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 No. 7,643,168
`
`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
`
`
`
`
`________________________________________
`
`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 No. 7,643,168
`
`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
`
`
`
`
`
`
`
`
`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.
`
`C.
`
`PETITION USES REDUNDANT ALLEGED PRIOR ART............. 4
`
`THIS PETITION IS AN IMPROPER SERIAL INTER PARTES
`REVIEW PETITION............................................................................ 5
`
`PETITIONER CITES IMPROPER SUBJECT MATTER FOR
`INTER PARTES REVIEW.................................................................. 8
`
`III. CONCLUSION............................................................................................... 11
`
`CERTIFICATE OF SERVICE .................................................................... 13
`
`
`
`
`
`ii
`
`
`
`
`
`EXHIBIT LIST
`
`Currently Filed – Patent Owner
`
`[EXH. 2001] TABLE SHOWING OTHER INTER PARTES REVIEW
`
` PETITIONS WITH PRIOR ART AND/OR ISSUES THAT
`
` OVERLAP WITH IPR2015-00611 (“this petition”)
`
`[EXH. 2002] DEFENDANTS’ AMEDNED INVALIDITY
`
` CONTENTIONS IN PARALLEL DISTRICT COURT
`
` LITIGATION (REDACTED VERSION)
`
`iii
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`
`
`
`
`
`
`
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`
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`
`
`
`
`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.
`
`7,643,168 (“’168 Patent”). Eight (8) inter partes review (“IPR”) petitions have
`
`been filed related to the ‘168 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
`
`IPR2014-00989
`
`Instituted
`
`6/19/2014
`
`IPR2015-00401
`
`No Decision on
`Institution
`
`12/10/2014
`
`proceedings.
`
`Petitioner/Real
`Parties-in-Interest
`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
`Mobile
`Communications AB,
`Sony Mobile
`
`
`
`1
`
`
`
`Communications Inc.
`(collectively,
`“Sony”); Sharp
`Corporation and
`Sharp Electronics
`Corporation
`(collectively,
`“Sharp”)
`Kyocera
`Communications, Inc.
`(“Kyocera”)
`LG, MMO, Sony and
`Sharp
`Apple Inc. (“Apple”)
`
`Samsung Electronics
`Co., Ltd and Samsung
`Electronics America,
`Inc. (collectively,
`“Samsung”)
`Samsung
`
`Samsung
`
`
`
`
`IPR2015-00407
`
`IPR2015-00408
`
`IPR2015-00414
`
`IPR2015-00543
`
`No Decision on
`Institution
`
`No Decision on
`Institution
`No Decision on
`Institution
`Joined With 2014-
`00989
`
`12/10/2014
`
`12/10/2014
`
`12/11/2014
`
`1/7/2015
`
`IPR2015-00607
`
`IPR2015-00611
`
`No Decision on
`Institution
`No Decision on
`Institution
`
`1/23/2015
`
`1/23/2015
`
`These eight (8) 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 the
`
`later-filed petitions is similar to the prior art contained in some of the earlier-filed
`
`petitions. As a result, many of these petitions, including this petition (i.e.,
`
`IPR2015-00611), are redundant and present cumulative prior art (i.e., alleged prior
`
`art or otherwise) and substantially the same arguments as other earlier-filed IPR
`
`
`
`2
`
`
`
`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-
`
`00543, related to the ‘168 Patent and sought joinder with HTC’s earlier-filed
`
`IPR2014-00989. The PTAB granted Petitioner’s request to join those proceedings
`
`together. Because the prior art cited in this petition, IPR2015-00611, was
`
`expressly cited in Petitioner’s invalidity contentions, served in the parallel district
`
`court litigation on December 16, 2014, Petitioner cannot establish that the newly
`
`relied on prior art of this petition, IPR2015-00611, filed on January 23, 2015 was
`
`not known and available to the petitioner when it filed its original petition in
`
`IPR2015-00543 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.
`
`
`
`Petitioner further requests for the PTAB to extend IPR proceedings beyond
`
`what 35 U.S.C. §311 permits. In order to determine whether the publication cited
`
`in this petition qualifies as prior art, Petitioner asks the PTAB to determine a
`
`highly subjective issue related to the intent of the applicant before and during the
`
`
`
`3
`
`
`
`revival of abandoned United States Patent Application 09/006,073 (“’073 Patent
`
`Application”) to which the ‘168 Patent claims priority. Congress expressly limited
`
`the scope of IPRs to 35 U.S.C. §102 and §103 grounds related to patents and
`
`printed publications to avoid adjudicating this type of issue because the discovery
`
`necessary to resolve such an issue would destroy the efficiency and cost saving
`
`benefits that Congress desired in mandating the limited scope of IPR proceedings.
`
`While the patent owner unequivocally denies submitting an inaccurate
`
`declaration related to revival of the unintentionally abandoned ‘073 Patent
`
`Application, the proper venue for Petitioner to challenge this declaration is in the
`
`district court litigation. Moreover, Petitioner’s allegations related to the revival of
`
`the ‘073 Patent Application, even if taken as true, do not satisfy the 37 C.F.R.
`
`§42.108(c) requirement that inter partes review shall not be instituted unless “the
`
`petition supporting the ground…demonstrate[s] that there is a reasonable
`
`likelihood that at least one of the claims challenged in the petition is unpatentable.”
`
`
`
`
`
`
`II. REASONS WHY INTER PARTES REVIEW SHOULD NOT BE
`
`INSTITUTED
`A.
`PETITION USES REDUNDANT ALLEGED PRIOR ART
`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
`
`
`
`4
`
`
`
`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 two
`
`
`
`(2) other petitions related to the ‘168 Patent. [Exh. 2001]. In particular, this
`
`petition includes the same alleged prior art and arguments that have been presented
`
`to the Office by other petitioners in earlier-filed IPR2015-00407 and earlier-filed
`
`IPR2015-00414. IPR2015-00407 and IPR2015-00414 both present the same
`
`alleged prior art and argument that this petition presents with respect to alleged
`
`intentional abandonment of the ’073 Patent Application.
`
`B.
`
`THIS PETITION IS AN IMPROPER SERIAL INTER
`PARTES REVIEW PETITION
`Petitioner has already had the proverbial “first bite at the apple.” Petitioner
`
`
`
`filed an IPR petition, IPR2015-00543, related to the ‘168 Patent and sought joinder
`
`with HTC’s earlier-filed IPR2014-00989 on January 7, 2015. The PTAB granted
`
`Petitioner’s request to join those proceedings together, and those proceedings are
`
`
`
`5
`
`
`
`still pending. Nevertheless, Petitioner filed this IPR2015-00611 on January 23,
`
`2015.
`
`
`
`The prior art (PCT/US99/00664; WO1999/035818) cited in this petition
`
`(IPR2015-00611) was expressly cited
`
`in Petitioner’s amended
`
`invalidity
`
`contentions served in a parallel district court litigation on December 16, 2014.
`
`[Exh. 2002 at 10]. Petitioner clearly knew about this prior art when it filed its
`
`original petition in IPR2015-00543 on January 7, 2015 but chose not to include
`
`this prior art in its original petition.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
`first petition that holds back prior art for use in
`successive attacks, should the first petition be denied.
`
`
`1 Petitioner also filed a third IPR of the ‘168 Patent, 2015IPR-00607, on January 23, 2015.
`
`
`
`6
`
`
`
`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
`
`of a patent. Doing so would frustrate the purpose of the section as providing quick
`
`and cost effective alternatives to litigation.”)
`
`
`
`7
`
`
`
`
`
`Petitioner has already filed a petition to review the ‘168 Patent via IPR
`
`proceedings. Petitioner’s request to join the earlier-filed HTC proceeding was
`
`granted, and Petitioner has an active pending IPR, IPR2014-00989/ IPR2015-
`
`00543, related to the ‘168 Patent. Petitioner’s attempt to harass e-Watch with
`
`repeated administrative attacks on the ‘168 Patent should be denied.
`
`C.
`
`PETITIONER CITES IMPROPER SUBJECT MATTER
`FOR AN INTER PARTES REVIEW
`Petitioner further requests for the PTAB to extend IPR proceedings beyond
`
`
`
`what 35 U.S.C. §311 permits. 35 U.S.C. §311(b) states, “A petitioner in an inter
`
`partes review may request to cancel as unpatentable 1 or more claims of a patent
`
`only on a ground that could be raised under section 102 or 103 and only on the
`
`basis of prior art consisting of patents or printed publications.”
`
`
`
`In order to determine whether the publication cited in this petition qualifies
`
`as prior art, Petitioner asks the PTAB to determine a highly subjective issue related
`
`to the intent of the applicant before and during the revival of abandoned United
`
`States Patent Application 09/006,073 (“’073 Patent Application”) to which the
`
`‘168 Patent claims priority. Congress expressly limited the scope of IPRs to 35
`
`U.S.C. §102 and §103 grounds related to patents and printed publications to avoid
`
`adjudicating this type of issue because the discovery necessary to resolve such an
`
`
`
`8
`
`
`
`issue would destroy the efficiency and cost saving benefits that Congress desired in
`
`mandating the limited scope of IPR proceedings.
`
`
`
`
`
`MPEP 711.03(c)(II)(C) provides that the Office relies on the applicant’s
`
`duty of candor and good faith in making a statement that “the entire delay in filing
`
`the required reply from the due date for the reply until the filing of a grantable
`
`petition pursuant to 37 C.F.R. 1.137(b) was unintentional” and notes that providing
`
`an inaccurate statement in this regard can have adverse effects when attempting to
`
`enforce the patent resulting from the application in litigation. See Lumenyte Int’l
`
`Corp. v. Cable Lite Corp., Nos. 96-1011, 96-1077, 1996 U.S. App. LEXIS 16400,
`
`1996 WL 383927 (Fed. Cir. July 9, 1996). While the patent owner unequivocally
`
`denies submitting an
`
`inaccurate declaration related
`
`to
`
`the unintentional
`
`abandonment of the ‘073 Patent Application, the proper venue for Petitioner to
`
`challenge this declaration is in the district court proceedings which permit
`
`inequitable conduct challenges as well as invalidity challenges beyond 35 U.S.C.
`
`§102 and §103 patents and printed publications.
`
`
`
`Patent Owner is unaware of any instance in which the PTAB has
`
`reconsidered a decision granting a petition to revive pursuant to 37 C.F.R. 1.137(b)
`
`under the unintentional standard during IPR proceedings. The PTAB has
`
`previously determined that it could reconsider a previously granted 37 C.F.R.
`
`1.131 swear behind declaration for purposes of establishing a priority date for
`
`
`
`9
`
`
`
`certain references to qualify as prior art. However, review of a swear behind
`
`declaration is distinguishable from review of a petition to revive under the
`
`unintentional standard because the PTAB can reasonably and objectively
`
`determine from a comparison of the claims of a patent and the alleged
`
`corroborating evidence of conception, including drawings, diagrams and affidavits,
`
`whether all of the claimed subject matter is disclosed in the corroborating
`
`evidence.2 The PTAB should decline Petitioner’s invitation to extend the statutory
`
`reach of IPR proceedings even further to include subjective review of an
`
`applicant’s state of mind prior to filing a 37 C.F.R. 1.137 petition to revive an
`
`unintentionally abandoned application.
`
`
`
`Setting aside the propriety of Petitioner’s challenge to the 37 C.F.R. 1.137
`
`petition to revive the ‘073 Patent Application and assuming the facts recited in the
`
`petition are true, which they are not, Petitioner has not presented evidence
`
`establishing a reasonable likelihood that it would prevail on a ground of
`
`unpatentability. At best, the allegations of Petitioner establish that Petitioner
`
`believes it is possible that the ‘073 Patent Application was intentionally
`
`abandoned, and Petitioner wants the opportunity to seek further discovery on this
`
`
`2 Similarly, without resorting to additional discovery and resolving the subjective intent of the
`applicant, the PTAB is capable of making an objective comparison of the disclosure of priority
`applications to determine if all of the claimed subject matter of a child application is contained in
`a parent application. Focal Therapeutics, Inc., v. Senorx, Inc., IPR2014-00116 (Paper 8 at 9-10).
`
`
`
`10
`
`
`
`matter in an IPR proceeding. This falls short of the 37 C.F.R. §42.108(c)
`
`requirement that inter partes review shall not be instituted unless “the petition
`
`supporting the ground…demonstrate[s] that there is a reasonable likelihood that at
`
`least one of the claims challenged in the petition is unpatentable.”
`
`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 ‘168 patent and represents an inappropriate and disfavored
`
`serial attack by Petitioner on the same patent it has already challenged in other
`
`IPR proceedings. Moreover, the sole ground of unpatentability proposed in this
`
`petition requires the PTAB to extend the reach of IPR proceedings beyond what
`
`Congress intended and permitted under 35 U.S.C. 311 to include subjective
`
`determinations of applicant intent prior to reviving an abandoned priority
`
`application. Finally, Petitioner has failed to meet its burden under 37 C.F.R.
`
`§42.108(c) to show that “the petition supporting the ground…demonstrate[s] that
`
`there is a reasonable likelihood that at least one of the claims challenged in the
`
`petition is unpatentable” because it has not shown a reasonable likelihood that the
`
`‘073 Patent Application was intentionally abandoned.
`
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`
`Respectfully Submitted,
`/David O. Simmons/
`David O. Simmons
`
`11
`
`
`
`Lead Counsel:
`Robert C. Curfiss
`Reg. No. 26,540
`Attorney
`19826 Sundance Drive
`Humble, Texas 77346
`Telephone: (832) 573-1442
`Facsimile: (832) 644-6152
`
`Back-Up Counsel:
`David O. Simmons
`Reg. No. 43,124
`Patent Agent
`P. O. Box 26584
`Austin, Texas 78755
`Telephone: (512) 345-9767
`Facsimile: (512) 345-0021
`
`
`
`12
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________
`SAMSUNG ELECTRONICS CO., LTD.
`AND SAMSUNG ELECTRONICS AMERICA, INC.
`
`Petitioner
`v.
`E-WATCH, INC.
`Patent Owner
`___________________________________
`Case: IPR2015-00611
`Patent No. 7,643,168
`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 15, 2015
`
`Manner of Service:
`delivery by express mail with a courtesy copy via email
`
`Document(s) Served:
`Patent Owner Preliminary Response for IPR2015-00611
`
`
`Exhibit EXH. 2001-EXH 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
`
`
`
`13
`
`
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