Trials@uspto.gov
`Tel: 571.272.7822
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`Paper 31
`Entered: February 12, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`IMAGE PROCESSING TECHNOLOGIES LLC,
`Patent Owner.
`____________
`Case IPR2017-00336
`Patent 6,959,293 B2
`____________
`
`
`
`
`Before JONI Y. CHANG, MICHAEL R. ZECHER, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`

`

`IPR2017-00336
`Patent 6,959,293 B2
`On February 6, 2018, a conference call was held between respective
`counsel for the parties and Judges Chang, Zecher, and Kaiser. The purpose
`of the conference call was to discuss Patent Owner’s request for leave to file
`a motion to terminate ex parte reexamination Control No. 90/014,056
`(“the ’056 Reexamination”), which involves only claim 1 of U.S. Patent
`No. 6,959,293 B2 (Ex. 1001, “the ’293 patent”). Patent Owner also
`requested an expedited briefing schedule if we authorize the motion. For the
`reasons stated below, Patent Owner’s requests are denied.
`During the conference call, Patent Owner urged us to exercise our
`discretion under 35 U.S.C. § 315(d)1 to terminate the ’056 Reexamination.
`Patent Owner argued that the ’056 Reexamination is Petitioner’s third
`challenge to the ’293 patent, using our Institution Decisions in the instant
`proceeding and Case IPR2017-01189 (“the ’189 IPR”) as a “roadmap” to
`bolster previously unsuccessful arguments. In support of its argument,
`Patent Owner cites two Board decisions, Ariosa and General Plastic. Ariosa
`Diagnostics, Inc. v. Illumina, Inc., Case IPR2014-01093, slip op. at 13−16
`(PTAB May 24, 2016) (Paper 81) (The panel exercised its discretion to
`terminate three reexaminations filed by a party after entering a final written
`decision against that same party in one of the IPR proceedings that involved
`the same claims.); General Plastic Indus. Co. v. Canon Kabushiki Kaisha,
`Case IPR2016-01357, slip op. at 15−19 (PTAB Sept. 6, 2017) (Paper 19)
`
`1 Under 35 U.S.C. § 315(d), “[n]otwithstanding sections 135(a), 251, and
`252, and chapter 30, during the pendency of an inter partes review, if
`another proceeding or matter involving the patent is before the Office, the
`Director may determine the manner in which the inter partes review or other
`proceeding or matter may proceed, including providing for stay, transfer,
`consolidation, or termination of any such matter or proceeding.” 35 U.S.C.
`§ 315(d) (emphases added).
`
`2
`
`

`

`IPR2017-00336
`Patent 6,959,293 B2
`(precedential) (The panel exercised its discretion under 35 U.S.C. § 314(a)
`to deny the follow-on petitions filed by the same petitioner that challenged
`the same claims as those involved in the first set of petitions.).
`Petitioner countered that its Petitions and Request for Reexamination
`do not amount to harassment of patent owner. We agree with Petitioner.
`Unlike Ariosa and General Plastic each of which involves the same
`claims in multiple proceedings, the two IPR Petitions filed by Petitioner here
`involve different claims. Indeed, the instant Petition challenges claims 1, 18,
`19, 22, and 29, whereas the ’189 IPR involved claims 2−17, 20, 21, and
`23−28. Petitioner explained that the challenged claims of the instant Petition
`are those initially asserted by Patent Owner in the related District Court
`proceeding,2 whereas the challenged claims in the ’189 IPR are those
`subsequently asserted by Patent Owner in amended infringement
`contentions.
`More importantly, unlike the particular facts in Ariosa and General
`Plastic, the ’189 IPR Petition clearly was not an attempt to perfect the
`Petition filed in the instant proceeding. Notably, Petitioner filed the ’189
`IPR Petition on March 15, 2017, before we entered the Institution Decision
`on May 25, 2017, in the instant proceeding. In contrast, the follow-on
`petitions in General Plastic were filed after the decisions denying the first
`set of petitions. Therefore, Petitioner here did not have the benefit of our
`Institution Decision at the time of filing the ’189 IPR Petition, much less the
`advantage of the Patent Owner’s response or the cross-examination of Patent
`Owner’s expert, as in Ariosa.
`
`
`2 The ’293 patent is involved in Image Processing Techs., LLC v. Samsung
`Elecs. Co., Case No. 2:16-cv-00505-JRG (E.D. Tex.). Paper 4, 2.
`
`3
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`

`

`IPR2017-00336
`Patent 6,959,293 B2
`Additionally, in Ariosa, the panel terminated the three reexaminations
`after the entry of a final written decision under 35 U.S.C. § 318(a) which
`concluded that the petitioner had failed to demonstrate that the same
`challenged claims are unpatentable; under 35 U.S.C. § 315(e), the petitioner
`“may not request or maintain a proceeding before the Office with respect to
`that claim on any ground that the petitioner raised or reasonably could have
`raised during that inter partes review.” Here, in contrast, we have not yet
`entered a final written decision in the instant proceeding, and we denied
`institution in the ’189 IPR.
`Futhermore, the Request filed in the ’056 Reexamination challenges
`only claim 1 based on different grounds—e.g., asserting claim 1 is
`unpatentable over Hirota3 alone. Ex. 3001, 3, 14−15.4 Hirota was not
`asserted in either the instant proceeding or the ’189 IPR. Petitioner also
`explained that the Request for Reexamination did not use our Institution
`Decision as a “roadmap,” but merely adopted our claim constructions set
`forth in the Institution Decisions, using the broadest reasonable
`interpretation standard as in both IPR proceedings. Moreover, we did not
`institute the instant proceeding as to claim 1, and Petitioner did not challenge
`claim 1 in the ’189 IPR. Therefore, even if we had entered a final written
`decision in either IPR proceeding, Petitioner would not have been precluded
`from maintaining the ’056 Reexamination with respect to claim 1 under 35
`U.S.C. § 315(e)(1), as in Ariosa.
`
`
`3 U.S. Patent No. 6,118,895 issued on September 12, 2000.
`4 Decision Ordering Reexamination entered on January 26, 2018, in the ’056
`Reexamination. Our citations refer to the original page numbers on the
`upper right corner.
`
`4
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`

`

`IPR2017-00336
`Patent 6,959,293 B2
`Upon consideration of the totality of the circumstances, we decline to
`exercise our discretion to authorize Patent Owner to file a motion to
`terminate the ’056 Reexamination. Consequently, no expedited briefing
`schedule regarding this issue is authorized.
`
`
`ORDER
`
`In view of the foregoing, it is
`ORDERED that Patent Owner’s request for authorization to file a
`motion to terminate the ’056 Reexamination is denied; and
`FURTHER ORDERED that Patent Owner’s request for an expedited
`briefing schedule for such a motion is denied.
`
`5
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`

`

`IPR2017-00336
`Patent 6,959,293 B2
`
`
`
`For PETITIONER:
`
`Nicholas Whilt
`John Kappos
`Marc Pensabene
`Brian Cook
`Clarence Rowland
`O’MELVENY & MYERS LLP
`nwhilt@omm.com
`jkappos@omm.com
`mpensabene@omm.com
`bcook@omm.com
`crowland@omm.com
`iptsamsungomm@omm.com
`
`
`For PATENT OWNER:
`
`Chris Coulson
`Michael Zachary
`Mark Chapman
`Rose Cordero Prey
`George Badenoch
`ANDREWS KURTH KENYON LLP
`chriscoulson@andrewskurthkenyon.com
`michaelzachary@andrewskurthkenyon.com
`markchapman@andrewskurthkenyon.com
`roseprey@andrewskurthkenyon.com
`GeorgeBadenoch@andrewskurthkenyon.com
`
`
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`6
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