Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 26
`
` Filed: October 7, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`SUMMIT 6 LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00806
`Patent 7,765,482 B2
`____________
`
`
`Before HOWARD B. BLANKENSHIP, GEORGIANNA W. BRADEN, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Motion to Stay Ex Parte Reexamination Control No. 90/012,987
`35 U.S.C. § 315(d); 37 C.F.R. § 42.122(a)
`
`
`
`Summit 6 LLC (“Patent Owner”) filed a Motion to Stay Ex Parte
`
`Reexamination Control No. 90/012,987 (“the Reexamination”), a proceeding
`pending before the Board that involves the patent at issue in this proceeding,
`U.S. Patent No. 7,765,482 B2 (“the ’482 patent”). Paper 22 (“Mot.”).
`
`
`571.272.7822
`
`
`Paper No. 26
`
` Filed: October 7, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`SUMMIT 6 LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00806
`Patent 7,765,482 B2
`____________
`
`
`Before HOWARD B. BLANKENSHIP, GEORGIANNA W. BRADEN, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Motion to Stay Ex Parte Reexamination Control No. 90/012,987
`35 U.S.C. § 315(d); 37 C.F.R. § 42.122(a)
`
`
`
`Summit 6 LLC (“Patent Owner”) filed a Motion to Stay Ex Parte
`
`Reexamination Control No. 90/012,987 (“the Reexamination”), a proceeding
`pending before the Board that involves the patent at issue in this proceeding,
`U.S. Patent No. 7,765,482 B2 (“the ’482 patent”). Paper 22 (“Mot.”).
`
`
`
`IPR2015-00806
`Patent 7,765,482 B2
`
`Google Inc. (“Petitioner”) filed an Opposition to Patent Owner’s Motion.
`Paper 24 (“Opp.”). For the reasons given below, we grant the Motion.
`BACKGROUND
`In this proceeding, on September 9, 2015, we instituted inter partes
`
`review of claims 12, 13, 16, 18, 19, 21–25, 35–38, 40–42, 44–46, and 49 of
`the ’482 patent on two grounds of unpatentability asserted by Petitioner,
`obviousness in view of: (1) Creamer1 and Aihara,2 and (2) Mayle3 and
`Narayen.4 Paper 19 (“Inst. Dec.”).
`The Reexamination was initiated by a third-party request for ex parte
`
`reexamination of claims 38, 40, 44–46, and 49 of the ’482 patent. Ex. 2036.
`The Office granted the request on November 6, 2013, Ex. 2039, and issued a
`Final Office Action on May 21, 2014, finding the claims unpatentable based
`on three grounds of rejection: (1) claims 38, 40, 44–46, and 49 as
`anticipated by Creamer, (2) claims 38, 40, 44–46, and 49 as anticipated by
`Mattes,5 and (3) claim 46 as obvious over Creamer and Mattes, Ex. 2040.
`Patent Owner appealed to the Board. Ex. 2041. On September 18, 2015, the
`Board scheduled the appeal for hearing on November 10, 2015. Ex. 2043.
`ANALYSIS
`Under 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a), the Board,
`
`“during the pendency of an inter partes review,” may provide for the “stay,
`transfer, consolidation, or termination” of any other proceeding or matter
`before the Office that involves the same patent. 35 U.S.C. § 315(d);
`
`
`1 U.S. Patent No. 6,930,709 B1 (issued Aug. 16, 2005) (Ex. 1004).
`2 U.S. Patent No. 6,223,190 B1 (issued Apr. 24, 2001) (Ex. 1005).
`3 U.S. Patent No. 6,018,774 (issued Jan. 25, 2000) (Ex. 1006).
`4 U.S. Patent No. 6,035,323 (issued Mar. 7, 2000) (Ex. 1007).
`5 U.S. Patent No. 6,038,295 (issued Mar. 14, 2000).
`
`
`
`2
`
`
`
`IPR2015-00806
`Patent 7,765,482 B2
`
`37 C.F.R. § 42.122(a). Here, the ’482 patent is at issue in both this inter
`partes review proceeding and the Reexamination pending before the Board.
`Accordingly, the conditions of 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a)
`are met, and we must determine whether to exercise our discretion to stay
`the Reexamination.
`
`We agree with Patent Owner that the circumstances of this proceeding
`and the Reexamination warrant a stay. First, the claims of the ’482 patent at
`issue in this proceeding and the Reexamination are overlapping. All six
`claims at issue in the Reexamination, claims 38, 40, 44–46, and 49, also are
`the subject of this proceeding. See Inst. Dec. 33; Ex. 2040, 3–4.
`Second, this proceeding and the Reexamination involve overlapping
`asserted prior art and issues. In each proceeding, Creamer is asserted as a
`prior art reference that allegedly renders unpatentable claims 38, 40, 44–46,
`and 49 of the ’482 patent—this proceeding includes a ground challenging
`these claims as obvious over Creamer and Aihara, Inst. Dec. 33, while in the
`Reexamination, these claims stand rejected as anticipated by Creamer and
`claim 46 also is rejected as obvious over Creamer and Mattes, Ex. 2040,
`3–4. Petitioner attempts to downplay the impact of this overlap, arguing that
`Creamer is the only common prior art reference and it is “used differently in
`the two proceedings— in an anticipation rejection in the [R]eexam[ination]
`and in an obviousness [ground]” in this proceeding. Opp. 4–5. This
`argument overlooks that the Reexamination involves an obviousness
`rejection of claim 46 based on Creamer. See Ex. 2041, 2. More importantly,
`Creamer plays a key role in both proceedings and its inclusion in each
`proceeding results in a significant overlap in the issues to be resolved. In the
`Reexamination, the Board must address whether Creamer discloses each
`
`
`
`3
`
`
`
`IPR2015-00806
`Patent 7,765,482 B2
`
`limitation of claims 38, 40, 44–46, and 49 of the ’482 patent, as well as
`whether Creamer teaches or suggests the limitations of claim 46. In this
`proceeding, we must address whether Creamer teaches or suggests the same
`limitations. The similarity in the issues to be resolved leads to similar
`disputed issues in each proceeding. For example, in this proceeding, Patent
`Owner disputes Petitioner’s assertion that Creamer teaches or suggests “pre-
`processing parameters controlling said client device in a placement of said
`digital content into a specified form in preparation for publication,” as
`recited in claim 38 of the ’482 patent. See Inst. Dec. 16–18, Prelim.
`Resp. 31–35. In the appeal of the Reexamination, Patent Owner contests the
`Examiner’s construction of this limitation and argues that Creamer does not
`disclose the limitation under the proper construction. Ex. 2041, 3–17.
`Given the significant overlap in the Reexamination and this
`proceeding, allowing the Reexamination to proceed concurrently would
`result in duplicative efforts within the Office, particularly within the Board,
`and would be an inefficient use of Office and Board resources. In addition,
`allowing these overlapping proceedings to proceed simultaneously could
`result in inconsistencies between the proceedings.
`Petitioner’s arguments opposing a stay of the Reexamination are not
`persuasive. Petitioner argues that a decision by the Board in the
`Reexamination likely would issue before any final decision in this
`proceeding, and that if the Board affirms the rejections in the Reexamination
`and Patent Owner does not appeal to the Federal Circuit, the issues in this
`proceeding may be “substantially simplif[ied],” thereby “conserv[ing]
`resources of both the Board and the parties.” Opp. 1, 3–4, 6. In addition,
`Petitioner asserts that a stay of the Reexamination would “prejudic[e]”
`
`
`
`4
`
`
`
`IPR2015-00806
`Patent 7,765,482 B2
`
`Petitioner by “forc[ing Petitioner] to expend time and resources to continue
`challenging claims” that could be decided in the Reexamination. Id. at 8.
`Petitioner’s arguments are based on speculation regarding a potential
`minor reduction in the issues to be addressed and decided in this proceeding
`if a specific hypothetical factual scenario plays out in the Reexamination,
`i.e., the Board affirms the rejection of claims 38, 40, 44–46, and 49, the
`Board’s decision issues before any final decision in this proceeding, and
`Patent Owner does not appeal the Board’s decision. Even in this narrow
`hypothetical scenario, no Board resources would be conserved, despite
`Petitioner’s suggestion to the contrary. The Board would have addressed in
`the Reexamination the patentability of claims 38, 40, 44–46, and 49 of the
`’482 patent, including whether these claims are anticipated by Creamer and
`whether claim 46 would have been obvious over Creamer and Mattes. Then,
`in this proceeding, the Board still would have to address whether Creamer
`and Aihara, in addition to Mayle and Narayen, render obvious the other
`fifteen claims at issue in this case.
`Moreover, we are not persuaded that a stay of the Reexamination
`would prejudice Petitioner. With a stay, Petitioner must address the
`’482 patent claims that it chose to, and continues to choose to, challenge in
`this proceeding. Petitioner has no role or involvement in the
`Reexamination. To the extent that a stay of the Reexamination eliminates
`the possibility that a subset of the claims challenged in this proceeding could
`be resolved in the Reexamination, this impact on Petitioner does not
`outweigh the compelling factors weighing in favor of a stay—preventing
`proceedings involving the same patent as well as overlapping claims and
`prior art from being considered simultaneously by the Board.
`
`
`
`5
`
`
`
`IPR2015-00806
`Patent 7,765,482 B2
`
`
`For the reasons given above, we exercise our discretion under
`35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a) to stay the Reexamination
`pending termination or completion of this proceeding. This stay tolls all
`time periods for responses. During the stay, no substantive papers may be
`filed in the Reexamination. Ministerial papers, such as those updating an
`attorney of record, however, may be filed.
`ORDER
`
`
`
`Accordingly, it is:
`ORDERED that Patent Owner’s Motion to Stay Ex Parte
`Reexamination 90/012,987 Under 35 U.S.C. § 315(d) (Paper 22) is granted;
`and
`
`FURTHER ORDERED that Ex Parte Reexamination Control No.
`90/012,987 is stayed pending the termination or completion of the instant
`proceeding.
`
`6
`
`
`
`
`
`
`
`IPR2015-00806
`Patent 7,765,482 B2
`
`PETITIONER:
`
`John Alemanni
`Michael Morlock
`KILPATRICK TOWNSEND & STOCKTON LLP
`jalemanni@kilpatricktownsend.com
`mmorlock@kilpatricktownsend.com
`
`PATENT OWNER:
`
`Peter Ayers
`John Shumaker
`Brian Mangum
`Robert Carlson
`LEE & HAYES, PLLC
`peter@leehayes.com
`jshumaker@leehayes.com
`brianm@leehayes.com
`bob@leehayes.com
`
`
`
`7
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