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: IPR2015-00610
`
`Patent No. 7,365,871
`
`Title: Apparatus For Capturing, Converting And Transmitting A Visual
`Image Signal Via A Digital Transmission System
`
`_______________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. §42.107
`
`
`
`E‐Watch, Inc.
`Petitioner – Samsung et al.
`Patent Owner – E‐Watch, Inc.
`IPR2015‐00610
`
`
`________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________
`
`
`SAMSUNG ELECTRONICS CO., LTD.
`AND SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
`v.
`
`E-WATCH, INC.
`Patent Owner
`_______________________________________
`
`Case: IPR2015-00610
`
`Patent No. 7,365,871
`
`Title: Apparatus For Capturing, Converting And Transmitting A Visual
`Image Signal Via A Digital Transmission System
`
`_______________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. §42.107
`
`
`
`E‐Watch, Inc.
`Petitioner – Samsung et al.
`Patent Owner – E‐Watch, Inc.
`IPR2015‐00610
`
`
`
`
`TABLE OF CONTENTS
`
`
` I. SUMMARY OF PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITIONER’S INTER PARTES REVIEW PETITION.............................. 1
`
`II. REASONS WHY INTER PARTES REVIEW SHOULD NOT BE
`INSTITUTED.................................................................................................. 4
`
`A.
`
`B.
`
`PETITIONER USES CUMULATIVE AND REDUNDANT
`PRIOR ART IN ITS PETITION.......................................................... 4
`
`THIS PETITION IS AN IMPROPER SERIAL INTER PARTES
`REVIEW PETITION............................................................................ 5
`
`III. CONCLUSION................................................................................................. 8
`
`CERTIFICATE OF SERVICE..................................................................... 10
`
`
`
`i
`
`
`
`
`
`EXHIBIT LIST
`
`[EXH. 2001] TABLE SHOWING OTHER INTER PARTES REVIEW
`
` PETITIONS WITH PRIOR ART AND/OR ISSUES THAT
`
` OVERLAP WITH IPR2015-00610 PETITION (“this
`
` petition”)
`
`[EXH. 2002] DEFENDANTS’ AMENDED INVALIDITY
`
` CONTENTIONS IN PARALLEL DISTRICT COURT
`
` LITIGATION (REDACTED VERSION)
`
`ii
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`SUMMARY OF PATENT OWNER’S PRELIMINARY
`RESPONSE TO PETITIONER’S INTER PARTES REVIEW
`PETITION
`e-Watch, Inc. (“e-Watch”) is the owner of United States Patent No.
`
`
`
`7,365,871 (“’871 Patent”). Eleven (11) inter partes review (“IPR”) petitions have
`
`been filed related to the ‘871 Patent. The table below provides an update on the
`
`petitioners/real parties-in-interest, status and filing date of each of these
`
`Case Number
`
`Status
`
`Filing Date
`
`IPR2014-00439
`
`Terminated
`
`2/18/2014
`
`IPR2014-00987
`
`Instituted
`
`6/19/2014
`
`IPR2015-00402
`
`No Decision on
`Institution
`
`12/10/2014
`
`proceedings.
`
`Petitioner/Real
`Parties-in-Interest
`Iron Dome LLC,
`RozMed LLC, Steven
`S. Yu (collectively,
`“Iron Dome”)
`HTC Corporation and
`HTC America, Inc.
`(collectively, “HTC”)
`LG Electronics, Inc.,
`LG Electronics
`U.S.A., Inc., LG
`Electronics
`Mobilecomm U.S.A.,
`Inc. (collectively,
`“LG”); Microsoft
`Mobile OY,
`Microsoft
`Corporation, Nokia
`Inc. (collectively,
`“MMO”); Sony
`Corporation, Sony
`Mobile
`Communications
`(USA) Inc., Sony
`
`
`
`1
`
`
`
`Mobile
`Communications AB,
`Sony Mobile
`Communications Inc.
`(collectively,
`“Sony”); Sharp
`Corporation and
`Sharp Electronics
`Corporation
`(collectively,
`“Sharp”)
`Kyocera
`Communications, Inc.
`(“Kyocera”)
`LG, MMO, Sony and
`Sharp
`Apple Inc. (“Apple”)
`
`Apple
`
`Apple
`
`Samsung Electronics
`Co., Ltd and Samsung
`Electronics America,
`Inc. (collectively,
`“Samsung”)
`Samsung
`
`Samsung
`
`
`
`
`IPR2015-00406
`
`IPR2015-00404
`
`IPR2015-00411
`
`IPR2015-00412
`
`IPR2015-00413
`
`IPR2015-00541
`
`No Decision on
`Institution
`
`No Decision on
`Institution
`No Decision on
`Institution
`No Decision on
`Institution
`No Decision on
`Institution
`Joined With 2014-
`00987
`
`12/10/2014
`
`12/10/2014
`
`12/11/2014
`
`12/11/2014
`
`12/11/2014
`
`1/7/2015
`
`IPR2015-00610
`
`IPR2015-00612
`
`No Decision on
`Institution
`No Decision on
`Institution
`
`1/23/2015
`
`1/23/2015
`
`These eleven (11) IPR petitions have substantial overlap with respect to the
`
`prior art cited and associated grounds of unpatentability. Even to the extent
`
`different prior art is cited in some of these petitions, the prior art relied on in some
`
`of the petitions is similar to the prior art contained in some of the other petitions.
`
`
`
`2
`
`
`
`As a result, many of these petitions, including this petition (i.e., IPR2015-00610),
`
`are redundant and present cumulative prior art and substantially the same
`
`arguments as other earlier-filed IPR petitions, concurrently-filed IPR petitions,
`
`and/or later-filed IPR petitions. The Patent Trial and Appeals Board (“PTAB”)
`
`should exercise its discretion under 35 U.S.C. 325(d) to deny institution of this
`
`petition for this reason alone.
`
`
`
`Furthermore, on January 7, 2015, Petitioner filed an IPR petition, IPR2015-
`
`00541, related to the ‘871 Patent and sought joinder with earlier-filed IPR2014-
`
`00987 of another petitioner. The PTAB granted Petitioner’s request to join those
`
`proceedings together. Because most of the prior art cited in the present petition,
`
`IPR2015-00610, was expressly cited
`
`in Petitioner’s amended
`
`invalidity
`
`contentions, served in the parallel district court litigation on December 16, 2014,
`
`Petitioner cannot establish that the newly relied on prior art of the present petition,
`
`IPR2015-00610, was not known and available to the petitioner when it filed its
`
`original petition in IPR2015-00541 on January 7, 2015. The Board has condemned
`
`this type of serial IPR petitioning as unfair to the patent owner and contrary to the
`
`interests of economy and efficiency promoted in IPR proceedings and has routinely
`
`denied institution of serial IPRs. Conopco, Inc. v. Procter & Gamble Co.,
`
`IPR2014-00628 (paper 21 at 11). The PTAB should similarly deny institution of
`
`this petition.
`
`
`
`3
`
`
`
`
`
`
`
`
`II. REASONS WHY INTER PARTES REVIEW SHOULD NOT BE
`
`INSTITUTED
`A. PETITIONER USES CUMULATIVE AND REDUNDANT
`PRIOR ART IN ITS PETITION
`The Board has discretion to decline to institute inter partes review.
`
`Conopco, Inc. v. Procter & Gamble Co., IPR2014-00628 (paper 21 at 5).
`
`Institution of inter partes review is discretionary, not mandatory. 35 U.S.C.
`
`§314(a). “One factor the Board may take into account when exercising that
`
`discretion is whether ‘the same or substantially the same prior art or arguments
`
`previously were presented to the Office.’” Conopco, Inc. v. Procter & Gamble
`
`Co., IPR2014-00628 (paper 21 at 5). U.S.C. §325(d) provides:
`
`In determining whether to institute or order a proceeding
`under this chapter [post-grant review (PGR)], chapter 30
`[ex parte reexamination] or chapter 31 [inter partes
`review (IPR)], 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.
`
`
`
`As shown in the table attached as Exh. 2001, this petition overlaps with three
`
`(3) other petitions related to the ‘871 Patent. [Exh. 2001]. In particular, this
`
`petition includes prior art and issues that have been presented to the PTAB by
`
`another petitioner in earlier-filed IPR2014-00987 and earlier-filed IPR2015-00406
`
`and by Petitioner in earlier-filed IPR2015-00541. IPR2014-00987, IPR2015-
`
`00541 and this petition all rely upon the cited prior art references U.K. Patent
`
`
`
`4
`
`
`
`Application Pub. No. GB 2289555 to Wilska et al. (“Wilska”) and JP Patent
`
`Application Pub. No. H06-176114 to Yamagishi (“Yamagishi-114”) in at least one
`
`proposed ground of unpatentability. Moreover, IPR2015-00406 and this petition
`
`both rely upon the cited prior art reference European Patent Application Pub. No.
`
`0734156 to Kurashige et al. (“Kurashige”) in at least one proposed ground of
`
`unpatentability.
`
`B. THIS PETITION IS AN IMPROPER SERIAL INTER
`PARTES REVIEW PETITION
`Petitioner has already had the proverbial “first bite at the apple.” In
`
`
`
`challenging the ‘871 patent, Petitioner filed IPR petition IPR2015-00541 (“the 541
`
`Petition” or “its original petition”) against the ‘871 Patent and sought joinder with
`
`earlier-filed IPR2014-00987 of another petitioner. The PTAB granted Petitioner’s
`
`request to join those proceedings together, and those proceedings are still pending.
`
`Nevertheless, Petitioner filed this IPR2015-00610 on January 23, 2015.
`
`Petitioner made the choice of presenting a single ground of unpatentability
`
`in the ‘541 Petition, which is obviousness of claims 1-8 and 12-15 of the ‘871
`
`Patent by a combination of two references (i.e., Wilska in view of Yamagishi-114).
`
`Thereafter, Petitioner filed this petition, IPR2015-00610 and again made the choice
`
`to present a single ground of unpatentability, which is that claims 9-11 of the ‘871
`
`
`
`5
`
`
`
`Patent are obviousness over three cited prior art references (i.e., Wilska in view of
`
`Yamagishi-114 and further in view of Kurashige).
`
`
`
`Prior art (Wilska and Yamagishi-114) cited in this petition (IPR2015-00610)
`
`was expressly cited in Petitioner’s invalidity contentions served in a parallel
`
`district court litigation on December 16, 2014 [Exh. 2002 at 9, 8 respectively].
`
`Petitioner clearly knew about this prior art even before it filed its original petition
`
`in IPR2015-00541 on January 7, 2015 but chose not to challenge claims 9-11 of
`
`the ‘871 Patent using this prior art in its original petition (IPR2015-00541).1 In
`
`instances such as this, the Board has condemned serial IPR petitioning as unfair to
`
`the patent owner and contrary to the interests of economy and efficiency promoted
`
`in IPR proceedings. Conopco, Inc. v. Procter & Gamble Co., IPR2014-00628
`
`(paper 21 at 11). In Conopco, the PTAB held:
`
`Additional factors support our decision declining to
`institute review. Unilever does not argue that the other
`references applied in the instant Petition-Cosmedia, Bar-
`Shalom, or Uchiyama—were unknown or unavailable at
`the time of filing the 510 Petition. That fact supports a
`reasonable inference that those references were known
`and available to Unilever when it requested review the
`first time. Prelim. Resp. 1, 7. On this record, the
`interests of fairness, economy, and efficiency support
`declining review—a result that discourages the filing of a
`
`1 Petitioner also filed a third IPR of the ‘871 Patent, IPR2015-00612, after its filing of its original
`petition, citing Patent Publication No. WO/1999/35818 (Monroe ‘818) as alleged prior art. This
`alleged prior art was also known to Petitioner at the time it filed its original petition. Exh. 2002
`at 10.
`
`
`
`6
`
`
`
`first petition that holds back prior art for use in
`successive attacks, should the first petition be denied.
`See id. at 1 (the instant Petition “simply swap[s] in new
`references, all of which were available to Unilever” at the
`time of filing of the 510 Petition; Unilever should have
`“presented its ‘best case’ in the first petition”).
`
`Id. The Board determined that its resources were better spent addressing
`
`
`
`matters other than Unilever’s second attempt to raise a plurality of duplicative
`
`grounds against the same patent claims. Id., citing Heckler v. Chaney, 470 U.S.
`
`821, 831 (1985) (when deciding whether to take action in a particular matter, an
`
`agency must determine whether its resources are best spent on one matter or
`
`another).
`
`
`
`The PTAB has reached the same conclusion to deny institution of serial IPR
`
`proceedings in other instances as well. Butamax Advanced Biofuels LLC v. Gevo,
`
`Inc., IPR2014-00581 (Paper 8 at 13) (“Allowing similar, serial challenges to the
`
`same patent, by the same petitioner, risks harassment of patent owners and
`
`frustration of Congress’s intent in enacting the Leahy-Smith America Invents
`
`Act.”) See H.R. Rep. No. 112-98, pt. 1 at 48 (2011) (“While this amendment is
`
`intended to remove current disincentives to current administrative processes, the
`
`changes made by it are not to be used as tools for harassment or a means to prevent
`
`market entry through repeated litigation and administrative attacks on the validity
`
`
`
`7
`
`
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`of a patent. Doing so would frustrate the purpose of the section as providing quick
`
`and cost effective alternatives to litigation.”)
`
`
`
`Petitioner has already filed a petition to review the ‘871 Patent via IPR
`
`proceedings. Petitioner’s attempt to harass e-Watch with repeated administrative
`
`attacks on the ‘871 Patent should be denied.
`
`
`
`
`
`III. CONCLUSION
`The PTAB should exercise its discretion under 35 U.S.C. § 325(d) to deny
`
`
`
`institution of this petition because it is cumulative and redundant of other pending
`
`IPR matters on the ‘871 Patent and represents an inappropriate and disfavored
`
`serial attack by Petitioner on the same patent it has already challenged in other
`
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`IPR proceedings.
`
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`
`
`Lead Counsel:
`Robert C. Curfiss
`Reg. No. 26,540
`Attorney
`19826 Sundance Drive
`
`
`
`8
`
`
`
`Respectfully Submitted,
`
`/David O. Simmons/
`
`
`Back-Up Counsel:
`David O. Simmons
`Reg. No. 43,124
`Patent Agent
`P. O. Box 26584
`
`
`
`Humble, Texas 77346
`Telephone: (832) 573-1442
`Facsimile: (832) 644-6152
`
`
`Austin, Texas 78755
`Telephone: (512) 345-9767
`Facsimile: (512) 345-0021
`
`
`
`9
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________
`SAMSUNG ELECTRONICS CO., LTD.
`AND SAMSUNG ELECTRONICS AMERICA, INC.
`
`Petitioner
`v.
`E-WATCH, INC.
`Patent Owner
`___________________________________
`Case: IPR2015-00610
`Patent No. 7,365,871
`
`Title: Apparatus For Capturing, Converting And Transmitting A Visual
`Image Signal Via A Digital Transmission System
`___________________________________
`
`CERTIFICATE OF SERVICE
`
`A Certificate of Service in compliance with 37 CFR §42.205 is attached to the Patent Owner
`Preliminary Response, certifying that a copy of the Patent Owner Preliminary Response in its
`entirety has been served on Petitioner as detailed below.
`
`Date of Service: May 11, 2015
`
`Manner of Service:
`delivery by express mail with a courtesy copy via email
`
`Document(s) Served:
`Patent Owner Preliminary Response for IPR2015-00610
`
`
`Exhibit EXH. 2001 and 2002
`
`Person(s) Served:
`Steven L. Park (stevenpark@paulhastings.com)
`
`
`Paul Hastings LLP,
`
`
`1170 Peachtree Street, NE, Suite 100
`
` Atlanta, GA 30309
`
`
`
`
`
`/Robert C. Curfiss/
`Reg. No. 26,540
`
`
`
`10
`
`
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