paper 6 (Notice of Filing Date Accorded to
`
`Petition).
`
`5
`
`
`
`IPR2015-00611
`Patent 7,643,168 B2
`
`
`The Petition in this proceeding sets forth the same ground and
`
`combination of prior art, the same expert declaration, and the same
`
`arguments considered by the board in instituting trial in the Apple IPR. Mot.
`
`4–5. Petitioner represents that the Petition differs from the petition in the
`
`Apple IPR in two ways. First, the Petition in this case applies claim
`
`constructions adopted by the Board in the Decision on Institution in the
`
`IPR2014-00989. Mot. 6. Second, this Petition asserts a second argument
`
`that the ’168 patent is not entitled to the earlier filing date of the ’073
`
`application. The first difference introduces no new issues. The second
`
`argument has been withdrawn. See II.A.3. We have reviewed the Petition,
`
`and confirmed Petitioner’s representations and that the differences between
`
`the two Petitions do not introduce new issues.
`
`Petitioner represents in its Motion for Joinder that it “is willing to be
`
`limited to separate filings, if any, of a reasonable number of pages (e.g.,
`
`seven pages) directed only to points of disagreement with Apple with the
`
`understanding that it will not be permitted any separate arguments in
`
`furtherance of those advanced in Apple’s consolidated filings.” Mot. 8.
`
`Petitioner represents that “no additional depositions will be needed and
`
`depositions will be completed within ordinary time limits.” Id. at 8–9.
`
`Petitioner represents that it will “coordinate with Apple to consolidate
`
`filings, manage questioning at depositions, manage presentations at the
`
`hearing, ensure that briefing and discovery occur within the time normally
`
`allotted, and avoid redundancies.” Id. at 9.
`
`Under the circumstances, we conclude Samsung has demonstrated
`
`that joinder will not unduly complicate or delay the Apple IPR, and
`
`6
`
`
`
`IPR2015-00611
`Patent 7,643,168 B2
`
`therefore, we grant Samsung’s Motion for Joinder to join this proceeding
`
`with the Apple IPR.
`
`Accordingly, it is
`
`IV. ORDER
`
`ORDERED that IPR2015-00611 is instituted and joined with
`
`IPR2015-00414;
`
`FURTHER ORDERED that the ground on which IPR2014-00414 was
`
`instituted is unchanged, and no other grounds are instituted in the joined
`
`proceeding;
`
`FURTHER ORDERED that the Scheduling Order in place for
`
`IPR2015-00414 (Paper 14) shall govern the joined proceedings;
`
`FURTHER ORDERED that, throughout the joined proceeding, Apple
`
`and Samsung will file any paper, except for a motion that does not involve
`
`the other party, as a single, consolidated filing on behalf of Petitioner, and
`
`Apple will identify each such filing as a consolidated filing;
`
`FURTHER ORDERED that for any consolidated filing made by
`
`Apple, Samsung may file an additional paper, not to exceed three pages,
`
`which may address only points of disagreement with Apple;
`
`FURTHER ORDERED that Apple will conduct the deposition of any
`
`Patent Owner witness taken on behalf of Apple and Samsung collectively
`
`and Samsung may not participate in the questioning absent prior approval
`
`from the Board;
`
`FURTHER ORDERED that any requests by any party for additional
`
`deposition time must be brought before the Board;
`
`7
`
`
`
`IPR2015-00611
`Patent 7,643,168 B2
`
`
`FURTHER ORDERED that IPR2015-00611 is terminated under 37
`
`C.F.R. § 42.72, and all further filings in the joined proceeding are to be
`
`made in IPR2014-00414;
`
`FURTHER ORDERED that a copy of this Decision will be entered
`
`into the record of IPR2014-00414; and
`
`FURTHER ORDERED that the case caption in IPR2015-00414 shall
`
`be changed to reflect joinder with this proceeding in accordance with the
`
`attached example.
`
`
`
`8
`
`
`
`IPR2015-00611
`Patent 7,643,168 B2
`
`
`
`
`FOR PETITIONER:
`
`Steven Park
`stevenpark@paulhastings.com
`
`Naveen Modi
`naveenmodi@paulhastings.com
`
`Elizabeth Brann
`elizabethbrann@paulhastings.com
`
`FOR PATENT OWNER:
`
`Robert C. Curfiss
`bob@curfiss.com
`
`David O. Simmons
`dsimmons1@sbcglobal.net
`
`
`
`FOR PETITIONER IN IPR2015-00414:
`
`Brian Buroker
`BBuroker@gibsondunn.com
`Blair Silver
`bsilver@gibsondunn.com
`
`
`9
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.,
`SAMSUNG ELECTRONICS LTD, and
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner,
`
`v.
`
`E-WATCH, INC.
`Patent Owner.
`____________
`
`Case IPR2015-004143
`Patent 7,643,168 B2
`____________
`
`
`
`
`
`
`
`
`
`
`3 Case IPR2015-00611 has been joined with this proceeding.
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
