Filed on behalf of TRACBEAM, LLC
`By: Sean Luner
`
`DOVEL & LUNER
`
`201 Santa Monica Blvd, Suite 600
`
`Santa Monica, CA 90401
`
`Telephone (310) 656-7066
`
`sean@dovel.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`T-MOBILE US, INC., T-MOBILE USA, INC.,
`TELECOMMUNICATION SYSTEMS, INC., ERICSSON INC., and
`TELEFONAKTIEBOLAGET LM ERICSSON
`Petitioners,
`
`v.
`
`TRACBEAM, LLC,
`Patent Owner
`__________________
`
`Case No. IPR2016-00728
`Patent 7,525,484
`__________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO THE PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,525,484 UNDER
`35 U.S.C. § 313 PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`
`
`

`
`Case No. IPR2016-00728
`Patent 7,525,484
`
`
`
`Table of Contents
`Introduction. ..................................................................................................... 1 
`This Petition is time barred. ............................................................................. 2 
`A. 
`This Petition was filed more than one year after Petitioners
`were served with a complaint alleging infringement of the ‘484
`patent. .................................................................................................... 3 
`Petitioners cannot circumvent Section 315(b)’s one-year
`statutory bar by trying to join their own Petition. ................................. 6 
`III.   Relevant factors that the Board considers before exercising its
`discretion to permit Petitioners’ second-try Petition demonstrate that
`the Board should deny this Petition. ................................................................ 8 
`IV.   Conclusion ..................................................................................................... 30 
`
`I. 
`II.  
`
`B. 
`
`i
`
`
`
`
`
`
`

`
`Case No. IPR2016-00728
`Patent 7,525,484
`
`
`Table of Authorities
`
`Cases 
`ATopTech, Inc. v. Synopsys, Inc.,
`IPR2015-00760, Paper 15 (July 21, 2015) .............................................. 17, 27, 29
`Butamax Advanced v. Gevo,
`IPR2014-00581, Paper 8 (Oct. 14, 2014) ..................................................... passim
`Conopco, Inc. dba Unilever v. The Procter & Gamble Company,
`IPR2014-00506, Paper 25 (March 20, 2015) .................................... 11, 13, 18, 26
`Conopco, Inc. dba Unilever v. The Proctor & Gamble Company,
`IPR2014-00628, Paper 21 (Oct. 20, 2014) ........................................ 15, 16, 18, 19
`Eizo Corporation v. Barco N.V.,
`IPR2014-00778, Paper 18 (Oct. 10, 2014) .........................................................6, 7
`Intelligent Bio Systems, Inc. v. Illumina Cambridge Ltd.,
`IPR2013-00324, Paper 19 (Nov. 21, 2013) ............................................... 8, 17, 25
`Johnson Health Tech Co. v. Icon Health & Fitness, Inc.,
`IPR2014-01242, Paper 16 (Feb. 11, 2015) ............................................................. 3
`LG Electronics, Inc. v. ATI Technologies ULC,
`IPR2015-01620, Paper 10 (Feb. 2, 2016) ...................................................... 10, 29
`LG Electronics, Inc. v. Mondis Technology, Ltd.,
`IPR2015-00937, Paper 8 (Sept. 17, 2015) .........................................................3, 5
`Medtronic Inc. v. Nuvasive, Inc.,
`IPR2014-00487, Paper 8 (Sep. 11, 2014) ............................................................. 19
`Medtronic Inc. v. Robert Bosch Healthcare Systems, Inc.,
`IPR2014-00436, Paper 17 (June 19, 2014) ................................................... 15, 17
`Microsoft Corp. v. Enfish, LLC.,
`IPR2014-00574, Paper 13 (Sept. 29, 2014) ......................................................... 14
`Microsoft Corp. v. Surfast, Inc.,
`IPR2014-00271, Paper 20 (June 13, 2014) .......................................................... 16
`Microsoft v. Biscotti, Inc.,
`IPR2015-01054, Paper 10 (Oct. 22, 2015) ........................................................... 26
`Oracle Corp. v. Crossroads Systems, Inc.
`IPR2015-01066, Paper 11 (Oct. 7, 2015) ............................................................... 7
`ii
`
`
`

`
`Case No. IPR2016-00728
`Patent 7,525,484
`
`
`Prism Pharma v. Choongwae Pharma Corp.,
`IPR2014-00315, Paper 14 (July 8, 2014) ............................................................. 16
`Samsung Elecs. Co. Ltd. v. Virginia Innovations Scis., Inc.,
`IPR2014-00557, Paper 10 (June 13, 2014) .......................................................... 29
`Samsung Electronics Co. Ltd. et al. v. Affinity Labs of Texas, LLC,
`IPR2015-00820, Paper 12 (May 15, 2015) ....................................... 14, 20, 26, 28
`SAS Institute, Inc. v. ComplementSoft, LLC,
`IPR2013-00581, Paper 15 (Dec. 30, 2013) .......................................................... 15
`SkyHawke Technologies, Inc. v. L&H Concepts, LLC,
`IPR2014-01485, Paper 13 (March 20, 2015) ......................................................... 6
`Target Corp. v. Destination Maternity Corp.,
`IPR2014-00508, Paper 18 (Sept. 25, 2014) ........................................................... 7
`Terremark North America LLC et al. v. Joao Control & Monitoring Systems, LLC,
`IPR2015-01482, Paper 10 (Dec. 28, 2015) ............................................................ 5
`Travelocity.com et al. v. Cronos Technologies,
`CBM2015-00047, Paper 7 (June 15, 2015) .......................................................... 21
`Tristar Products, Inc. v. Choon’s Design, LLC,
`IPR2015-00838, Paper 8 (Aug. 26, 2015) .............................................................. 2
`Zimmer Holdings Inc. v. Bonutti Skeletal Innovations LLC,
`IPR2014-01080, Paper 17 (Oct. 31, 2014) ............................................................. 8
`ZTE Corp. v. Contentguard Holdings, Inc.,
`IPR2013-00454, Paper 12 (Sept. 25, 2013) ................................................. passim
`Statutes 
`35 U.S.C. § 315(b) .................................................................................................2, 7
`35 U.S.C. § 315(c) ..................................................................................................... 6
`35 U.S.C. § 325(d) ................................................................................................... 14
`Other Authorities 
`157 Cong. Rec. (daily ed. Sept. 8, 2011) ................................................................. 28
`77 Fed. Reg. 48612 .................................................................................................. 21
`77 Fed. Reg. 48756 .................................................................................................. 28
`77 Fed. Reg. 48767 .................................................................................................. 21
`
`iii
`
`
`

`
`Case No. IPR2016-00728
`Patent 7,525,484
`
`
`Regulations 
`37 C.F.R. § 42.101(b) ............................................................................................2, 5
`37 C.F.R. § 42.104(b) .............................................................................................. 21
`
`iv
`
`
`

`
`Case No. IPR2016-00728
`Patent 7,525,484
`
`
`Exhibit List
`
`
`Description
`Order, dkt. #75, TracBeam, LLC., v. T-Mobile US, Inc. et. al.,
`Case No. 6:14-CV-678 (E. D. Tx. June 2, 2015)
`Notice of Compliance regarding Reasonable Number of Asserted
`Claims, dkt. #88, TracBeam, LLC., v. T-Mobile US, Inc. et. al.,
`Case No. 6:14-CV-678 (E. D. Tx. June 24, 2015)
`Complaint, dkt. #1, TracBeam, LLC., v. T-Mobile US, Inc. et. al.,
`Case No. 6:14-CV-678 (E. D. Tx. August 8, 2014)
`Executed Summons to T-Mobile, US, Inc., dkt. #9, TracBeam,
`LLC., v. T-Mobile US, Inc. et. al., Case No. 6:14-CV-678 (E. D.
`Tx. August 11, 2014)
`Executed Summons to T-Mobile, USA, Inc., dkt. #10, TracBeam,
`LLC., v. T-Mobile US, Inc. et. al., Case No. 6:14-CV-678 (E. D.
`Tx. August 11, 2014)
`Motion to Compel, dkt. #202, TracBeam, LLC., v. T-Mobile US,
`Inc. et. al., Case No. 6:14-CV-678 (E. D. Tx. March 14, 2016)
`
`
`Exhibit No.
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`
`
`v
`
`
`

`
`I.
`
`Introduction.
`
`Case No. IPR2016-00728
`Patent 7,525,484
`
`
`This Petition presents a single ground challenging claim 25 of the ‘484
`
`Patent as obvious based on combining Loomis and Wortham. In IPR2015-1708,
`
`Petitioners previously challenged claim 25 of the ‘484 Patent, and likewise
`
`asserted obviousness based on this same combination. They lost on this issue.
`
`IPR2015-1708, Paper 10 at 20 (“Petitioner has not shown a reasonable likelihood
`
`that it would prevail with respect to claim 25 as obvious over Loomis and
`
`Wortham.”). Petitioners now seek a second bite at the apple using the Board’s
`
`guidance from its prior Decision to try to correct deficiencies in their original
`
`Petition.
`
`The Board should reject this second-try Petition for two independent
`
`reasons:
`
`Reason 1: The Petition is time barred.
`
`Reason 2: Relevant factors that the Board considers before exercising its
`
`discretion to permit second-try petitions demonstrate that the Board should not
`
`exercise its discretion here. 1
`
`
` 1
`
`
`
`If the Board were to institute this Trial, Patent Owner would also
`
`demonstrate that this Petition fails on the merits.
`
`1
`
`
`

`
`Case No. IPR2016-00728
`Patent 7,525,484
`
`
`Each reason is addressed in turn.
`
`
`
`II. This Petition is time barred.
`
`Under 35 U.S.C. § 315(b):
`
`[a]n inter partes review may not be instituted if the petition requesting
`the proceeding is filed more than 1 year after the date on which the
`petitioner … is served with a complaint alleging infringement of the
`patent.2
`
`See also 37 C.F.R. § 42.101(b) (a petition is barred if “[t]he petition requesting the
`
`proceeding is filed more than one year after the date on which the petitioner… is
`
`served with a complaint alleging infringement of the patent”); Tristar Products,
`
`Inc. v. Choon’s Design, LLC, IPR2015-00838, Paper 8 at 2 (Aug. 26, 2015)
`
`(“Under 35 U.S.C. § 315(b), … we are precluded from instituting inter partes
`
`review ‘if the petition requesting the proceeding is filed more than 1 year after the
`
`date on which the petitioner …is served with a complaint alleging in infringement
`
`of the patent.”)
`
`The purpose of § 315(b) is “to ensure that inter partes review is not used as
`a tool for harassment by repeated litigation and administrative attacks.” See
`Loral Space & Comms., Inc., v. ViaSat, Inc., Case IPR201400236, 239, 240,
`slip op. at 8 (PTAB Apr. 21, 2014) (Paper 7) (alteration and quotations from
`
`
` 2
`
`
`
`Emphasis added throughout unless otherwise noted.
`
`2
`
`
`

`
`the legislative history omitted).
`
`Case No. IPR2016-00728
`Patent 7,525,484
`
`
`LG Electronics, Inc. v. Mondis Technology, Ltd., IPR2015-00937, Paper 8 at 7
`
`(Sept. 17, 2015) (Precedential).
`
`
`
`A petitioner “bears the burden of showing compliance with the threshold
`
`requirement of § 315(b).” Johnson Health Tech Co. v. Icon Health & Fitness, Inc.,
`
`IPR2014-01242, Paper 16 at 4 (Feb. 11, 2015).
`
`Petitioners cannot make this showing.
`
`
`
`
`
`A. This Petition was filed more than one year after Petitioners were
`served with a complaint alleging infringement of the ‘484 patent.3
`In the pending litigation, Patent Owner TracBeam served Petitioners T-
`
`Mobile US, Inc. and T-Mobile USA, Inc. with a complaint alleging infringement
`
`of the ‘484 Patent on August 11, 2014.
`
`
` 3
`
`
`
`Petitioners assert that they are not barred “from bringing this Petition based
`
`on the prior litigation.” Pet. at 15. The “prior litigation” refers to litigation that
`
`was filed in 2011 and dismissed “without prejudice” (Pet. at 14), not the pending
`
`litigation that was filed in 2014 and addressed below. See Pet. 12 (“Patent Owner
`
`TracBeam is currently asserting the ‘484 Patent and three other related patents…
`
`against Petitioner T-Mobile.”)
`
`3
`
`
`

`
` TracBeam’s Complaint identified Petitioners as Defendants:
`
`Case No. IPR2016-00728
`Patent 7,525,484
`
`
`
`
`
`
`Ex. 2003 (Complaint) at 1.
`
`
`
` In the Complaint, TracBeam alleged that Petitioners infringed the
`
`‘484 Patent:
`
`Ex. 2003 (Complaint) at 5.
`
`
`
` TracBeam served the Complaint alleging infringement of the ‘484
`
`Patent on Petitioners T-Mobile, US, Inc. and T-Mobile, USA, Inc. on
`
`August 11, 2014:
`
`4
`
`
`

`
`Ex. 2004 (T-Mobile, US Summons) at 2;
`
`Case No. IPR2016-00728
`Patent 7,525,484
`
`
`
`
`
`
`Ex. 2005 (T-Mobile USA Summons) at 2.
`
`Accordingly, the one-year statutory bar expired on August 11, 2015—one
`
`
`
`
`
`
`
`year after August 11, 2014. “Because at least one of the petitioning parties was
`
`served with a complaint on [August 11], 2014 …, the statutory bar date for
`
`IPR[2016-00728] is [August 11], 2015.” Terremark North America LLC et al. v.
`
`Joao Control & Monitoring Systems, LLC, IPR2015-01482, Paper 10 at 5 (Dec. 28,
`
`2015) (citing 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b)). “[B]ecause the Petition
`
`was filed more than one year after the service of the [2014] Complaint, it falls
`
`outside the one-year time bar for pursuing an inter partes review set forth in §
`
`315(b)” and “the express language of § 315(b) bars us from instituting an inter
`
`partes review.” LG Electronics, Inc. v. Mondis Technology, Ltd., IPR2015-00937,
`
`Paper 8 at 4-5 (Sept. 17, 2015) (Precedential)).
`
`5
`
`
`

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`Case No. IPR2016-00728
`Patent 7,525,484
`
`
`B.
`
`Petitioners cannot circumvent Section 315(b)’s one-year statutory
`bar by trying to join their own Petition.
`
`Petitioners acknowledge during a call with the Board on April 6, 2016 that if
`
`
`
`
`
`they cannot join their own Petition, their Petition is time barred. See also Petition
`
`at 13-14 (asserting that this Petition is not barred because it is “accompanied by a
`
`request for joinder with another timely-filed IPR proceeding.”). Petitioners cannot
`
`join their own Petition to avoid the statutory bar.
`
`
`
`
`
`The controlling statutes provide:
`
`If the Director institutes an inter partes review, the Director, in his or
`her discretion, may join as a party to that inter partes review any
`person who properly files a petition under section 311 that the
`Director, after receiving a preliminary response under section 313 or
`the expiration of the time for filing such a response, determines
`warrants the institution of an inter partes review under section 314.
`
`35 U.S.C. § 315(c).
`
`
`
`PTAB panels have correctly determined, based on persuasive reasoning, that
`
`“35 U.S.C. § 315(c) does not permit the joinder of a party to a proceeding in which
`
`it already is a party.” Eizo Corporation v. Barco N.V., IPR2014-00778, Paper 18
`
`at 8 (Oct. 10, 2014) (McKone concurring); SkyHawke Technologies, Inc. v. L&H
`
`Concepts, LLC, IPR2014-01485, Paper 13 at 3 (March 20, 2015) (“A person
`
`cannot be joined as a party to a proceeding in which it is already a party”).
`6
`
`
`

`
`As explained in detail in these (and other) Decisions, precluding a party
`
`Case No. IPR2016-00728
`Patent 7,525,484
`
`
`
`
`from joining its own petition:
`
` is consistent with “the plain language of § 315(c)” and “harmonious with
`
`the plain language of § 315(b)” (Target Corp. v. Destination Maternity
`
`Corp., IPR2014-00508, Paper 18 at 11 (Sept. 25, 2014));
`
` is supported by the legislative history (Skyhawke, IPR2014-01485, Paper
`
`13 at 4 (“the legislative history supports our view that § 315(c) provides
`
`for joinder of only a person who is not already a party to the
`
`proceeding”));
`
` “reduces Patent Owner harassment” (Target, IPR2014-00508, Paper 14 at
`
`10); and
`
` “reduces the burden on Office resources” (Target, IPR2014-00508, Paper
`
`14 at 10-11).
`
`
`
`Because Petitioners cannot join “a proceeding in which [they] already [are] a
`
`party” (Eizo, IPR2014-00778, Paper 18 at 8), Petitioners cannot circumvent
`
`Section § 315(b)’s one-year statutory bar. Oracle Corp. v. Crossroads Systems,
`
`Inc. IPR2015-01066, Paper 11 at 3. (Oct. 7, 2015) (“Consequently, the present case
`
`is not joined, and the Petition is subject to the § 315(b) bar.”).
`
`7
`
`
`
`
`

`
`III. Relevant factors that the Board considers before exercising its
`discretion to permit Petitioners’ second-try Petition demonstrate that
`the Board should deny this Petition.
`
`Case No. IPR2016-00728
`Patent 7,525,484
`
`
`In addressing the controlling statute for inter partes reviews, the Board
`
`recognized that: “Congress did not mandate that an inter partes review must be
`
`instituted under certain conditions. Rather, by stating that the Director—and by
`
`extension, the Board—may not institute review unless certain conditions are met,
`
`Congress made institution discretionary.” Intelligent Bio Systems, Inc. v. Illumina
`
`Cambridge Ltd., IPR2013-00324, Paper 19 at 4 (Nov. 21, 2013) (Informative
`
`Decision).
`
`The Board has been cautious in exercising its discretion to grant a party’s
`
`second petition for review of a patent after that same party previously filed an
`
`unsuccessful petition for review of that same patent. “Permitting second chances
`
`in cases like this one ties up the Board’s limited resources; we must be mindful not
`
`only of this proceeding, but of ‘every proceeding.’” Zimmer Holdings Inc. v.
`
`Bonutti Skeletal Innovations LLC, IPR2014-01080, Paper 17 at 6 (Oct. 31, 2014)
`
`(quoting 37 C.F.R. § 42.1(b)).
`
`The Board recognized that serial challenges to the same patent harass a
`
`patent owner and frustrate the intent of the AIA:
`
`Allowing similar, serial challenges to the same patent, by the same
`petitioner, risks harassment of patent owners and frustration of
`
`8
`
`
`

`
`Case No. IPR2016-00728
`Patent 7,525,484
`
`
`Congress’s intent in enacting the Leahy-Smith America Invents Act.
`… “[the AIA is] not to be used as tools for harassment … through
`repeated … 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.”
`
`Butamax Advanced v. Gevo, IPR2014-00581, Paper 8 at 13 (Oct. 14, 2014)
`
`(quoting H.R. Rep. No. 112-98, pt.1, at 48 (2011)); ZTE Corp. v.
`
`Contentguard Holdings, Inc., IPR2013-00454, Paper 12 at 6, 7 (Sept. 25,
`
`2013) (Informative Opinion) (“it would be unjust and inequitable to subject
`
`the Patent Owner to a new challenge by a Petitioner who unsuccessfully had
`
`attempted to institute inter partes review on the claims in a previous
`
`petition” recognizing “the burden and inequity on the Patent Owner if it is
`
`forced to defend the same claims twice from attack by the same Petitioner”).
`
`As set forth in a series of seven Informative Opinions, when considering
`
`whether to exercise its discretion to institute a second-try petition challenging the
`
`same patent, the Board considers the following four factors: (1) whether the
`
`second-try petition attempts to use the Board’s prior decision as a roadmap to
`
`remedy the earlier petition’s deficiencies; whether the same or substantially the
`
`same (2) prior art, and (3) arguments were previously presented; (3) whether the
`
`9
`
`
`

`
`Case No. IPR2016-00728
`Patent 7,525,484
`
`petitioner provides persuasive justification for filing the second-try petition.4 Here,
`
`each factor weighs against instituting this second-try Petition.
`
`
`
`
`
`Factor 1: The first factor is whether the second petition “uses our prior
`
`Decision … to bolster challenges that were advanced, unsuccessfully, in the [prior]
`
`Petition.” Conopco, Inc. dba Unilever v. The Procter & Gamble Company,
`
`IPR2014-00506, Paper 17 at 8 (July 7, 2014); see also LG Electronics, Inc. v. ATI
`
`Technologies ULC, IPR2015-01620, Paper 10 at 7-8 (Feb. 2, 2016) (rejecting
`
`
` 4
`
`
`
`These Informative Opinions, all denying institution, are: Medtronic, Inc. v.
`
`Nuvasive, Inc., IPR2014-00487, Paper 8 (Sep. 11, 2014); Unified Patents, Inc. v.
`
`PersonalWeb Technologies, LLC, IPR2014-00702, Paper 13 (July 24, 2014); Prism
`
`Pharma Co. v. Choongwae Pharma Corp., IPR2014-00315, Paper 14 (July 8,
`
`2014); Conopco, Inc. dba Unilever v. The Procter & Gamble Company, IPR2014-
`
`00506, Paper 17 (July 7, 2014); Medtronic, Inc. v. Robert Bosch Healthcare
`
`Systems, Inc., IPR2014-00436, Paper 17 (June 19, 2014); Intelligent Bio-Systems,
`
`Inc. v. Illumina Cambridge, Ltd., IPR2013-00324, Paper 19 (Nov. 21, 2013); and
`
`ZTE Corp. v. Contentguard Holdings, Inc., IPR2013-00454, Paper 12 (Sept. 25,
`
`2013).
`
`10
`
`
`

`
`Motion for Joinder “where our Decision to Institute has been used as a roadmap to
`
`Case No. IPR2016-00728
`Patent 7,525,484
`
`
`remedy deficiencies in an earlier petition.”)
`
`The Board observed that permitting challengers to use a second petition to
`
`correct defects from an earlier petition would improperly enable a petitioner to
`
`circumvent an earlier Board ruling. Butamax Advanced v. Gevo, IPR2014-00581
`
`Paper 8 at 10, 13 (Oct. 14, 2014) (second petition “is effectively an attempt to
`
`request rehearing of a prior decision” and improperly seeks to “use our prior
`
`decision as a roadmap to remedy [petitioner’s] prior, deficient challenge”). And it
`
`would remove incentives for petitioners to thoroughly address each claim
`
`limitation in a first petition. ZTE Corp. v. Contentguard Holdings, Inc., IPR2013-
`
`00454 Paper 12 at 5-6 (“The Board is concerned about encouraging, unnecessarily,
`
`the filing of petitions which are partially inadequate.”); see also Conopco, Inc. dba
`
`Unilever v. The Procter & Gamble Company, IPR2014-00506, Paper 25 at 4-5
`
`(March 20, 2015) (Petitioners’ approach “would allow petitioners to file ‘follow-
`
`on’ second petitions in order to ‘correct deficiencies noted’ by the Board in
`
`decisions that deny a first petition. … That approach would allow petitioners to
`
`[file] serial petitions, using our decisions on institution as a roadmap, until a
`
`ground is advanced that results in review—a practice that would tax Board
`
`resources, and force patent owners to defend multiple attacks.”)
`
`11
`
`
`

`
`When the second petition expressly acknowledges that its intention is to
`
`Case No. IPR2016-00728
`Patent 7,525,484
`
`
`overcome the defects in the first petition, this is a strong and obvious sign that the
`
`second-try petition improperly seeks a second bite of the apple using the Board’s
`
`earlier ruling as a roadmap. Butamax, IPR2014-00581 Paper 8 at 12 (“More
`
`significantly, we observe that the obviousness grounds asserted in the present
`
`Petition are expressly intended to ‘squarely address[] the alleged deficiencies
`
`identified by the Board’ in our Decision in the 539 IPR.” (quoting petition)).
`
`The single ground Petitioners present in this second-try Petition attempts to
`
`use the Board’s prior Decision to correct deficiencies identified by the Board.
`
`Petitioners expressly acknowledge that their new Petition is designed to correct
`
`deficiencies identified in the Board’s ruling on their prior IPR2015-1708 Petition.
`
`The Board’s previous decision not to institute review of this claim
`was based solely on a limitation from Claim Element 25.5 …The
`analysis below for Claim Element 25.5 explains how that limitation is
`indeed satisfied by the Loomis-Wortham combination.
`
`Pet. at 42;
`
`[Petitioners’ second Petition] provides further clarification on how the
`Loomis-Wortham combination satisfies the claim limitations relied on
`in the Board’s prior decision not to institute review of this claim.
`Pet. at 9.
`
`12
`
`
`

`
`Petitioners acknowledge that their current second-try Petition “is effectively
`
`Case No. IPR2016-00728
`Patent 7,525,484
`
`
`an attempt to request rehearing of a prior decision” seeking “‘second bites at the
`
`apple,’ which use our prior decision as a roadmap to remedy [Petitioners’] prior,
`
`deficient challenge[s]” (Butamax, IPR2014-00581 Paper 8 at 10, 12-13):
`
`
`
`Pet. 2. Petitioners do not assert that the Board misapprehended or overlooked
`
`anything when the Board ruled on their prior IPR2015-1708 Petition (which is why
`
`they did not file a motion for reconsideration). Rather, Petitioners implicitly
`
`concede that it was Petitioners themselves that overlooked the need to adequately
`
`address each limitation in their IPR2015-1708 Petition; and they seek a second
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`chance to do so in this Petition.
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`Petitioners’ second-try petition improperly “seeks to revive and augment
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`challenges that were rejected in the [] proceeding[s], [a]rmed with the Board’s
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`guidance as to the flaws in the [prior petitions].” Conopco, Inc. dba Unilever v.
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`The Procter & Gamble Company, IPR2014-00506, Paper 17 at 8. Accordingly,
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`this second-try Petition should be denied because “the present Petition is directed
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`at addressing shortcomings in the [‘1708] Petition that we identified in the [‘1708]
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`Case No. IPR2016-00728
`Patent 7,525,484
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`Institution Decision.” Microsoft, IPR2015-01054, Paper 10 at 16; see Samsung
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`Electronics Co. Ltd. et al. v. Affinity Labs of Texas, LLC,IPR2015-00820, Paper 12
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`at 4 (May 15, 2015) (“This appears … to be a case where Petitioner[s] seek to use
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`our Decision to Institute … as a guide to remedy deficiencies in the earlier filed
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`petition, i.e., a ‘second bite at the apple.’”); see, also Microsoft Corp. v. Enfish,
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`LLC., IPR2014-00574, Paper 13 at 6 (Sept. 29, 2014) (“In essence, Microsoft seeks
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`a rehearing of that decision.”)
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`This factor weighs heavily in favor of denying the Petition.
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`Factors 2 and 3: This second-try Petition should be denied because it
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`
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`presents the same art and arguments that Petitioners presented in their prior
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`Petition.
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`
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`The second and third factors that the Board considers when considering
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`whether to exercise its discretion to institute a second-try petition challenging the
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`same patent are whether a petition includes the same or substantially the same art
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`and arguments that were previously presented. 35 U.S.C. § 325(d) provides:
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`In determining whether to institute or order a proceeding … the
`Director may take into account whether, and reject the petition or
`request because, the same or substantially the same prior art or
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`arguments previously were presented to the Office.
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`Case No. IPR2016-00728
`Patent 7,525,484
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`“One factor the Board may take into account when exercising that discretion is
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`whether ‘the same or substantially the same prior art or arguments previously were
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`presented to the Office.’” Conopco, Inc. dba Unilever v. The Proctor & Gamble
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`Company, IPR2014-00628, Paper 21 at 5 (Oct. 20, 2014) (quoting 35 U.S.C. §
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`325(d)).
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`
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`Asserting references and arguments that were previously presented
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`unsuccessfully is a strong signal that a petitioner is improperly seeking “second
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`bites at the apple.” Butamax, IPR2014-00581, Paper 8 at 12-13. Accordingly, the
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`Board regularly uses its discretion to deny a second-filed petition if it includes
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`overlapping art and arguments:
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` “[W]e reject the Petition … based on our exercise of discretion under
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`35 U.S.C. § 325(d) because the ‘same or substantially the same prior
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`art or arguments previously were presented to the Office.’”
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`Medtronic Inc. v. Robert Bosch Healthcare Systems, Inc., IPR2014-
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`00436, Paper 17 at 3 (June 19, 2014) (quoting 35 U.S.C. § 325(d));
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` “exercising our discretion under 35 U.S.C. § 325(d) we deny the
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`petition … because these grounds are based upon substantially the
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`same prior art and arguments.” SAS Institute, Inc. v. ComplementSoft,
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`LLC, IPR2013-00581, Paper 15 at 4 (Dec. 30, 2013);
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`Case No. IPR2016-00728
`Patent 7,525,484
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` “The same … arguments substantially the same as Petitioner’s current
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`contention … were presented previously to the Office …. Based on
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`these facts, we conclude that the same prior art and substantially the
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`same arguments were presented to the Office previously. We exercise
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`our discretion and deny the Petition under 35 U.S.C. § 325(d).” Prism
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`Pharma v. Choongwae Pharma Corp., IPR2014-00315, Paper 14 at
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`12-13 (July 8, 2014);
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`see also Conopco, Inc. dba Unilever v. The Proctor & Gamble Company,
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`IPR2014-00506, Paper 17 at 6-8; Conopco, Inc. dba Unilever v. The Proctor &
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`Gamble Company, IPR2014-00628, Paper 21 at 6 (Oct. 20, 2014); ZTE Corp. v.
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`Contentguard Holdings, Inc., IPR2013-00454 Paper 12 at 7-8; Microsoft Corp. v.
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`Surfast, Inc., IPR2014-00271, Paper 20 at 7-8 (June 13, 2014) (denying motion for
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`the joinder: “the Petition does not identify any new grounds of unpatentability.
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`…Instead, it reasserts two grounds of unpatentability previously asserted in
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`IPR2013-00292.”)
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`
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`The single ground asserted in the current Petition (claim 25 is obvious over
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`Loomis and Wortham) is based on the same art and arguments that Petitioners
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`previously asserted in their ‘1708 Petition:
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` “This Petition involves …the same prior art combination that was presented
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`in the instituted petitions for IPR2015-01708 and IPR2015-01711.” Pet. at
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`9.
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` “The grounds of invalidity in the New ’484 Petition are the same as those
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`advanced in IPR2015-01708 (i.e., that Claim 25 is obvious under 35 U.S.C.
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`§ 103 over Loomis in view of Wortham).”). Motion for Joinder (Paper 3) at
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`10.
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`Accordingly, the Board should not exercise its discretion and institute this
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`proceeding “because the ‘same or substantially the same prior art or arguments
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`previously were presented to the Office.’” Medtronic v. Robert Bosch Healthcare
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`Systems, Inc., IPR2014-00436, Paper 17 at 3 (June 19, 2014) (quoting 35 U.S.C. §
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`325(d)); see also ATopTech, Inc. v. Synopsys, Inc., IPR2015-00760, Paper 15 (July
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`21, 2015) (denying Motion for Joinder where “Petitioner is requesting a second
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`chance to address the unpatentability of claims 5 and 6 over the same prior art at
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`issue in the First Petition.”)
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`
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`In an Informative Opinion, the Board denied a second petition where the
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`same language was used to describe (1) a first reference in a first petition, and (2) a
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`second reference in a second petition: “The instant petition describes [the second
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`reference] using exactly the same language.” Intelligent Bio-Systems, IPR2013-
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`00324, Paper 19 at 6. Here, the case is even stronger for denying this Petition
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`where the exact same language is used to describe the exact same reference in the
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`Case No. IPR2016-00728
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`subsequent petition. Compare, e.g., Petition from IPR2015-01708 at 43 with
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`second-try Petition at 43 which both include the following identical language:
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`Loomis’ location system provides a process for determining and
`outputting a resulting location estimate for a hybrid LD device (i.e.,
`“mobile station M”) carried by a mobile user “whose present location
`coordinates (x, y, z) are as yet undetermined” (i.e., “a method for
`estimating . . . an unknown terrestrial location (LM) for M”) using
`multiple location techniques. (Ex. 1008 (Loomis) at 9:27-30, Abs.,
`4:39-5:13, 11:49-13:4.).
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`
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`Accordingly, because “the instant Petition raises, at minimum, ‘substantially
`
`the same ... arguments’ that ‘previously were presented to the Office’ in the [first]
`
`Petition,” this factor weighs in favor of denying the Petition. Conopco, Inc. dba
`
`Unilever v. The Proctor & Gamble Company, IPR2014-00628, Paper 21 at 6 (Oct.
`
`20, 2014) (quoting 35 U.S.C. § 325(d)); ZTE Corp. v. Contentguard Holdings Inc.,
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`IPR2013-00454, Paper 12 at 7 (Sept. 25, 2013) (Informative Opinion) (denying
`
`petition because “the petition in this case presents many of the same issues
`
`previously presented in the petition for IPR2013-00134.”); Conopco, Inc. dba
`
`Unilever v. The Procter & Gamble Company, IPR2014-00506, Paper 17 at 8 (July
`
`7, 2014) (“Given that we already have considered the same or substantially the
`
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`same prior art or arguments in connection with the challenged claims, we deny the
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`Case No. IPR2016-00728
`Patent 7,525,484
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`request for an inter partes review under § 325(d).”).
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`Factor 4: This second-try Petition should be denied because Petitioners do
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`not provide persuasive justifications for filing their second-try Petition.
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`
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`The Fourth factor that the Board considers when deciding whether to
`
`exercise its discretion to institute a second-try petition challenging the same patent
`
`is whether a petitioner provides persuasive justifications for filing its second-try
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`petition.
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`
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`As explained above, “[a]llowing similar, serial challenges to the same
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`patent, by the same petitioner, risks harassment of patent owners and frustration of
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`Congress’s intent in enacting