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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ZTE (USA), INC.
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`Petitioner,
`v.
`FRACTUS, S.A.
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`Patent Owner.
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`Case No.: IPR2018-01461
`Patent No. 9,054,421
`Issue Date: June 9, 2015
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`__________________________________________________________________
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`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION
`FOR DISTRICT COURT-TYPE CLAIM CONSTRUCTION
`UNDER 37 C.F.R. §42.20
`__________________________________________________________________
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`Case No.: IPR2018-01461
`U.S. Patent No. 9,054,421
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`Pursuant to the Board’s email dated December 10, 2018, Petitioner submits
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`this response to Patent Owner’s Motion for District Court-Type Claim Construction
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`Under 37 C.F.R. §42.20.
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`Petitioner agrees with Patent Owner that the underlying patent will expire
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`within 18 months from the entry of the Notice of Filing Date Accorded to the instant
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`Petition. Accordingly, the Petitioner agrees that the Board should construe the
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`claims under the framework laid out in the Phillips v. AWH Corp., 415 F.3d 1303
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`(Fed. Cir. 2005).
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`While Petitioner recognizes the recent revisions to Rule 37 C.F.R. §42.100(b)
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`(effective date November 13, 2018), 83 Fed. Reg. 51340, 51340 (Oct. 11, 2018), are
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`not applicable to the instant petition1, in promulgating the revisions to Rule 37 C.F.R.
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`§42.100(b), the Patent Office provided commentary shedding light on the manner in
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`which prior claim construction determinations would be applied by the Board. 83
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`Fed. 51340, 51355. Specifically, the Patent Office explained, “The suggestion that
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`the PTAB must necessarily defer to prior claim constructions are not adopted.” Id.
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`(Response to Cmt. 30.) The Patent Office further explained, in its October 11, 2018
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`commentary, that “[n]on exclusive factors to be considered [when determining the
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`appropriate weight to give prior claim construction determinations] may include for
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`1 Petitioner filed its Petition on August 3, 2018.
`1
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`Case No.: IPR2018-01461
`U.S. Patent No. 9,054,421
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`example, how thoroughly reasoned the prior decision is and the similarities between
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`the record in the district court . . . and the record before the PTAB. It also be may
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`be relevant whether the prior claim construction is final or interlocutory.” Id.
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`The current IPR record does not include the parties’ district court claim
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`construction briefs,2 the Eastern District of Texas’ claim constructions are
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`interlocutory and have not been affirmed by the Federal Circuit Court of Appeals,
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`and the underlying case has been transferred from the Eastern District of Texas to
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`the Northern District of Texas3. As of the filing of this Response, no scheduling
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`order has issued from the Northern District of Texas, and the new court has not
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`indicated whether it will adopt the previously issued claim construction order or
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`perform any additional claim construction analysis.
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`In view of the above, Petitioner respectfully requests that the Board conduct
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`its own independent claim construction analysis under the Phillips standard to
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`delineate the meaning of the claim terms and the scope of the claimed invention in
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`view of “the words of the claims themselves, the remainder of the specification, the
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`2 Upon approval from the Board, the Petitioner can file the parties’ claim
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`construction briefs so that the Board has a complete record of information that was
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`submitted to the district court.
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`3 See, e.g., Patent Owner’s Updated Mandatory Notices (Paper 7) in IPR2018-01451.
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`2
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`Case No.: IPR2018-01461
`U.S. Patent No. 9,054,421
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`prosecution history, and extrinsic evidence concerning relevant scientific principles
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`the meaning of technical terms, and the state of the art.” Phillips, 415 F.3d at 1314.
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`Dated: January 4, 2019
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`Respectfully submitted,
`BRINKS GILSON & LIONE
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`/James R. Sobieraj/
`James R. Sobieraj
`Counsel for Petitioner
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`3
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`Case No.: IPR2018-01461
`U.S. Patent No. 9,054,421
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §42.6(e), the undersigned hereby certifies that
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`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR DISTRICT
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`COURT-TYPE CLAIM CONSTRUCTION UNDER 37 C.F.R. §42.20 was served
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`on January 4, 2019, upon the following counsel of record for Patent Owner by
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`electronic mail.
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`Jason Shapiro
`Edell, Shapiro and Finnan, LLC
`9801 Washingtonian Boulevard
`Suite 750
`Gaithersburg, Maryland 20878
`js@usiplaw.com
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`Patrick Finnan
`Edell, Shapiro and Finnan, LLC
`9801 Washingtonian Boulevard
`Suite 750
`Gaithersburg, Maryland 20878
`pjf@usiplaw.com
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`Mark J. DeBoy
`Edell, Shapiro and Finnan, LLC
`9801 Washingtonian Boulevard
`Suite 750
`Gaithersburg, Maryland 20878
`mjd@usiplaw.com
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`Dated: January 4, 2019
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`/James R. Sobieraj/
`James R. Sobieraj
`Counsel for Petitioner
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