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`IPR2018-01204
`PATENT NO. 7,489,786
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BMW OF NORTH AMERICA, LLC,
`
`Petitioner,
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`
`Patent Owner.
`
`Patent No. 7,489,786
`Issue Date: December 11, 2002
`Title: AUDIO DEVICE INTEGRATION SYSTEM
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Case No. IPR2018-01204
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`IPR2018-01204
`PATENT NO. 7,489,786
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`I.
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`II.
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`TABLE OF CONTENTS
`BACKGROUND ............................................................................................. 1
`A.
`Prior Unsuccessful Challenges .............................................................. 1
`B.
`Asserted Prior Art .................................................................................. 2
`C.
`Effective Filing Date ............................................................................. 3
`D.
`Level of Ordinary Skill in the Art ......................................................... 3
`E.
`Claim Construction................................................................................ 3
`THE CHALLENGED CLAIMS ARE NOT OBVIOUS IN VIEW OF
`THE CITED REFERENCES........................................................................... 6
`A.
`The Obviousness Standard .................................................................... 6
`B.
`The Cited References Do Not Teach or Disclose an “Interface”
`That Is Separate From the Car Stereo As Required By the
`Independent Claim ................................................................................ 7
`The Cited References Do Not Teach or Disclose a “Device
`Presence Signal” As Required By the Independent Claim ................. 11
`The Cited References Do Not Teach or Disclose a “Second Pre-
`Programmed Means for Remotely Controlling the Portable
`Audio Device Using the Car Stereo … By Processing the
`Control Command Into a Formatted Command Compatible
`With the Portable Audio Device” As Required By the
`Independent Claim .............................................................................. 14
`III. THE GENERAL PLASTIC FACTORS FAVOR DENIAL OF
`INSTITUTION .............................................................................................. 17
`IV. CONCLUSION .............................................................................................. 21
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`C.
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`D.
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`i
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`IPR2018-01204
`PATENT NO. 7,489,786
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`TABLE OF AUTHORITIES
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`Cases
`C.B. Distributors, Inc. v. Fontem Holdings 1 B.V.,
`IPR2013-00387, Paper 43 (PTAB Dec. 24, 2014) ............................................... 7
`General Plastic Industrial Co. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) ......................................... 17, 19
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................................. 6
`In re Hedges,
`783 F.2d 1038 (Fed. Cir. 1986) ............................................................................ 7
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`IPR2013-00324, Paper 19 (PTAB Nov. 21, 2013) ............................................. 17
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) .............................................................................. 7
`Netapp, Inc. v. Realtime Data LLC,
`IPR2017-01195, Paper 9 (PTAB Oct. 12, 2017) .......................................... 17, 19
`Toyota Motor Corp. v. Blitzsafe Texas, LLC,
`IPR2016-00421, Paper 13 (PTAB July 7, 2016) .................................................. 4
`
`Statutes
`35 U.S.C. § 301 .......................................................................................................... 4
`35 U.S.C. § 314 ........................................................................................................ 17
`35 U.S.C. § 316 ........................................................................................................ 19
`
`Other Authorities
`37 C.F.R. § 42.100 ..................................................................................................... 3
`37 C.F.R. § 42.104 ..................................................................................................... 4
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`ii
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`Exhibit
`2001
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`IPR2018-01204
`PATENT NO. 7,489,786
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`EXHIBIT LIST
`
`Description
`Defendants’ Joint Disclosures Pursuant to P.R. 4-2 in Blitzsafe Texas,
`LLC v. Mitsubishi Electric Corporation, et al., Case No. 2:17-cv-
`00430 (E.D. Tex.), served March 14, 2018
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`iii
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`IPR2018-01204
`PATENT NO. 7,489,786
`Institution should be denied because, as shown herein, Petitioner has failed
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`to demonstrate that the references teach or disclose each of the limitations of the
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`challenged claims.
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`I.
`
`BACKGROUND
`Prior Unsuccessful Challenges
`A.
`Five prior petitions for inter partes review of the ’786 Patent have been
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`filed. The previous petitions all resulted in zero claims cancelled or amended. A
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`brief summary of the previous IPRs is below:1
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`IPR
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`PETITIONER(S)
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`OUTCOME
`
`IPR2016-00421
`
`Toyota Motor Corp.
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`IPR2016-00422
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`IPR2016-01448
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`Volkswagen Group
`of Am., Inc.
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`Institution as to all claims at issue here
`denied (July 7, 2016)2
`
`Institution denied (July 6, 2016)
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`Institution denied (Jan. 13, 2017)
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`
`1 Three additional petitions were filed on June 6, 2018: IPR2018-01203 by Jaguar
`Land Rover Ltd. and Jaguar Land Rover North America, LLC; and IPR2018-
`01211 and IPR2018-01214 by Daimler AG.
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`2 The Board instituted the ’421 Petition only as to claims 44 and 47, which relate to
`“docking stations,” and which are not challenged in the present petition. The ’421
`IPR was terminated due to settlement on February 21, 2017.
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`1
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`IPR
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`PETITIONER(S)
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`IPR2016-01472
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`IPR2016-01477
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`Am. Honda Motor
`Co., Inc.
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`Hyundai Motor Co.
`Ltd., et al.
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`IPR2018-01204
`PATENT NO. 7,489,786
`OUTCOME
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`Institution denied (Feb. 2, 2017)
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`Institution denied (Jan. 27, 2017)
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`B. Asserted Prior Art
`Petitioner now files the two additional petitions against the ’786 Patent. In
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`the present petition, Petitioner asserts that claims 92–94 and 97–98 (collectively,
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`“the Challenged Claims”)3 are obvious in view of:
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`• U.S. Patent Publication No. 2005/0262528 A1 to Cormac Herley, et al.
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`(“Herley,” Ex. 1003);
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`• European Patent Application Publication No. EP 0950570 A2 to Kazuhiro
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`Ido, et al. (“Ido,” Ex. 1005); and
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`• U.S. Patent Publication No. 2002/0196134 to Robert Pierce Lutter, et al.
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`(“Lutter,” Ex. 1008)
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`(collectively, “the Cited References”). Petition at 13. But, as discussed below, the
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`Cited References fail to address the repeated deficiencies of the prior petitions.
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`3 Claims 92 is independent. The remaining Challenged Claims depend from them.
`In IPR2018-01142, filed on the same day, Petitioner alleges that independent
`claims 1, 57, and 86 and other claims dependent thereon are invalid in view of the
`same prior art.
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`2
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`IPR2018-01204
`PATENT NO. 7,489,786
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`C. Effective Filing Date
`Petitioner submits that the Challenged Claims are entitled to an effective
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`filing date “no earlier than December 11, 2002, which is the filing date of the
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`application for the ’786 Patent.” Petition at 13. Patent Owner states that, for the
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`purposes of this proceeding, a determination of the effective filing date is
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`unnecessary and thus does not respond to this characterization of the effective
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`filing date. Patent Owner reserves the right to establish an earlier effective filing
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`date in any district court proceeding or in any other proceeding if necessary.
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`D. Level of Ordinary Skill in the Art
`Petitioner states that the person of ordinary skill in the art (“POSA”) would
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`have “at least a Bachelor’s degree in electrical engineering or equivalent
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`science/engineering degree and at least two years of experience in signal
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`processing and/or electronic system design, or would have at least four years of
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`experience in signal processing and/or electronic system design.” Petition at 6.
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`Patent Owner agrees for the purposes of this proceeding that this level of skill is
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`appropriate.
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`E. Claim Construction
`Because the ’786 Patent is not expired, the broadest reasonable construction
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`of each claim term is applied. 37 C.F.R. § 42.100(b). Petitioner proposes that the
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`Board should apply constructions for three claim terms adopted by the Board in
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`previous IPRs relating to the ’786 Patent: (1) “portable”; (2) “interface”; and
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`3
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`IPR2018-01204
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`PATENT NO. 7,489,786
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`(3) “device presence signal.” Petition at 7; see also IPR2016-00421, Paper 13 at
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`12, 15, 18; IPR2016-00422, Paper 12 at 15; IPR2016-01448, Paper 7 at 13;
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`IPR2016-01472, Paper 7 at 11, 13, 14; IPR2016-01477, Paper 13 at 10. For the
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`purposes of this preliminary response, Patent Owner assumes that the Board will
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`apply its prior constructions.
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`Notwithstanding that Petitioner “adopts the Board’s prior constructions,”
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`Petitioner also suggests that the Board apply different claim constructions
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`purportedly based on claim construction and infringement positions taken by
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`Patent Owner in the district court. See Petition at 7–10. But, Petitioner does not
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`propose alternate claim constructions based on these statements. This is improper
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`under 35 U.S.C. § 301(d) and 37 C.F.R. § 42.104(b)(3).
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`According to Section 301(d):
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`A written statement submitted pursuant to subsection (a)(2), and
`additional information submitted pursuant to subsection (c), shall not
`be considered by the Office for any purpose other than to determine
`the proper meaning of a patent claim in a proceeding that is ordered
`or instituted pursuant to section 304, 314, or 324.
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`35 U.S.C. § 301(d) (emphasis added). Petitioner is required by 37 C.F.R.
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`§ 42.104(b)(3) to identify the constructions that it proposes should be adopted by
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`the Board. Toyota Motor Corp. v. Blitzsafe Texas, LLC, IPR2016-00421, Paper 13
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`at 24 (P.T.A.B., July 7, 2016) (“The ‘construction’ referred to by 37 C.F.R.
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`4
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`IPR2018-01204
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`PATENT NO. 7,489,786
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`§ 42.104(b)(3) is the construction proposed by the Petitioner, one that Petitioner
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`believes is the correct construction under applicable law and should apply in the
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`involved proceeding.”). Since Petitioner does not propose constructions that should
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`be adopted based on Patent Owner’s statements cited under 35 U.S.C. § 301(a)(2),
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`but instead adopts the Board’s prior constructions, Patent Owner’s prior statements
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`are irrelevant to these proceedings and should not be considered by the Board.
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`Additionally, Petitioner “adopts Patent Owner’s proposed constructions”
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`from the district court litigation of six means-plus-function claim terms: (1) “first
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`pre-programmed means for generating a device presence signal …”; (2) “first pre-
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`programmed means for … transmitting the signal to the car stereo to maintain the
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`car stereo in an operational state”; (3) “second pre-programmed means for
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`remotely controlling the portable audio device using the car stereo by receiving a
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`control command from the car stereo in a format incompatible with the portable
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`audio device”; (4) “second pre-programmed means for remotely controlling the
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`portable audio device using the car stereo by … processing the control command
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`into a formatted control command compatible with the portable audio device”;
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`(5) “second pre-programmed means for remotely controlling the portable audio
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`device using the car stereo by … transmitting the formatted control command to
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`the portable audio device for execution thereby”; and (6) “means for transmitting
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`audio from the portable audio device to the car stereo.” See Peittion at 9–12. For
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`5
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`IPR2018-01204
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`PATENT NO. 7,489,786
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`the purposes of this preliminary response, Patent Owner assumes that the Board
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`will apply these constructions.
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`II. THE CHALLENGED CLAIMS ARE NOT OBVIOUS IN VIEW OF
`THE CITED REFERENCES
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`Institution should be denied because Petitioner has not established that the
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`Challenged Claims are obvious in view of the Cited References. In particular, the
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`Petition is deficient because Petitioner has not shown that the Cited References
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`teach or disclose (1) an “interface” that is separate from the car stereo; (2) a
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`“device presence signal”; and a “second pre-programmed means for remotely
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`controlling the portable audio device using the car stereo … by processing the
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`control command into a formatted command compatible with the portable audio
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`device,” each of which is required by independent claim 92.4
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`A. The Obviousness Standard
`Obviousness is determined on the basis of underlying factual determinations,
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`including: (1) the scope and content of the prior art, (2) any differences between
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`the claimed subject matter and the prior art, (3) the level of skill in the art, and
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`(4) where in evidence, so-called secondary considerations. Graham v. John Deere
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`4 Patent Owner reserves the right to present additional argument and evidence that
`the Cited References fail to teach or disclose additional limitations of each of the
`Challenged Claims and that Petitioner has failed to show that a POSA would have
`been motivated to combine the references with a reasonable expectation of success.
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`6
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`IPR2018-01204
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`PATENT NO. 7,489,786
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`Co., 383 U.S. 1, 17–18 (1966). However, a conclusion of obviousness “cannot be
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`sustained with mere conclusory statements; instead, there must be some articulated
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`reasoning with some rational underpinning to support the legal conclusion of
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`obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In determining
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`obviousness, the references must be considered as a whole; picking and choosing
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`from a reference only the favorable parts and ignoring the rest is prohibited. In re
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`Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986).
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`Here, the Petition fails because it fails to explain how the references, alone
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`or in combination, teach each element of each claim. See C.B. Distributors, Inc. v.
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`Fontem Holdings 1 B.V., IPR2013-00387, Paper 43 at 30–31 (PTAB Dec. 24,
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`2014).
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`B.
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`The Cited References Do Not Teach or Disclose an “Interface”
`That Is Separate From the Car Stereo As Required By the
`Independent Claim
`
`Independent claim 92 recites “a car stereo,” “a portable audio device
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`external to the car stereo,” and “an interface connected between the car stereo
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`and the after-market audio device.” ’786 Patent at 29:12–15 (emphasis added).
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`As Petitioner agrees, an “interface” is “a physical unit that connects one
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`device to another and that has a functional and structural identify separate from
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`that of both connected devices.” Petition at 7. But Petitioner has failed to identify
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`an interface that is functionally and structurally separate from a car stereo, and has
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`7
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`IPR2018-01204
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`PATENT NO. 7,489,786
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`failed to identify a first electrical connector between the interface and the car
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`stereo. Instead, Petitioner attempts to artificially divide the car stereo of Herley
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`into multiple components, even though nothing in Herley describes the
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`components as being functionally or structurally separate.
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`Figure 1 of Herley, reproduced below, depicts a car stereo, 100, connected to
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`an external media source 116.
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`Herley at Figure 1
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`
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`Importantly, this figure does not depict an electrical wiring diagram or the
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`like of Herley. Rather, it depicts “a block diagram of a mobile audio system in
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`accordance with the present invention.” Herley at ¶ 14. Herley describes that its
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`8
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`IPR2018-01204
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`PATENT NO. 7,489,786
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`“mobile audio system 100” (i.e., its car stereo), id. at ¶ 39, includes “a user
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`interface 102, a controller 104, a tuner 106, a storage component 108, a high speed
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`interface 110, a media database 112 and a sound system 114,” id. at ¶ 40. It also
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`describes that an “external media source 116” can be intermittently connected to
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`the system through the “high speed interface 110.” Id. at ¶ 42; see also id. at ¶ 43
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`(“It is to be appreciated that the external media source 116 can be detached and
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`removed from the system 100, swapped with another media source, be reattached
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`to the system, and the like and still be in accordance with the present invention.”).
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`Petitioner, however, attempts to manufacture separate structural components
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`out of Herley’s Figure 1 by arbitrarily drawing colored boxes around certain of
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`them. For example, Petitioner strangely identifies two of the boxes of Herley’s
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`Figure 1 as corresponding to the claimed “car stereo” even though they are on
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`opposite side of the figure. In particular, as shown in the annotated version of
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`Figure 1 of Herley from the Petition reproduced below, Petitioner identifies user
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`interface 102 (at the top-left of the figure) and sound system 114 (at the bottom
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`right) as the car stereo, even though there are numerous other system blocks
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`located between them and even though nothing in Herley suggests that these two
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`blocks should together be treated separately from the remainder of the blocks. See
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`also Petition at 18–20 (claim 92[2]): “User interface 102 and sound system 114
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`comprise a car stereo ….”).
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`9
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`IPR2018-01204
`PATENT NO. 7,489,786
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`Petition at 22
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`
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`Petitioner then identifies two other of the boxes of Herley’s Figure 1 as
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`corresponding to the claimed “interface.” In particular, as shown in the annotated
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`version of Figure 1 of Herley from the Petition reproduced above, Petitioner
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`identifies controller 104 and high speed interface 110 as the interface. See also
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`Petition at 21–23 (claim 1[5]: “Controller 104 and high speed interface 110
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`together comprise an ‘interface,’ ….”). But interface 102 and sound system 114
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`(identified by Petitioner as the car stereo) and controller 104 and high speed
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`interface 110 (identified by Petitioner as the interface) are, in fact, part of the same
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`10
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`IPR2018-01204
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`PATENT NO. 7,489,786
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`mobile audio system 100 (along with other boxes), and Petitioner does not provide
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`any explanation for why they should be treated as functionally and structurally
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`separate.
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`Accordingly, Petitioner has failed to meet its burden to demonstrate that the
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`Cited References teach an “interface” that is a physical unit with a structural and
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`functional identity separate from the car stereo, as it asserts.
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`C. The Cited References Do Not Teach or Disclose a “Device
`Presence Signal” As Required By the Independent Claim
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`Independent claim 92 recites “the interface including a microcontroller pre-
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`programmed to execute: first pre-programmed means for generating a device
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`presence signal and transmitting the signal to the car stereo to maintain the car
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`stereo in an operational state ….” ’786 Patent at 29:15–20 (emphasis added).5
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`Petitioner alleges that this limitation is rendered obvious by Herley in view
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`of Ido and Lutter. See Petition at 23–31 (claim element 92[5]). In particular,
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`Petitioner relies on an icon displayed on the GUI 30 of Lutter as disclosing this
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`limitation. See Petition at 25 (“Audio device manager 14 provides a signal to
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`display detected audio devices on GUI 30, by causing GUI 30 to display icons
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`representing the detected audio devices. The icons remain displayed on GUI 30
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`5 Dependent claim 6 similarly recites “said interface generates a device presence
`signal for maintaining the car stereo in a state responsive to processed data and
`audio signals.” Id. at 22:13–15.
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`11
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`IPR2018-01204
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`PATENT NO. 7,489,786
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`based on the detection of the audio devices, and therefore the GUI 30 (part of the
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`car stereo) is maintained ‘in a state responsive to the processed data and audio
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`signals.’” (citations omitted)).
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`Petitioner, however, admits that displayed icons indicating a connected USB
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`device are not a “device presence signal” as described by the ’786 Patent. See
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`Petition at 8 (alleging (incorrectly) that “Patent Owner interprets displayed icons
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`indicating a connected USB device as comprising a ‘device presence signal’ even
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`though this scope is not described in the ’786 Patent” (citations omitted, emphasis
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`added)).
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`Rather, Petitioner attempts to argue that “Lutter’s disclosure is consistent
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`with Patent Owner’s interpretation of” the limitation. Petition at 27. But Patent
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`Owner never advanced any such interpretation of this limitation, which is
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`inconsistent with the claim construction and infringement contention positions
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`taken by Patent Owner in district court. First, in the district court litigation, Patent
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`Owner proposed construing “device presence signal” to mean “a continuously
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`transmitted signal indicating an audio device is present.” Ex. 1009 at 2. An icon
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`displayed on a GUI is not, under any interpretation, “a continuously transmitted
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`signal.” Second, Patent Owner’s infringement contentions did not contend that an
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`icon displayed on a GUI satisfied this limitation. Rather, Patent Owner’s
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`infringement contentions, which were “preliminary in nature” and made prior to
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`12
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`IPR2018-01204
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`PATENT NO. 7,489,786
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`any review of documentation or source code produced by Petitioner showing the
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`actual operation of the accused instrumentalities, see Ex. 1013 at 1, explained that
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`the presence of “a USB graphic … indicating that a compatible device is connected
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`and recognized” provided evidence that a device presence signal was generated, id.
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`at 96. The contentions did not assert that the graphic itself satisfied the limitation.
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`Rather, the contentions went on to explain:
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`The device presence signal is generated when at least the
`microcontroller of the interface (and potentially other microcontrollers
`on one or more circuit boards of the device integration system)
`executes pre-programmed code stored in onboard flash and/or other
`memory modules (such as flash memory modules), and/or within
`firmware elsewhere in the interface (such as within the
`microcontroller itself).
`The specific manner in which the interface implements the device
`presence signal of this claim limitation may be further ascertainable
`by reviewing the source code of the accused BMW infotainment
`systems.”
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`Id. at 96. Thus, contrary to Petitioner, Patent Owner does not “agree[] that
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`displaying a graphic indicating that an audio device is connected, such as the
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`displayed icons in Lutter for detected audio source devices connected via wires to
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`the vehicle, comprises the generation of a ‘device presence signal for maintaining
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`the car stereo in an operational state.’” See Petition at 27.
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`13
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`IPR2018-01204
`PATENT NO. 7,489,786
`Petitioner does not make any attempt to show that Lutter (or either of its
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`other Cited References) actually discloses this limitation as Petitioner has proposed
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`it be construed (“a signal indicating that an audio device (claim 57) or video device
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`(claim 86) or portable audio device (claim 92), other than the car stereo, is
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`connected to the interface,” see Petition at 7). Petitioner does not point to any
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`disclosure of “a signal,” let alone one that “indicat[es] that [a] device, other than
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`the car stereo, is connected to the interface.” Similarly, Petitioner does not point to
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`any disclosure of any pre-programmed means for generating such a signal, as
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`required by the claims. Even to the extent that an icon on a GUI could satisfy the
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`“device presence signal” portion of this limitation, Petitioner has failed to show (or
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`even allege) that the signal is generated as a result of a pre-programmed means.
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`Accordingly, Petitioner has failed to meet its burden to demonstrate that the
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`Cited References teach a “device presence signal,” as it asserts.
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`D. The Cited References Do Not Teach or Disclose a “Second
`Pre-Programmed Means for Remotely Controlling the
`Portable Audio Device Using the Car Stereo … By
`Processing the Control Command Into a Formatted
`Command Compatible With the Portable Audio Device” As
`Required By the Independent Claim
`
`Independent claim 92 recites “the interface including a microcontroller pre-
`
`programmed to execute: … second pre-programmed means for remotely
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`controlling the portable audio device using the car stereo by … processing the
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`14
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`IPR2018-01204
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`PATENT NO. 7,489,786
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`control command into a formatted control command compatible with the
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`portable audio device ….” ’786 Patent at 15–27 (emphasis added).
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`Petitioner alleges that this limitation is rendered obvious by Herely in view
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`of Ido. See Petition at 38 (claim element 92[6][ii]). But, while Petitioner has
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`alleged that this claim limitation is a means-plus-function term and that the
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`corresponding structure in the specification of the ’786 Patent is “the code or
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`algorithm illustrated in Tables 1 and 2 of the ’786 patent,” see Petition at 10–11,
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`Petitioner does not point to any structure in either Herley or Ido that corresponds to
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`the algorithms in Table 1 and Table 2 of the ’786 Patent or otherwise performs the
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`reformatting of commands. Instead, Petitioner merely states, “Patent Owner asserts
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`that this element is met under the proposed construction by a microcontroller of an
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`interface programmed to format received commands into USB format for
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`transmitting the commands to the portable device.” Id. at 38 (citing Ex. 1013 at
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`74). In doing so, Petitioner cites and relies on Patent Owner’s district court
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`infringement contentions (Ex. 1013). But Petitioner misreads Patent Owner’s
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`infringement contentions. While Petitioner does not even attempt to identify any
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`structure in the Cited References corresponding to the algorithms of Tables 1 and 2
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`of the ’786 Patent, Patent Owner’s infringement contentions (which were served
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`prior to the production and inspection of any source code, see Ex. 1013 at 1) did.
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`The infringement contentions stated:
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`15
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`IPR2018-01204
`PATENT NO. 7,489,786
`… At least a microcontroller of the interface (and potentially other
`microcontrollers on one or more circuit boards of the device
`integration system) executes pre-programmed code to perform at least
`a portion of these functions. It is believed that this code is stored in
`onboard flash and/or other memory modules (such as flash memory
`modules), and/or is contrained within firmware elsewhere in the
`interface (such as within the microcontroller itself).
`
`Plaintiff will supplement its contentions, if necessary, after
`inspection of relevant source code.
`
`Ex. 1013 at 74. By contrast, Petitioner does not even assert that either Herley or
`
`Ido discloses any code or algorithm corresponding to this limitation.
`
`Accordingly, Petitioner has failed to meet its burden to demonstrate that the
`
`Cited References teach a “second pre-programmed means for remotely controlling
`
`the portable audio device using the car stereo … by processing the control
`
`command into a formatted command compatible with the portable audio device,”
`
`as it asserts.
`
`*
`
`*
`
`*
`
`For these reasons, the Cited References do not teach or disclose each of the
`
`limitations of the Challenged Claims, and inter partes review should not be
`
`instituted.
`
`16
`
`
`
`IPR2018-01204
`
`PATENT NO. 7,489,786
`
`III. THE GENERAL PLASTIC FACTORS FAVOR DENIAL OF
`INSTITUTION
`
`After five previous petitions have resulted in zero claims cancelled or
`
`amended, institution of this petition should be denied. Institution of this petition—
`
`after years have been spent challenging the patentability of this patent—would
`
`significantly prejudice Patent Owner and force the Board to expend resources
`
`addressing recycled issues.
`
`The “Director may not authorize an inter partes review to be instituted
`
`unless … the information presented in the petition … shows that there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least 1 of
`
`the claims challenged in the petition.” 35 U.S.C. § 314(a). Because the Director
`
`(and by extension the Board) may not institute review unless certain conditions are
`
`met, institution is discretionary. Intelligent Bio-Systems, Inc. v. Illumina
`
`Cambridge Ltd., IPR2013-00324, Paper 19 at 4 (PTAB Nov. 21, 2013). In General
`
`Plastic Industrial Co. v. Canon Kabushiki Kaisha, the Board set forth a non-
`
`exclusive list of seven factors that bear on the issue of whether the Board should
`
`invoke its discretion to deny institution. IPR2016-01357, Paper 19 at 9–10 (PTAB
`
`Sept. 6, 2017) (precedential). The Board has previously declined to institute
`
`follow-on petitions, even when the follow-on petition is filed by a party different
`
`than the party involved in the previous petitions. Netapp, Inc. v. Realtime Data
`
`LLC, IPR2017-01195, Paper 9 at 10 (PTAB Oct. 12, 2017) (“[W]e find that the
`
`17
`
`
`
`IPR2018-01204
`
`PATENT NO. 7,489,786
`
`General Plastic factors provide a useful framework for analyzing the facts and
`
`circumstances present in this case, in which a different petitioner filed a petition
`
`challenging a patent that had been challenged already by previous petitions.”).
`
`The seven General Plastics factors are:
`
`1.
`
`whether the same petitioner previously filed a petition directed to the same
`
`claims of the same patent;
`
`2.
`
`whether at the time of filing the first petition the petitioner knew of the prior
`
`art asserted in the second petition or should have known of it;
`
`3.
`
`whether at the time of filing of the second petition the petitioner already
`
`received the patent owner’s preliminary response to the first petition or
`
`received the Board’s decision on whether to institute review in the first
`
`petition;
`
`4.
`
`the length of time that elapsed between the time the petitioner learned of the
`
`prior art asserted in the second petition and the filing of the second petition;
`
`5.
`
`whether the petitioner provides adequate explanation for the time elapsed
`
`between the filings of multiple petitions directed to the same claims of the
`
`same patent;
`
`6.
`
`the finite resources of the Board; and
`
`18
`
`
`
`
`
`7.
`
`IPR2018-01204
`PATENT NO. 7,489,786
`the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination
`
`not later than 1 year after the date on which the Director notices institution
`
`of review.
`
`IPR2016-01357, Paper 19 at 9–10.
`
`As set forth below, the circumstances of this twelfth petition against the ’786
`
`Patent favor denial of institution.
`
`FACTOR 1: This is petitioner’s first petition against the ’786 Patent. This
`
`factor thus weighs against invoking the Board’s discretion to deny institution.
`
`FACTOR 2: This factor “is directed to situations in which the same petitioner
`
`files two separate petitions at different times. Thus, in light of factor 1, factor 2 is
`
`neutral here.” See Netapp, Inc. v. Realtime Data LLC, IPR2017-01195, Paper 9 at
`
`10 (PTAB Oct. 12, 2017).
`
`FACTOR 3: At the time of Petitioner’s filing of this Petition on June 7, 2018
`
`Petitioner had received Patent Owner’s preliminary responses in each of the five
`
`prior IPRs filed against the ’786 Patent, as well as the Board’s decisions not to
`
`institute review. This factor weighs in favor of invoking the Board’s discretion to
`
`deny institution.
`
`FACTOR 4: Petitioner asserts that it discovered Herley and Lutter “[i]n
`
`conducting newly commissioned prior art searches for the ’786 patent between
`
`September 2017 and May 2018.” Petition at 1–2. But Petitioner’s vague
`
`19
`
`
`
`IPR2018-01204
`
`PATENT NO. 7,489,786
`
`explanation does not describe when in that eight-month time frame it found the
`
`references, nor does Petitioner provide any reason as to why it delayed by as much
`
`as nine months (from September 2017 to its filing of the Petition in June 2018) to
`
`file the Petition. This factor thus weighs in favor of invoking the Board’s discretion
`
`to deny institution.
`
`FACTOR 5: Each of the Challenged Claims were also addressed in the five
`
`prior IPRs filed against the ’786 Patent. Petitioner has not provided any
`
`explanation regarding why it waited to file this Petition. This factor weighs in
`
`favor of invoking the Board’s discretion to deny institution.
`
`FACTOR 6: The Board has already dealt with five prior petitions on this
`
`patent, none of which have resulted in any cancelled or amended claims. Rather
`
`than learn from those past petitions, Petitioner here asserts the same flawed
`
`arguments that caused the rejection of the past petitions. The Board should not
`
`squander its scarce resources here. This factor weighs in favor of invoking the
`
`Board’s discretion to de
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