throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 10
`Entered: February 28, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`ZTE (USA), INC.,
`Petitioner,
`
`v.
`
`FRACTUS S.A.,
`Patent Owner.
`____________
`
`Case IPR2018-01461
`Patent 9,054,421 B2
`____________
`
`
`
`Before PATRICK M. BOUCHER, KEVIN C. TROCK, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`ZTE (USA), Inc. (“Petitioner”) filed a Petition pursuant to 35 U.S.C.
`§§ 311–319 to institute an inter partes review of claims 1, 2, 4–12, 21 and
`22 of U.S. Patent No. 9,054,421 B2 (“the ’421 patent”). Paper 2 (“Pet.”).
`Fractus S.A. (“Patent Owner”) filed a Preliminary Response. Paper 7
`
`

`

`IPR2018-01461
`Patent 9,054,421 B2
`
`(“Prelim. Resp.”). For the reasons set forth below, we exercise our
`discretion under 35 U.S.C. §§ 314(a) and 325(d) to deny institution of an
`inter partes review.
`
`
`I. BACKGROUND
`A. The ’421 Patent
`The ’421 patent “relates to an antenna which includes at least one
`construction element in a multilevel structure form.” Ex. 1001, 5:3–5. The
`patent identifies certain features that characterize such a “multilevel
`structure.” Such features can be illustrated with Figure 1 of the ’421 patent,
`which is reproduced below.
`
`
`Figure 1 “shows a specific example of a multilevel element comprising only
`triangular polygons,” which are shown shaded in the drawing, in contrast to
`the empty space indicated in white. Id. at 4:33–34. More generally, a
`“multilevel structure is characterized in that it is formed by gathering several
`polygon[s] or polyhedr[a] of the same type,” meaning that all of the
`polygons or polyhedra in the structure have the same number of sides or
`
`2
`
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`

`IPR2018-01461
`Patent 9,054,421 B2
`
`faces.1 Id. at 5:5–12, 5:27–30. The gathered polygons or polyhedra are
`“coupled to each other electromagnetically, whether by proximity or by
`direct contact between the elements.” Id. at 5:10–12. In this context, “[a]
`multilevel structure or figure is distinguished from another conventional
`figure precisely by the interconnection (if it exists) between its component
`elements.” Id. at 5:12–15.
`In addition, “[i]n a multilevel structure at least 75% of its component
`elements have more than 50% of their perimeter (for polygons) not in
`contact with any of the other elements of the structure.” Id. at 5:15–18. A
`consequence of this feature is that “in a multilevel structure it is easy to
`identify geometrically and individually distinguish most of its basic
`component elements, presenting at least two levels of detail: that of the
`overall structure and that of the polygon or polyhedron elements which form
`it.” Id. at 5:18–23.
`The ’421 patent identifies the “most relevant properties” of an antenna
`having a multilevel structure as: (1) “the possibility of simultaneous
`operation in several frequency bands in a similar manner (similar impedance
`and radiation diagrams)”; and (2) “the possibility of reducing their size
`compared to other conventional antennae based exclusively on a single
`polygon or polyhedron.” Id. at 6:46–52. Because “[s]uch properties are
`particularly relevant in the field of communications systems,” the patent
`
`
`1 The ’421 patent notes that “[n]aturally, this property [of all polygons or
`polyhedra having the same number of sides or faces] is broken when several
`multilevel structures of different natures are grouped and
`electromagnetically coupled to form meta-structures of a higher level.”
`Ex. 1001, 5:30–33.
`
`3
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`

`IPR2018-01461
`Patent 9,054,421 B2
`
`describes their implementation in a “portable telecommunication device,”
`such as may be used in cell-phone systems. Id. at 6:52–7:4.
`The ’421 patent makes distinctions with other types of antenna
`systems, namely “fractal antennas” and antenna arrays, that are relevant to
`the challenged claims. With respect to the former, the ’421 patent
`acknowledges that the multilevel-structure antennas it describes “have their
`origin in fractal and multitriangular type antennae.” Id. at 2:10–11. But
`fractal antennas “are based on fractal geometry, which is based on abstract
`mathematical concepts which are difficult to implement in practice.” Id. at
`7:6–8. And fractal antennas also suffer from technical limitations such that
`“it is not always possible, viable or economic to design the antennae
`maintaining its fractal appearance and at the same time placing the bands at
`the correct area of the radioelectric spectrum.” Id. 2:21–25. The ’421 patent
`distinguishes fractal antennas from multilevel-structure antennas in terms of
`the Hausdorff dimension, which is non-integral for fractal objects. Id. at
`7:8–10. The numerous structures illustrated in the ’421 patent’s drawings
`have an integral Hausdorff dimension (i.e., equal to 2 in the case of the
`structures shown in Figures 1 and 3–6, and equal to 3 in the case of the
`structures shown in Figure 7). Id. at 7:31–36.
`With respect to antenna arrays, the ’421 patent provides the following
`distinction: “Although it is true that an array is formed by sets of identical
`antennae, in these the elements are electromagnetically decoupled, exactly
`the opposite of what is intended in multilevel antennae.” Id. at 7:38–41.
`The electromagnetic coupling allows a multilevel-structure antenna to be
`excited only in a few of its elements, while the elements of an array are
`powered independently. Id. at 7:41–48.
`
`4
`
`

`

`IPR2018-01461
`Patent 9,054,421 B2
`
`
`
`
`B. Illustrative Claim
`Challenged independent claims 1 is illustrative of the challenged
`claims, and is reproduced below.
`1. An apparatus comprising:
`
`an antenna element having a multi-band behavior and
`configured to operate in at least first and second non-overlapping
`frequency bands and comprising a plurality of geometric
`elements arranged to define empty spaces in the antenna element
`to provide at least first and second winding current paths through
`the antenna element, the at least first and second winding current
`paths circumventing
`the empty spaces and respectively
`corresponding to the at least first and second non-overlapping
`frequency bands to provide the antenna element with the
`multiband behavior; and
`
`a ground plane, the antenna element being electrically
`coupled to the ground plane;
`
`wherein the antenna element provides a substantially
`similar impedance level and radiation pattern in the at least first
`and second non-overlapping frequency bands;
`
`wherein the geometric elements are arranged such that the
`antenna element does not comprise a group of single band
`antennas that respectively operate in the at least first and second
`non-overlapping frequency bands; and
`
`wherein the antenna element is not a fractal type antenna
`element.
`
`Ex. 1001, 10:12–34.
`
`
`C. Evidence
`Petitioner relies on the following references:
`Ita Saha Misra and S. K. Chowdhury, Study of Impedance and
`Radiation Properties of a Concentric Microstrip Triangular-Ring
`Antenna and Its Modeling Techniques Using FDTD Method, 46 IEEE
`Trans. Antennas and Propagations 531 (1996) (Ex. 1003) (“Misra I”)
`
`5
`
`

`

`IPR2018-01461
`Patent 9,054,421 B2
`
`
`
`I. Saha Misra and S. K. Chowdhury, Experimental Investigations on
`the Impedance and Radiation Properties of a Three-Element
`Concentric Microstrip Square-Ring Antenna, 66 Microwave and
`Optical Tech. Letters 66 (1996) (Ex. 1004) (“Misra II”)
`
`U.S. Patent No. 6,133,879, issued October 17, 2000 to Christophe
`Grangeat et al. (Ex. 1005) (“Grangeat”)
`
`In addition, Petitioner relies on a Declaration by Chris G. Bartone,
`Ph.D., P.E. Ex. 1002. Patent Owner relies on a Declaration by Stuart Long,
`Ph.D., P.E. Ex. 2001.
`
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1, 2, 4–12, 21 and 22 on the following
`grounds. Pet. 7.
`Reference(s)
`Grangeat
`Misra I
`Misra I and Misra II
`
`
`
`Basis
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Challenged Claims
`1, 2, 4–12, 21, and 22
`1, 4–7, 9, and 22
`4–7, 9–12, and 21
`
`E. Real Parties in Interest
`Petitioner identifies ZTE Corporation, ZTE (USA), Inc., and ZTE
`(TX), Inc. as real parties in interest. Pet. 1. Patent Owner identifies only
`itself as a real party in interest. Paper 3, 2.
`
`
`F. Related Matters
`There are a number of matters related to the instant proceeding. In
`particular, Petitioner indicates that it has filed contemporaneously six
`petitions for inter partes review of patents based on the same specification
`
`6
`
`

`

`IPR2018-01461
`Patent 9,054,421 B2
`
`as the ’421 patent, namely U.S. Patent Nos. 7,397,431 (IPR2018-01451),
`7,394,432 (IPR2018-01455), 8,941,541 (IPR2018-01456), 8,976,069
`(IPR2018-01457), 9,240,632 (IPR2018-01462), and 9,362,617 (IPR2018-
`01463). Pet. 1–2. In addition, Petitioner acknowledges that Patent Owner
`has alleged that Petitioner infringes these patents in Fractus, S.A. v. ZTE
`Corp., No. 2:17-cv-00561-JRG, which is pending in the U.S. District Court
`for the Eastern District of Texas. Id. at 2. Patent Owner advises that this
`case has been transferred to the U.S. District Court for the Northern District
`of Texas. Prelim. Resp. 27–28.
`Petitioner further indicates that two of the above-identified patents
`(U.S. Patent No. 7,397,431 and 7,394,432), as well as “several other patents
`claiming priority to the same specification, were the subject of a patent
`infringement lawsuit, Fractus, S.A. v. Samsung et al., Civil Action No. 6:09-
`cv-00203-LED-JDL, filed in the U.S. District Court for the Eastern District
`of Texas in May, 2009.” Pet. 2. Petitioner advises that this “litigation
`concluded in 2014, when the parties settled while the case was pending
`before the Federal Circuit.” Id. Patent Owner also identifies a Federal
`Circuit appeal involving the ’541 patent, Fractus, S.A. v. Samsung
`Electronics Co., No. 12-1633. Paper 3, 4.
`Petitioner also identifies the following related Office proceedings.
`Pet. 2–4.
`Proceeding
`
`Status
`
`Filed
`
`Case
`Number
`95/001,483 Nov. 11, 2010 Terminated
`
`Inter partes reexamination
`of U.S. Patent No. 7,394,432
`Inter partes reexamination
`of U.S. Patent No. 7,394,432
`
`95/001,500 Dec. 3, 2010 Terminated
`
`7
`
`

`

`IPR2018-01461
`Patent 9,054,421 B2
`
`
`Proceeding
`
`Inter partes reexamination
`of U.S. Patent No. 7,394,432
`Inter partes reexamination
`of U.S. Patent No. 7,394,432
`Ex parte reexamination of
`U.S. Patent No. 7,394,432
`Samsung Electronics Co.,
`Ltd. v. Fractus, S.A. (U.S.
`Patent No. 7,394,432)
`Inter partes reexamination
`of U.S. Patent No. 7,397,431
`Inter partes reexamination
`of U.S. Patent No. 7,397,431
`Inter partes reexamination
`of U.S. Patent No. 7,397,431
`Inter partes reexamination
`of U.S. Patent No. 7,397,431
`Ex parte reexamination of
`U.S. Patent No. 7,397,431
`Samsung Electronics Co.,
`Ltd. v. Fractus, S.A. (U.S.
`Patent No. 7,397,431)
`Inter partes reexamination
`of U.S. Patent No. 7,123,208
`Inter partes reexamination
`of U.S. Patent No. 7,123,208
`Inter partes reexamination
`of U.S. Patent No. 7,123,208
`Inter partes reexamination
`of U.S. Patent No. 7,123,208
`Ex parte reexamination of
`U.S. Patent No. 7,123,208
`Samsung Electronics Co.,
`Ltd. v. Fractus, S.A. (U.S.
`Patent No. 7,123,208)
`
`Filed
`
`Case
`Number
`95/000,588 Dec. 13, 2010 Terminated
`
`Status
`
`95/002,349 Sept. 14, 2012 Dismissed
`
`90/013,024 Oct. 9, 2013 Certificate
`Issued
`Oct. 4, 2013 Denied
`Institution
`
`IPR2014-
`00012
`
`95/001,482 Nov. 11, 2010 Terminated
`
`95/001,497 Dec. 3, 2010 Terminated
`
`95/000,586 Dec. 13, 2010 Terminated
`
`95/002,346 Sept. 14, 2012 Dismissed
`
`90/013,023 Oct. 9, 2013 Certificate
`Issued
`Oct. 4, 2013 Denied
`Institution
`
`IPR2014-
`00011
`
`95/001,389 July 1, 2010
`
`Terminated
`
`95/001,501 Dec. 3, 2010 Dismissed
`
`95/000,591 Dec. 14, 2010 Dismissed
`
`95/002,305 Sept. 14, 2012 Dismissed
`
`90/013,022 Oct. 9, 2013 Certificate
`Issued
`Oct. 4, 2013 Denied
`Institution
`
`IPR2014-
`00008
`
`8
`
`

`

`IPR2018-01461
`Patent 9,054,421 B2
`
`
`Proceeding
`
`Inter partes reexamination
`of U.S. Patent No. 7,528,782
`Inter partes reexamination
`of U.S. Patent No. 7,528,782
`Inter partes reexamination
`of U.S. Patent No. 7,528,782
`Samsung Electronics Co.,
`Ltd. v. Fractus, S.A. (U.S.
`Patent No. 7,015,868)
`
`
`Filed
`
`Status
`
`Case
`Number
`95/001,455 Sept. 30, 2010 Certificate
`Issued
`95/001,499 Dec. 3, 2010 Dismissed
`
`95/000,595 Dec. 14, 2010 Certificate
`Issued
`Oct. 4, 2013 Denied
`Institution
`
`IPR2014-
`00013
`
`II. ANALYSIS
`Patent Owner argues that we should decline to institute inter partes
`review under 35 U.S.C. § 325(d) because the same or substantially the same
`prior art or arguments were presented previously to the Office. Prelim.
`Resp. 18–26. Patent Owner also argues that we should decline to institute
`review under 35 U.S.C. § 314(a) because this proceeding would be
`cumulative of a pending district court proceeding. Id. at 26–28. Although
`Petitioner addresses the prosecution history of the ’421 patent in the Petition,
`see Pet. 12, Petitioner did not request authorization to file a reply brief to
`respond directly to Patent Owner’s assertions under 35 U.S.C. §§ 314 and
`325(d).
`
`
`A. 35 U.S.C. § 325(d)
`In determining whether to institute an inter partes review, the Director
`may take into account whether, and reject a petition because, the same or
`substantially the same prior art or arguments were presented previously to
`the Office. 35 U.S.C. § 325(d). Thus, in exercising its discretion whether to
`institute trial, the Board considers whether the same or substantially the
`
`9
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`

`IPR2018-01461
`Patent 9,054,421 B2
`
`same prior art or arguments were presented previously. See, e.g., Cultec,
`Inc. v. StormTech LLC, Case IPR2017-00777 (PTAB Aug. 22, 2017) (Paper
`7) (informative) (denying institution under 35 U.S.C. § 325(d) where the
`Office previously evaluated two asserted references during examination and
`additional relied-upon references were cumulative of prior art considered
`during examination); Hospira, Inc. v. Genentech, Inc., Case IPR2017-00739
`(PTAB July 27, 2017) (Paper 16) (informative) (denying institution under
`35 U.S.C. § 325(d) where the Office previously considered and evaluated
`during examination the same arguments regarding a patent owner’s priority
`claim).
`Whether to deny institution of trial on this basis is a fact-dependent
`decision, in which the Board balances a petitioner’s desire to be heard
`against the interest of the patent owner in avoiding duplicative challenges to
`its patent. The Board also takes into account the “efficient administration of
`the Office,” which may be affected by consideration of trial petitions that
`raise the same or substantially the same prior art or arguments presented
`previously to the Office during examination, a reexamination proceeding, a
`reissue proceeding, or in an earlier-filed petitioner requesting inter partes
`review. See 35 U.S.C. § 316(b). In evaluating whether to deny institution
`on the basis of § 325(d), the Board has considered the following
`nonexclusive factors:
`1. the similarities and material differences between the
`asserted art and the prior art involved during examination;
`2. the cumulative nature of the asserted art and the prior
`art evaluated during examination;
`
`10
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`

`IPR2018-01461
`Patent 9,054,421 B2
`
`
`3. the extent to which the asserted art was evaluated
`during examination;
`4. the extent of the overlap between the arguments made
`during examination and the manner in which a petitioner relies
`on the prior art or a patent owner distinguishes the prior art;
`5. whether a petitioner has pointed out sufficiently how
`the Office erred in evaluating the asserted prior art; and
`6. the extent to which additional evidence and facts
`presented in the petition warrant reconsideration of the prior art
`or arguments.
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586,
`slip op. at 17–18 (PTAB Dec. 15, 2017) (Paper 8) (informative). In
`addition, the Board may also consider materially changed circumstances or
`facts and evidence of which the Office was not aware during its previous
`consideration of the asserted art or arguments. Kayak Software Corp. v. Int’l
`Bus. Machs. Corp., Case CBM2016-00075, slip op. at 10–12 (PTAB Dec.
`15, 2016) (Paper 16) (informative).
`
`
`1. Similarity and Cumulative Nature of Art
`
`Patent Owner points out that the prior art asserted here, namely
`Misra I, Misra II, and Grangeat, “are the identical references previously
`presented to the Office during the examination of the '421 Patent.” Prelim.
`Resp. 20. We agree with this assertion, which is supported by the record.
`Ex. 1001, 3, 11, 12. Accordingly, we conclude that the first and second
`Becton Dickinson factors weigh in favor of denying institution.
`
`
`11
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`

`IPR2018-01461
`Patent 9,054,421 B2
`
`
`2. Prior Evaluation of Art
`Patent Owner contends that “[t]he references cited in the present
`proceeding were not simply presented to the Office,” but that
`“[a]ccompanying the references were detailed explanations of how the
`references applied to the teachings of the '421 Patent through reexamination
`documents also presented to the Office.” Prelim. Resp. 21.
`Specifically, Misra I and Misra II were submitted to the Office in inter
`partes Reexamination Nos. 95/001,482 and 95/001,483, which are directed
`to related U.S. Patent Nos. 7,397,431 and 7,394,432. See id. at 19–20 (citing
`Ex. 1001, 13, 19, 27–32; Exs. 2002–2005). As Patent Owner asserts, the
`reexamination documents for these related patents “include the requests for
`reexamination of related patents based upon Misra I and II, the order
`granting the reexaminations of the related patents based upon the teachings
`of Misra I and II, office actions rejecting the claims based upon Misra I and
`II, and detailed claim charts applying Misra I and II to the claims of the
`related patents.” Id. at 21. Additional details of the consideration of Misra I
`and II in those proceedings is summarized in ZTE (USA) Inc. v. Fractus,
`S.A., Case IPR2018-01451, slip op. at 11–13 (PTAB Feb. 19, 2019) (Paper
`12).
`
`With respect to Grangeat, that reference was presented to the Office in
`inter partes Reexamination Nos. 95/002,305, 95/002,346, 95/002,349, and
`95/002,332, and in ex parte Reexamination Nos. 90/013,022, 90/013,023,
`90/013,024, and 90/013,025, all of which were directed to related patents
`sharing substantially the same written description as the ’421 patent. See
`Prelim. Resp. 21–22 (citing Exs. 2008, 2011, 2029–2032, 2035, 2036). In at
`least Reexamination No. 90/013,024, the Examiner determined that “[t]here
`
`12
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`

`IPR2018-01461
`Patent 9,054,421 B2
`
`is no question of patentability raised by Grangeat which is new and different
`from that raised by Chiba [i.e., U.S. Patent No. 6,195,487] in the
`[95/001,483] proceeding.” Ex. 2029, 16–17; see also Ex. 2030, 17–19
`(“There is no new question of patentability raised by Grangeat which is new
`and different from that raised by Chiba in the [95/001,482] proceeding.”).
`Similarly, in at least ex parte Reexamination Nos. 90/013,022 and
`90/013,025, the Examiner determined that “[t]here is no question of
`patentability raised by Grangeat which is new and different from that raised
`by Korisch [i.e., U.S. Patent No. 5,926,139] in the [95/001,390]
`proceeding.” Ex. 2031, 15; see also Ex. 2032, 14 (“There does not appear to
`be anything, relevant to the claims, that is in Grangeat but is not in
`Korisch.”). In inter partes Reexamination Nos. 95/001,390 and 95/001,501,
`the Examiner was provided with “detailed explanations for how Korisch
`applied to the teaching of the disclosure of the '421 Patent.” Prelim. Resp.
`23 (citing Ex. 1001, 14–16, 26, 29–32; Exs. 2033, 2034).
`We recognize that this history relates to different patents that involve
`different claims. See Pet. 8–9 (“Grangeat, Misra I, and Misra II have not
`been considered by the PTAB for any of the challenged claims 1-2, 4-12,
`and 21-22[]under any of the grounds identified in this Petition.”). But it is
`relevant that the written description involved in the respective proceedings
`was substantially the same as for the ’421 patent, and, as Patent Owner
`asserts, that “the same examiner that allowed the claims of the '421 Patent
`was provided with the Misra I, Misra II and Grangeat references, and was
`also provided with detailed explanations for how teachings of the references
`were applied to the disclosure of the '421 Patent through voluminous
`
`13
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`

`IPR2018-01461
`Patent 9,054,421 B2
`
`reexamination documents directed to patents that share a specification with
`the '421 Patent.” Prelim. Resp. 23–24; see Cultec, slip op. at 9–10.
`In light of these considerations, we conclude that the third Becton
`Dickinson factor weighs in favor of denying institution.
`
`
`3. Argument Overlap
`According to Patent Owner, “[i]n the various reexamination
`documents that were presented to the Examiner during examination, the
`respective requesters attempted to characterize Misra I, Misra II, Grangeat,
`Chiba and Korisch as multilevel structures, as opposed to the groups of
`single-band antennas actually described in the references.” Prelim. Resp.
`24–25. In the instant proceeding, Petitioner makes the same
`characterization. See Pet. 12–13 (“Grangeat discloses a conductive
`radiating element (i.e., an antenna) including multiple zones or geometric
`elements, which provide a multilevel structure.”), 15 (“Misra I is directed to
`a multilevel antenna that operates in multiple frequency bands without
`losing the advantage of small size.”), 16 (“Misra II . . . also is directed to a
`multilevel antenna that operates in multiple frequency bands without losing
`the advantage of small size.”).
`The distinction between multilevel structures and groupings of single-
`level antennas is particularly significant to the issues presented in this
`proceeding. We are persuaded that this specific issue, in the context of the
`specific references presented, was considered by the Examiner in the related
`reexamination proceedings. See ZTE, Case IPR2018-01451, slip op. at 14–
`16. Accordingly, we conclude that the fourth Becton Dickinson factor
`weighs in favor of denying institution.
`
`14
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`

`IPR2018-01461
`Patent 9,054,421 B2
`
`
`
`
`4. Petitioner Assessment of Office Error
`Patent Owner asserts, and we agree, that “Petitioner made no effort to
`explain how the Office erred in its previous evaluation of the prior art. . . .
`Instead, Petitioner erroneously argued that a reference must be cited in a
`ground of rejection for it to be deemed considered by the Office.” Prelim.
`Resp. 25. We have reviewed the Petition and do not discern any argument
`pointing out how the Office erred in evaluating the asserted prior art.
`Accordingly, we conclude that the fifth Becton Dickinson factor weighs in
`favor of denying institution.
`
`
`5. Additional Evidence and Facts
`Patent Owner asserts that “[w]hile Petitioner has presented current
`density plots, return loss graphs, [voltage standing wave ratio] graphs and
`radiation pattern plots for Misra I, Misra II and Grangeat that were not
`before the Examiner during examination, there is strong reason to question
`the validity and consistency of this new evidence.” Prelim. Resp. 25. On
`the undeveloped record before us, we are not prepared to impugn the
`“validity and consistency” of Petitioner’s new evidence. Accordingly, we
`conclude that the sixth Becton Dickinson factor weighs against denying
`institution.
`
`
`6. Evaluation
`Of the various Becton Dickinson factors considered above, only one
`weighs against denying institution, with all others weighing in favor of
`denying institution. We find the circumstances of this case similar in certain
`
`15
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`

`IPR2018-01461
`Patent 9,054,421 B2
`
`respects to those in Cultec, in which institution was denied under 35 U.S.C.
`§ 325(d) because the Office had previously evaluated two asserted
`references during examination and additional relied-upon references were
`cumulative of prior art considered during examination.
`Here, there is little doubt that the Office was presented previously
`with Misra I, Misra II, and Grangeat, along with arguments and claim charts,
`substantively applying those references to claims of a closely related patent
`that shares a substantially common disclosure. There is also little doubt that
`the Office’s prior consideration of those references was thorough. The
`manner in which these references are now being presented is slightly
`different, in that Misra I and Misra II are being presented for one ground in
`combination under 35 U.S.C. § 103(a) and Grangeat is being presented in a
`single-reference obviousness ground under § 103(a). In addition, Petitioner
`provides new evidence relating to the particulars of antenna characteristics
`that was not previously considered.
`Nonetheless, when considered as a whole, we are persuaded that the
`Becton Dickinson factors weigh in favor of denying institution.
`
`
`B. 35 U.S.C. § 314(a)
`“Although we recognize that an objective of the [America Invents
`Act] is to provide an effective and efficient alternative to district court
`litigation, we also recognize the potential for abuse of the review process by
`repeated attacks on patents.” General Plastic Indus. Co., Ltd. v. Canon
`Kabushiki Keisha, Case IPR2016-01357, slip op. at 16–17 (PTAB Sept 6,
`2017) (Paper 19) (precedential). In light of this recognition, Patent Owner
`argues that the posture of the related district court litigation warrants a
`
`16
`
`

`

`IPR2018-01461
`Patent 9,054,421 B2
`
`discretionary denial of the Petition under 35 U.S.C. § 314(a). Prelim. Resp.
`26–28.
`According to Patent Owner, that litigation is nearing its final stages
`and will likely go to trial before a final decision is reached in this
`proceeding. Id. at 27–28. Patent Owner also contends that the prior art,
`arguments, and expert testimony are substantively the same in both
`proceedings, and that any inter partes review will apply the same analysis2
`and will likely take a longer time to do so, given the advanced stage of the
`litigation. Id. at 28. Petitioner’s expert in the related litigation, Dr. Bartone,
`is the same expert providing a declaration on Petitioner’s behalf in this
`proceeding, and we agree with Patent Owner that the respective reports
`“identify the same prior art – i.e., Misra I, Misra II, and Grangeat – and
`argue[] substantially the same grounds – i.e., (1) obviousness of claims 1 and
`22 in view of Grangeat, (2) obviousness of claims 1 and 22 in view of
`Misra I, and (3) obviousness of claims 1 and 22 in view of Misra I and II.”
`Compare Ex. 1002, with Ex. 2018. We also note that a claim construction
`Memorandum Opinion and Order has been issued in the district-court
`proceeding, which covers virtually all of the claim terms for which the
`parties have proposed constructions in this proceeding. Compare Ex. 2016,
`7–61, with Pet. 19–22, and Prelim. Resp. 17–19.
`We are persuaded that granting institution would require the Board to
`consider the same prior art and essentially identical evidence and arguments
`already under consideration by the district court. Given these circumstances,
`we exercise our discretion under 35 U.S.C. § 314(a) to deny institution.
`
`
`2 We previously ordered that a district-court type of claim construction be
`applied in this proceeding. Paper 9.
`
`17
`
`

`

`IPR2018-01461
`Patent 9,054,421 B2
`
`
`
`
`III. ORDER
`In consideration of the foregoing, it is
`ORDERED that the Petition is denied and no inter partes review is
`instituted.
`
`
`
`
`
`
`18
`
`

`

`IPR2018-01461
`Patent 9,054,421 B2
`
`
`
`PETITIONER:
`
`James Sobieraj
`Jon Beaupre
`David Lindner
`Gang Chen
`BRINKS GILSON & LIONE
`jsobieraj@brinksgilson.com
`jbeaupre@brinksgilson.com
`dlindner@brinksgilson.com
`gchen@brinksgilson.com
`
`PATENT OWNER:
`Jason Shapiro
`Patrick Finnan
`Mark Deboy
`EDELL, SHAPIRO AND FINNAN, LLC
`js@usiplaw.com
`pjf@usiplaw.com
`mjd@usiplaw.com
`
`
`19
`
`

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