Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 34
`Entered: April 15, 2015
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`PUBLIC VERSION
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GENERAL ELECTRIC COMPANY,
`Petitioner,
`
`v.
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`TRANSDATA, INC.,
`Patent Owner.
`
`Case IPR2014-01380
`Patent 6,903,699 C11
`
`Before LYNNE E. PETTIGREW, FRANCES L. IPPOLITO, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`
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`
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`1 Patent 6,903,699 B2 as modified by reexamination certificate 6,903,699
`C1.
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`A. Background
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`PUBLIC VERSION
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`INTRODUCTION2
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`General Electric Company (“Petitioner”) filed a Petition (Paper 1,
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`“Pet.”) requesting an inter partes review of claims 1, 3, 5, 8, 10, 11, 16, and
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`21–53 of U.S. Patent No. 6,903,699 (Ex. 1001, “the ’699 patent”).
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`TransData, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 22
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`(“Prelim. Resp.”). Petitioner filed a Reply to the Preliminary Response.
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`Paper 27 (“Reply”); see also Paper 24 (order authorizing Reply).
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`We have authority to determine whether to institute an inter partes
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`review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). The standard for
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`instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
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`provides that an inter partes review may not be instituted “unless the
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`Director determines . . . there is a reasonable likelihood that the petitioner
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`would prevail with respect to at least 1 of the claims challenged in the
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`petition.” Under 35 U.S.C. § 315(b), “[a]n inter partes review may not be
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`instituted if the petition requesting the proceeding is filed more than 1 year
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`after the date on which the . . . privy of the petitioner is served with a
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`complaint alleging infringement of the patent.”
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`After considering the Petition, the Preliminary Response, and the
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`Reply, we determine that a privy of Petitioner was served with a complaint
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`2 An earlier, non-public version of this decision was issued March 2, 2015.
`Paper 28. Because the present version is being issued solely to complete the
`public record of this proceeding, the portions of this decision relating to the
`treatment of confidential information are relevant only to the original non-
`public version. All due dates shall be computed based upon the date of
`issuance of the original, non-public version of this decision.
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`alleging infringement of the ’699 patent more than one year before the
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`Petition was filed. Accordingly, we do not institute inter partes review.
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`B. Related Matters
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`The ’699 patent has been asserted against multiple defendants,
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`including Oklahoma Gas & Electric Company (“OG&E”), in an ongoing
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`multidistrict litigation proceeding, In re TransData Inc. Smart Meters Patent
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`Litigation, No. 5:12-ml-2309 (W.D. Okla.) (“the MDL proceeding”). Pet.
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`1–2;3 Ex. 2002, 6–7. One of the lawsuits alleging infringement of the ’699
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`patent that was consolidated into the MDL proceeding was TransData Inc. v.
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`Oklahoma Gas & Electric Company, No. 5-11-cv-01032 (W.D. Okla.) (“the
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`Oklahoma lawsuit”). Paper 4, 1; see Ex. 2003, 9 (requiring future filings in
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`case 5-11-cv-01032 to be made in case 5:12-ml-2309). The Oklahoma
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`lawsuit was consolidated into the MDL proceeding on August 23, 2012. Ex.
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`2003, 9.
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`Patents 6,462,713 and 6,181,294, both of which are related to the ’699
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`patent, also were asserted in the Oklahoma lawsuit and the MDL proceeding.
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`Ex. 2002, 3–6. These patents are the subjects of pending petitions for inter
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`partes review, IPR2014-01505 and IPR2014-01559, respectively.
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`Additionally, ex parte reexaminations are currently pending for claims 1, 3,
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`3 The page numbers in the Petition begin at 1, increase to 6, then start at 2
`and increase thereafter to 61. The material cited here appears on the first
`page 6 and the second page 2, which are consecutive pages. To minimize
`confusion in this decision, we will not cite to the first set of pages 1 through
`5, we will cite the first page 6 as page 1, and we will cite the remainder of
`the pages (the second page 2 through page 61) according to their indicated
`page numbers.
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`5, and 16 of the ’699 patent; claims 1, 2, 5, 6, 7, 15, 16, and 18–26 of the
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`’713 Patent; and claims 17–20 and 22–29 of the ’294 Patent. Pet. 2–3.
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`C. The Asserted Grounds of Unpatentability
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`Petitioner contends that claims 1, 3, 5, 8, 10, 11, 16, and 21–53 of the
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`’699 patent are unpatentable under 35 U.S.C. §§ 102 and 103 based on the
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`following grounds (Pet. 23, 31–60):4
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`4 Petitioner also provides a declaration from Gregory A. DesBrisay. Ex.
`1012 (“the DesBrisay Declaration”).
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`Statutory
`Ground
`§ 102(e)
`§ 103
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`Basis5
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`Challenged Claims
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`Bush
`Bush and
`Johnson
`Bush, Johnson,
`and Bearden
`Bush and AMR
`Report
`Bush, AMR
`Report, and
`Siwiak
`Bush, AMR
`Report, and
`Krenz
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`1, 3, 5, 8, 10, 11, 16, 21, 23, 25–47, and 49
`1, 3, 5, 8, 10, 11, 16, 21, 23, 25–47, and 49
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`22 and 24
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`45–48, 50, and 52
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`50 and 51
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`53
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`D. The ’699 Patent
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`The ’699 patent relates to electric meters that can communicate over
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`public wireless data networks. Specifically, the ’699 patent describes a
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`wireless communication device that permits information to be
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`communicated to and from an electric meter contained in a meter chassis
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`that has a protruding dielectric housing. Ex. 1001, 2:53–56. The ’699 patent
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`describes an embodiment of such a device that comprises “(1) a
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`communication circuit within the chassis coupled to electric meter circuitry,
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`and (2) an antenna element within the dielectric housing, the antenna
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`coupled to the communication circuit.” Id. at 2:58–62.
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`5 U.S. Patent No. 6,078,785 (Ex. 1003) (“Bush”); U.S. Patent No. 5,553,094
`(Ex. 1005) (“Johnson”); U.S. Patent No. 5,627,759 (Ex. 1006) (“Bearden”);
`RICHARD D. ALEXANDER, AUTOMATIC METER READING: THE REPORT FOR
`ELECTRIC UTILITIES (Greg Formaneck, ed., 1993) (Ex. 1004) (“AMR
`Report”); U.S. Patent No. 4,737,797 (Ex. 1007) (“Siwiak”); U.S. Patent No.
`5,508,709 (Ex. 1008) (“Krenz”).
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`E. Illustrative Claims
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`Of the challenged claims in the ’699 patent, claims 1, 8, 16, 21, 32,
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`35, 36, 40, 42, 44, and 45 are independent. Claims 1 and 21 are illustrative
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`and recite:
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`1. For use with an electric meter chassis having a dielectric
`housing protruding therefrom, a wireless communication
`device, comprising:
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`a communication circuit within said chassis coupled to electric
`meter circuitry;
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`an antenna element within said dielectric housing, said antenna
`element coupled to said communication circuit.
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`21. An electric meter chassis having a dielectric housing
`protruding therefrom, comprising:
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`a wireless communication circuit within said chassis for
`communicating meter information through said dielectric
`housing, said wireless communication circuit coupled to
`electric meter circuitry; and
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`an antenna element coupled to said wireless communication
`circuit and located within said dielectric housing.
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`Ex. 1001, 7:7–14, Reexamination Certificate 1:24–31.
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`ANALYSIS
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`Patent Owner argues that inter partes review may not be instituted
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`because such institution is barred by 35 U.S.C. § 315(b), which provides that
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`an inter partes review may not be instituted based on a petition “filed more
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`than 1 year after the date on which the petitioner, real party in interest, or
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`privy of the petitioner is served with a complaint alleging infringement of
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`the patent.” Prelim. Resp. 3, 6–21. For the reasons discussed below, we
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`agree.
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`A. A Complaint Alleging Infringement of the ’699 Patent Was Served
`on OG&E More Than One Year Before the Petition Was Filed.
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`Infringement of the ’699 patent was alleged in the Oklahoma lawsuit.
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`Ex. 2002, 6–7. The complaint in the Oklahoma lawsuit was served on
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`OG&E on September 21, 2011. Ex. 2039. The Petition in this proceeding
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`was filed on August 25, 2014. Paper 6, 1. Accordingly, a complaint
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`alleging infringement of the ’699 patent was served on OG&E more than
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`one year before the Petition was filed in this proceeding.
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`B. OG&E Is a Privy of Petitioner with Respect to the Oklahoma
`Lawsuit.
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`“Privity is essentially a shorthand statement that collateral estoppel is
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`to be applied in a given case. . . . The concept refers to a relationship
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`between the party to be estopped and the unsuccessful party in the prior
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`litigation which is sufficiently close so as to justify application of the
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`doctrine of collateral estoppel.” Office Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,759 (Aug. 14, 2012) (quoting 154 Cong. Rec. S9987 (daily ed.
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`Sep. 27, 2008) (statement of Sen. Kyl)). Thus, privity exists between
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`Petitioner and OG&E with respect to the Oklahoma lawsuit if collateral
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`estoppel could be applied to Petitioner with respect to the Oklahoma lawsuit.
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`The issue is whether Petitioner could be bound by the judgment in the
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`Oklahoma lawsuit as a matter of collateral estoppel.
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`A nonparty to a prior action is bound by the judgment in the prior
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`action if that party “‘assumed control’ over the litigation in which that
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`judgment was rendered.” Taylor v. Sturgell, 553 U.S. 880, 895 (2008)
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`(quoting Montana v. U.S., 440 U.S. 147, 154 (1979)). This includes
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`indemnitors who assume control of litigation against the parties they
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`indemnify. Benson & Ford, Inc. v. Wanda Petroleum Co., 833 F.2d 1172,
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`1174 (5th Cir. 1987); see Schnell v. Peter Eckrich & Sons, Inc., 365 U.S.
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`260, 262 n.4 (1961) (holding that an entity that “control[s] the defense of [a]
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`suit, in which it has an interest, will be bound by the final judgment,” even if
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`it is not a party to the suit). A nonparty will be found to have control if the
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`nonparty has “effective choice as to the legal theories and proofs to be
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`advanced in behalf of the party to the action,” as well as “control over the
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`opportunity to obtain review.” Benson & Ford, 833 F.2d at 1174. Absolute
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`control, however, is not necessary. Instead, a nonparty will be found to have
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`control if it “has the actual measure of control or opportunity to control that
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`might reasonably be expected between two formal coparties.” 77 Fed. Reg.
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`at 48,759 (quoting 18A CHARLES ALAN WRIGHT, ARTHUR R. MILLER &
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`EDWARD H. COOPER, FEDERAL PRACTICE AND PROCEDURE § 4451 (2d ed.
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`2011)). Moreover, actual control is not required; the opportunity to exert the
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`appropriate level of control is sufficient. Id. (“A common consideration is
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`whether the non-party . . . could have exercised control . . . .”); see Gonzalez
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`v. Banco Cent. Corp., 27 F.3d 751, 758 (1st Cir. 1994) (“[C]ontrol
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`means . . . the power—whether exercised or not—to call the shots.”).
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`Thus, if Petitioner had the opportunity to exercise control over
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`OG&E’s defense in the Oklahoma lawsuit, then it is in privity with OG&E
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`with respect to that litigation. The evidence of record establishes that
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`Petitioner had such an opportunity. Petitioner and OG&E entered into a
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`letter agreement on December 30, 2011, stating that Petitioner would
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`“provide a full and unqualified defense to OG&E” and that Petitioner would
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`“direct and control the litigation, provided that [Petitioner] and its counsel
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`will keep OG&E timely informed of all material activity in the case and will
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`solicit OG&E’s input and assent on all material decisions in the case.” Ex.
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`2015, GE-00001. Under this agreement, Petitioner had the clearly stated
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`right to “control the litigation.”
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`Petitioner argues that this right of control was less than total because
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`the agreement required Petitioner “to solicit OG&E’s ‘assent on all material
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`decisions.’” Reply 4 (quoting Ex. 2025 ¶ 1). While the degree of control is
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`a factor to consider in this “highly fact-dependent question,” lack of absolute
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`control alone is not dispositive. 77 Fed. Reg. at 48,759. Rather, in
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`determining the existence of privity, we take into account how courts
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`generally have used the terms to “describe relationships and considerations
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`sufficient to justify applying convention principles of estoppel and
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`preclusion.” Id. In considering the jurisprudence on this issue, we note that
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`courts have found privity where an entity’s control over the litigation was
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`substantial, even though not complete. Jefferson Sch. of Soc. Sci. v.
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`Subversive Activities Control Bd., 331 F.2d 76, 83 (D.C. Cir. 1963). The
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`evidence here shows that Petitioner had substantial, if not total, control over
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`the Oklahoma lawsuit.
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`Further, as noted above, where a nonparty entity shares control with a
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`party, the nonparty is in privity with the party if control is shared as it would
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`be between two formal coparties. Here, the requirement that Petitioner
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`solicit input and assent from OG&E is consistent with a relationship between
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`Petitioner and OG&E similar to that between formal coparties. See Jones v.
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`Craig, 212 F.2d 187, 187–88 (6th Cir. 1954) (shared control similar to that
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`between formal coparties existed between party and nonparty even where
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`nonparty merely “assisted in the preparation of the defense”). This degree of
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`control is sufficient to establish privity. See 77 Fed. Reg. at 48,759.
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`Moreover, although Petitioner argues that it never had actual control
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`of the Oklahoma lawsuit, Reply 5, the presence or absence of actual control
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`is immaterial to the privity determination. See 77 Fed. Reg. at 48,759 (“A
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`common consideration is whether the non-party . . . could have exercised
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`control . . . .”). The December 2011 agreement establishes that Petitioner
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`and OG&E are in privity with respect to the Oklahoma lawsuit.
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`In addition, the December 2011 agreement ratified a May 9, 2008
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`purchase agreement between Petitioner and OG&E. Ex. 2015, GE-00001.
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`The May 2008 agreement required OG&E to give Petitioner “sole
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`authority . . . to direct and control all defense, settlement, and compromise
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`negotiations.” Ex. 2017, GE-00034. Under the May 2008 agreement,
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`Petitioner had the opportunity to control any litigation arising from the
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`service on OG&E of a complaint alleging infringement of the ’699 patent,6
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`and this opportunity was unfettered by the requirements of the December
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`2011 agreement that Petitioner solicit OG&E’s input and assent. Thus, even
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`if the December 2011 agreement’s requirements had abridged Petitioner’s
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`control sufficiently to avoid privity being established under that
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`6 Petitioner argues that the May 2008 agreement is irrelevant because the
`Oklahoma lawsuit did not accuse the meters sold under that agreement of
`infringing the ’699 patent. Reply 3. We disagree. First, the Oklahoma
`lawsuit accused “electric meters, specifically including, without limitation,
`General Electric I-210 electric meters,” so it was not limited to the I-210
`meters sold under later agreements. Ex. 2002 ¶ 30 (emphasis added). In
`addition, the Oklahoma lawsuit accused additional, unspecified meters as
`well. Id. ¶ 31. Moreover, the December 2011 agreement stated that the
`indemnification Petitioner agreed to provide was in satisfaction of OG&E’s
`indemnification rights under the May 2008 agreement, suggesting that the
`Oklahoma lawsuit encompassed the meters sold under the May 2008
`agreement. Ex. 2015, GE-00001.
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`agreement—which we find not to be the case—Petitioner would have had an
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`opportunity to control the litigation sufficient to establish privity under the
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`May 2008 agreement.7
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`C. Privity with Respect to the Oklahoma Lawsuit Is Sufficient to
`Implicate 35 U.S.C. § 315(b).
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`Petitioner argues that only privity with respect to the present inter
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`partes review proceeding, not privity with respect to the Oklahoma lawsuit,
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`is relevant to the application of the § 315(b) bar. Reply 1–2. In particular,
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`Petitioner first argues that, because a function of the identification of privies
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`is to “assure proper application of the statutory estoppel provisions,” and
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`because the only “‘statutory’ estoppel issue for the Board is whether its trial
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`decision would estop a third party under § 315(e),” the definition of privy
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`must be limited to those entities in privity with Petitioner with respect to the
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`present proceeding. Reply 1 (quoting 77 Fed. Reg. at 48,759). Petitioner
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`suggests that we improperly would give “privy” different meanings in
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`different parts of the statute if we were to interpret it as referring to privies
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`with respect to an inter partes review for purposes of § 315(e) but as
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`referring to privies with respect to a lawsuit for purposes of § 315(b). Id.
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`(citing Ratzlaf v. United States, 510 U.S. 135, 143 (1994)).
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`We do not agree with Petitioner’s reading of § 315. Petitioner’s
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`argument ignores that, in both circumstances, we focus on the relationship of
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`7 Because Petitioner had a sufficient opportunity to control litigation under
`the May 2008 agreement to establish privity, and because that agreement
`predates the service of the complaint in the Oklahoma lawsuit, we find, in
`addition to Petitioner and OG&E being in privity with respect to the
`Oklahoma lawsuit, that Petitioner and OG&E were in privity at the time that
`OG&E was served with the complaint in the Oklahoma lawsuit.
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`the later proceeding’s petitioner to the earlier proceeding’s parties. It is true
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`that, for purposes of applying the estoppel provisions of § 315(e), privity
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`with respect to an earlier inter partes review proceeding is important, but
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`this is because privity with respect to the earlier proceeding will bar
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`institution of a later proceeding, not because privity is limited to arising from
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`inter partes review proceedings. See 77 Fed. Reg. at 48,759 (quoting 154
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`Cong. Rec. S9987 (daily ed. Sep. 27, 2008) (statement of Sen. Kyl))
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`(“Privity . . . refers to a relationship between the party to be estopped and the
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`unsuccessful party in the prior litigation . . . .” (emphasis added)). There is
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`no inconsistency in following precisely the same approach for cases
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`implicating § 315(b), barring institution of a later proceeding when the later
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`proceeding’s petitioner and an entity involved in earlier litigation are privies
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`with respect to the earlier litigation.
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`We also do not agree with Petitioner that our “mandate for expedited
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`proceedings with limited discovery,” Reply 2, requires that we limit our
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`analysis of privity to whether Petitioner and OG&E are privies with respect
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`to the present proceeding. It may be that the nature of inter partes review
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`proceedings is such that, in some cases, it will be difficult to establish privity
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`with respect to a prior proceeding so as to bar the institution of review in a
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`later one. But we need not concern ourselves with that possibility in this
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`case. As discussed above, the evidence of record here establishes that
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`Petitioner and OG&E are privies with respect to the Oklahoma lawsuit.
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`D. Institution of Inter Partes Review is Barred by 35 U.S.C. § 315(b).
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`Because Petitioner had the opportunity to control OG&E’s litigation
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`defense, we find that Petitioner and OG&E are privies with respect to the
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`Oklahoma lawsuit. Accordingly, we find that a privy of Petitioner, OG&E,
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`was served with a complaint alleging infringement of the ’699 patent more
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`than one year before the Petition was filed in this proceeding, and we
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`conclude that, pursuant to 35 U.S.C. § 315(b), we may not institute inter
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`partes review.
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`CONFIDENTIAL INFORMATION
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`There are several issues that remain to be resolved regarding the
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`parties’ submission of confidential information and our reliance on it.
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`First, Patent Owner moved to seal the confidential version of its
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`Preliminary Response, and Petitioner moved to seal the confidential version
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`of its Reply. Paper 23; Paper 26. Both of these pleadings rely on Exhibits
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`2015 through 2026, which are marked as confidential information pursuant
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`to the protective order entered in this proceeding. Paper 22; Paper 27; see
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`Paper 20 (entering protective order). Redacted versions of both pleadings
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`also have been provided. Paper 23; Paper 25. Accordingly, we grant the
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`motions to seal the Preliminary Response and the Reply. Papers 22 and 27,
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`the confidential versions of the Preliminary Response and the Reply, shall
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`remain under seal. The redacted version of the Preliminary Response is
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`attached to Patent Owner’s motion to seal. Paper 23. Neither Patent
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`Owner’s motion to seal nor the redacted version of the Preliminary Response
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`appears to disclose or rely on any confidential information. Accordingly,
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`Paper 23 shall be made publicly available.
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`Second, no party has yet moved to seal Exhibits 2015 through 2026,
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`which currently are accessible only to the parties and the Board. Each of
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`these exhibits is marked as confidential information pursuant to the
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`protective order, so we are hesitant to make them publicly available. Each
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`of these exhibits was produced by Petitioner, who appears to have added the
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`confidential designations. Accordingly, within ten days of the issuance of
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`this decision, Petitioner shall file a motion to seal Exhibits 2015 through
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`2026, explaining why each document should remain under seal. Because, as
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`discussed below, we have relied only on Exhibits 2015, 2017, and 2025,
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`Petitioner instead may move to expunge the other Exhibits (i.e., Exhibits
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`2016, 2018–2024, and 2026) from the record. 37 C.F.R. § 42.56.
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`Third, this decision relies upon confidential information appearing in
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`Exhibits 2015, 2017, and 2025, as well as in the confidential versions of the
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`Preliminary Response and the Reply. Within ten days of the issuance of this
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`decision, Petitioner shall file a motion to seal the present decision,
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`explaining why this decision should be kept under seal. Petitioner’s motion
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`shall include a proposed redacted version of this decision to be made
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`publicly available. If Petitioner does not file a motion to seal this decision
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`and Exhibits 2015, 2017, and 2025 within ten days of the issuance of this
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`decision, or if Petitioner’s reasons for maintaining Exhibits 2015, 2017, and
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`2025 are inadequate, those exhibits and this decision shall become publicly
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`available.
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`CONCLUSION
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`Upon consideration of the Petition, the Preliminary Response, and the
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`Reply, we conclude that institution of inter partes review is barred by 35
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`U.S.C. § 315(b). Accordingly, we do not institute inter partes review of any
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`of the challenged claims on any of the asserted grounds.
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`IPR2014-01380
`Patent 6,903,699 C1
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`It is hereby
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`PUBLIC VERSION
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`ORDER
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`ORDERED that the Petition is denied as to all challenged claims, and
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`no trial is instituted;
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`FURTHER ORDERED that Patent Owner’s Motion to Seal the
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`Preliminary Response (Paper 23) is granted;
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`FURTHER ORDERED that Petitioner’s Motion to Seal the Reply
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`(Paper 26) is granted;
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`FURTHER ORDERED that Patent Owner’s Motion to Seal the
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`Preliminary Response and Redacted Preliminary Response (Paper 23) shall
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`be made publicly available;
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`FURTHER ORDERED that, no later than ten days after the issuance
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`of this decision, Petitioner shall file a motion to seal Exhibits 2015, 2017,
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`and 2025, explaining why those exhibits should remain under seal;
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`FURTHER ORDERED that, no later than ten days after the issuance
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`of this decision, Petitioner shall either file a motion to seal Exhibits 2016,
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`2018 through 2024, and 2026, explaining why those exhibits should remain
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`under seal, or move to expunge Exhibits 2016, 2018 through 2024, and 2026
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`from the record;
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`FURTHER ORDERED that, no later than ten days after the issuance
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`of this decision, Petitioner shall file a motion to seal, explaining why this
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`decision should remain under seal, and including a redacted version of this
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`decision that can be made publicly available; and
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`FURTHER ORDERED that the present decision shall remain under
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`seal until Petitioner’s motion to seal the present decision and Exhibits 2015,
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`2017, and 2025 is resolved.
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`IPR2014-01380
`Patent 6,903,699 C1
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`PETITIONER:
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`Deakin Lauer
`Joseph Jakubek
`Jeffrey Love
`KLARQUIST SPARKMAN LLP
`deakin.lauer@klarquist.com
`joseph.jakubek@klarquist.com
`jeffrey.love@klarquist.com
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`
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`PATENT OWNER:
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`Robert Sterne
`Donald Banowit
`Graham Phero
`STERNE, KESSLER, GOLDSTEIN & FOX
`rsterne-PTAB@skgf.com
`dbanowit-PTAB@skgf.com
`gphero-PTAB@skgf.com
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