UNITED STATES PATENT ANOTRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O.80x 1450
`.
`Alexandria, Virginia 22313·1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`951001,390
`
`07/02/2010
`
`70.15868
`
`0690.0001L
`
`8872
`
`08/0512014
`7590
`27896
`EDELL, SHAPIRO & FINNAN, LLC
`9801 Washingtonian Blvd.
`Suite 750
`Gaithersburg, MD 20878
`
`EXAMINER
`
`MENEFEE, JAMES A
`
`ART UNIT
`
`3992
`
`MAIL DATE
`
`08/05/2014
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`ZTE V Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1024.0001
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`NOVAK DRUCE & QUIGG, LLP
`(NDQ REEXAMINATION GROUP)
`1000 LOUISIANA STREET, FIFTY-THIRD FLOOR
`HOUSTON, TX 77002
`
`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box 1450
`Alexandria,.VA 22313-1450
`www.uspto.gov
`
`Date:
`
`MAlLED
`AUG 0 5 2014
`
`CENTRAL REEXAMINATION UNIT
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NO. : 95001390
`PATENT NO. : 7015868
`ART UNIT: 3992
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above-identified reexamination proceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this
`"communication, the third party requester of the inter partes reexamination may once file
`written comments within a period of 30 days from the date of service of the patent owner's
`response. This 30-day time period is statutory (35 U.s.c. 314(b)(2)), and, as such, it cannot
`be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no responsive
`submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the
`Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of the
`communication enclosed with this transmittal.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1024.0002
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`(For Patent Owner)
`
`Commissioner for Patents·
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313·1450
`www.uspto.gov
`
`MAILED
`AUG 05 2014
`
`(For Third Party Requester)
`
`CENTRAL REEXAMINATION UN1T
`
`Edell, Shapiro, & Finnan, LLC
`9801 Washingtonian Blvd.
`Suite 750
`Gaithersburg, MD 20878
`
`Novak, Druce & Quigg, LLP
`(NDQ Reexamination Group)
`1000 Louisiana Street
`Fifty-third Floor
`Houston, TX 77002
`
`Inter Partes Reexamination Proceeding
`Control No.: 95/001,390
`Filed: July 2,2010
`For: U.S. Patent No. 7,015,868
`
`DECISION GRANTING
`PETITION TO TERMINATE
`INTER PARTES REEXAMINATION
`PROCEEDING
`
`This is a decision on patent owner's petition filed on April 3, 2014 and entitled "Petition to
`Terminate Inter Partes Reexamination" (patent owner's April 3, 2014 petition).
`
`Patent owner's April 3, 2014 petitioQ., and the record as a whole, are before the Office of Patent
`.Legal Administration for consideration.
`
`SUMMARY
`
`Patent owner's April 3, 2014 petition under 37 C.F.R. § l.182 to terminate inter partes
`reexamination proceeding .95/00 1 ,390 is granted.
`
`Prosecution of inter partes reexamination proceeding 95/001,390 is hereby terminated.
`
`DECISION
`
`The patent owner argues that termination of inter partes reexamination proceeding control
`number 95/001,390 (the '1390 proceeding) is required by pre-AlA 35 U.S.C. 317(b),I.which
`provides, in pertinent part (emphasis added):
`
`I Congress, when enacting the America Invents Act (AlA), replaced the provisions for inter partes reexamination
`with provisions for a new procedure, inter partes review. Congress amended the provisions of 35 U.S.c. 317 to
`only apply to inter partes review proceedings, which, by definition, are filed on or after September 16,2012 (post·
`AlA 35 U.S.C. 317). Congress also specified that the provisions of the inter partes r.eexamination statute which
`were in effect prior to September 16,2012, including the provisions of 35 U.S.C. 317(b) (pre-AlA 35 U.S.C.
`317(b)), remain applicable to inter partes reexamination proceedings, which were only permitted to be filed before
`September 16,2012.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1024.0003
`
`

`

`Inter Partes Reexamination Control No. 951001,390
`
`-2-
`
`Once a final decision has been entered against a party in a Civil action arising in
`whole or in p~rt under section 1338 of title 28, that the party has not sustained its
`burden of proving the invalidity of any patent claim in suit ... then neither that
`party nor its privies may thereafter request an inter partes reexamination of any
`such patent claim on the basis of issues which that party or its privies raised or
`Gould have raised in such civil action or inter partes reexamination proceeding,
`and an inter partes reexamination requested by that party or its privies on the basis
`of such issues may not thereafter be maintained by the Office ... This subsection
`does not prevent the assertion of invalidity based on newly discovered prior art
`unavailable to the third-party requester and the Patent and Trademark Office at
`the time of the inter partes reexamination proceedings.
`
`The Office analyzes whether a reexamination proceeding must be terminated pursuant to pre(cid:173)
`AlA 35 U.S.C. 317(b) by determining:
`
`1. Whether the third party requester was a party to the litigation;
`2. Whether the decision is final, i.e., after all appeals;
`3. Whether the court decided that the requester/party had not sustained its burden of
`proving the invalidity of any claim in suit of the patent, which claim is also under
`reexamination; and
`4. Whether the issues raised in the reexamination proceeding are the same as issues that
`were raised, or are issues that could have been raised, by the requester in the civil action.
`
`Element lHasf3~~n Slwwf.l!o Ha~(!J!e~n .satisfied
`
`The patent owner, Fractus, S.A. (Fractus), has informed the Office that the patent under
`reexamination, U.S. Patent No. 7,015,868 (the '868 patent), was the subject of a civil action
`styled Fractus, SA. v. Samsung Electronics, Co., Ltd. et al., Civil Action No. 6:09-cv-00203 (E.
`D. Tex.) (the litigation). The patent owner submits, with the present petition, a series of court
`documents, including a copy of the district court's "Final Judgment", dated June 28, 2012,2
`which shows that the requester'Samsung Electronics Co. Ltd. (Samsung) is a party to the
`litigation. Accordingly, element 1 has been shown to have been satisfied.
`
`Element 2 Has Been SufficientLy Shown toHave Been Satisfied
`
`The patent owner states that an appeal of the district court's June 28, 2012 judgment to the Court
`of Appeals for the Federal Circuit (CAFC) was filed. The appeal was later dismissed on
`March 28,2014. As evidence, the patent owner submits a copy of the March 28, 2014 CAFC
`order dismissing the appeal, ,and a copy of the formal mandate issued by the CAFC. 3 Patent
`owner's evidence sufficiently shows that the district court's judgment is final, i.e., after all
`appeals. Accordingly, element 2 has been shown to have been satisfied.
`
`2 See Exhibit 0-3, which is attached to the present petition.
`
`3 See Exhibits 0-8 and 0-9, which are attached to the present petition.
`
`ZTE V Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1024.0004
`
`

`

`Inter Partes Reexamination Control No. 951001,390
`
`-3-
`
`Element 3 Has Been Sufficiently Shown to Have Been Satisfied
`
`The patent owner states that the jury determined, and the district court held, that claims 26 and
`35 of the '868 patent were not invalid. As evidence, the patent owner submits:
`
`1) the district court's June 28,2012 judgment, which states that "[t]he '868, '208, '431,
`and '432 Patents are valid and enforceable";
`
`2) the district court's June 28,2012 "Memorandum Opinion and Order",4 which states
`that the patent owner asserted, at trial, claims 26 and 35 of the '868 patent,s and which
`further states that "[t]he jury reasonably found that Samsung failed to prove by clear
`and convincing evidence that the MLV Patents [the '868, '208, '431, and '432
`Patents] are anticipated by the Cohen Patent," and that "[t]he jury reasonably
`concluded that Samsung failed to prove by clear and convincing evidence that the
`ML V Patents are obvious in view of the Cohen Patent;" 6 and
`
`3) a redacted copy ofthe jury verdict form, dated May 23, 2011. 7
`
`Patent owner's evidence, taken together, is sufficient to show that the court held that the
`requester Samsung did not sustain its burden of proving the invalidity of claims 26 and 35 of the
`'868 patent.
`
`Office records reveal, however, that claims 1,3,6,12,14,23,26, and 32-35 of the '868 patent
`are under reexamination in the present proceeding. To ensure that the claims of the present
`proceeding are identical to the claims asserted in the litigation, the patent owner filed a statutory
`disclaimer disclaiming claims 1,3,6, 12, 14,23, and 32-34 in the file of the '868 patent.8 Thus,
`only claims 26 and 35 remain under reexamination in the present proceeding.
`
`Accordingly, element 3 has been shown to have been satisfied.
`
`Element 4 Has Been Shown to Have Been Satisfied
`
`The evidence ofrecord shows that any issues raised with respect to 26 and 35 of the '868 patent
`either were raised or could have been raised inthe litigation.
`
`The last sentence of pre-AlA 35 U.S.C. 317(b) permits "the assertion of invalidity [by the
`requester] based on newly discovered prior art unavailable to the third party requester", See the
`
`4 See Exhibit 0-4, which is attached to the present petition.
`5 See the June 28,2012 "Memorandum Opinion and Order" at 2.
`6 1dat 27.
`7 See Exhibit 0-2, which is attached to the present petition. The jury verdict form provides evidence that claims 26
`and 35 of the (868 patent were before the jury. However, the jury's determinations on the issue of the invalidity of
`the asserted claims, due to anticipation or obviousness, are unclear. The jury's determinations on page 3 of the
`form, which is the pertinent portion of the verdict form, are partially illegible.
`
`8 The statutory disclaimer was filed on September 10, 2013 in application number 10/963,080, which became the
`'868 patent.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1024.0005
`
`

`

`InJer Partes Reexamination Control No. 951001,390
`
`-4-
`
`legislative history of pre-AlA 35 U.S.C. 317(b), which provides the meaning of the word
`"unavailable", as it appears in the statute (emphasis added in bold):9
`
`Further, if a third-party requester asserts patent invalidity in a civil action and a final decision
`is entered that the party failed to prove the assertion of invalidity ... after any appeals, that
`third-party requester cannot thereafter request inter partes reexamination on the basis of issues
`which were or which could have been raised. However, the third-party reql:lester may assert
`invalidity based on newly discovered prior art unavailable at the time ofthe civil action or
`inter partes reexamination. Prior art was unavailable at the time if it was not known to
`the individuals who were involved in the civil action or inter partes reexamination
`proceeding on behalf of the third-party requester and the USPTO.
`
`Thus, to show that a reference is "available", the patent owner must provide sufficient evidence
`that the reference was known to the requester (i.e., actual knowledge) at a time when it could
`have been raised in the civil action; i.e., prior to trial. 10
`
`The requester has admitted that the "Requester cited the prior art relied on in this reexamination
`in its invalidity contentions in the underlying litigation,,11 and that "Requester was aware of the
`invalidating references prior to trial".12 Thus, the requester has admitted that the prior art relied
`on in this reexamination was available (i.e., known) to the requester prior to trial, i.e., at a time
`when the art and issues could have been placed in the litigation. 13
`
`The requester has argued that even though it was aware of the art at a time when the art could'
`have been placed in·thditigation, it chose not to do so because of strict time constraints, and for
`that reason, "could not have placed it in litigation". 14 However, as discussed in the Office's
`
`9 106 Congo Rec. SI4720, Nov. 17,1999. See also 106 Congo Rec. H11805, Nov. 9,1999
`
`10 In the present case, trial commenced on May 17, 20 II, as evidenced by the court's docket, a copy of which is
`filed with the present petition as Exhibit 0-1. The requester, as a palty to the present reexamination proceeding, was
`aware of all prior art, with respect to claims 26 and 35 of the' 868 patent, which was raised in the present
`reexamination proceeding prior to May 17,20 II, the date that trial began in the litigation.
`
`II See requester's October 31,2012 opposition paper, titled ""Third Party Requester's Opposition under 37 C.F.R. §
`1.182 to Patent Owner's Petition for Suspension", (requester's October 31, 2012 opposition paper), on page 7,
`referring to this statement as a "fact".
`
`12 See requester's October 31,2012 opposition paper, page 7; see also requester's October 10,2013 opposition
`paper, titled "Third Party Requester's Opposition under 37 C.F.R. § 1.182 to Patent Owner's Petition for
`Suspension" (requester's October 10,2013 opposition paper), page 10.
`
`13 The patent owner also submits, with its June 3, 2014 supplement, a copy ofa document entitled "Joint Motion to
`Dismiss", which is dated April 15,2014 and which is signed by both parties. (The caption of the document refers to
`a related proceeding, reexa<m ination control no. 95/00 I ,389; however, the heading on the remaining pages of the
`document refer to this reexamination proceeding. The document was filed by the patent owner in this proceeding,
`not in the related proceeding. For these reasons, the Office presumes that this document was intended to be filed in
`this proceeding. If this is not the case, the patent owner is required to so inform the Office.) In this document,
`< the parties, including the requester, state that "[t]he prior art raised by Samsung in the Reexaminations was raised by
`Samsung or could have been raised by Samsung in this suit" (see paragraph 8). The present reexamination
`proceeding is listed as one of the "Reexaminations" (see paragraph 7).
`
`14 See requester's October 31,2012 opposition paper, pages 7-10.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1024.0006
`
`

`

`Inter Partes Reexamination Control No. 951001,390
`
`-5-
`
`decision mailed on July 30, 2013 (the July 30, 2013 decision), the fact that there were strict time
`constraints at trial is not "evidence" that it was not possible for the requester to raise, at trial, all
`of the issues in the reexamination proceeding. It is the responsibility of counsel to decide which
`issues to present to the court. The fact that counsel chose not to raise one or more issues at trial
`is not equivalent to a showing that these issues could not have been raised. Counsel's choice of
`which issues to present at trial is not "evidence" that the remainder of the issues could not have
`been raised at trial. Further, if a proceeding cannot be terminated under pre-AlA 35 U.S.C.
`317(b) because the trial in the related civil action involved strict time constraints, then most, if
`not all, reexamination proceedings where a related civil suit involving the patent went to trial
`cannot be terminated, because most, if not all, trials in patent suits involve strict time constraints.
`
`For the reasons set forth above, the evidence of record shows that the requester was aware of the
`prior art raised in the present reexamination proceeding with respect to claims 26 and 35 of the
`'868 patent, and thatthe requester was aware of these references prior to trial; i.e., at a time such
`that the references could have been raised at trial.
`
`Accordingly, the record contains sufficient evidence that any issues raised in the present
`. reexamination proceeding with respect to claims 26 and 35 of the '868 patent could have been
`raised by the requester in the litigation, which satisfies element 4.
`
`Additional Comments
`
`. The Office notes that a portion of patent owner's preliminary infringement contentions which
`. were filed by the requester as·part of the request for reexamination is labeh:;d "Confidential".
`However, the requester explained, later in the reexamination proceeding, that patent owner's
`infringement contentions had been designated as "non-confidential" in a court order rendered on
`June 7, 2010,15 and were "unsealed", permitting the requester to submit them to the Office with
`its request. 16 Thus, it appears that patent owner's infringement contentions did not remain
`subject to a protective order of the court at the time of filing the request.
`
`Similarly, copies of requester's February 24,2010 invalidity contentions and patent owner's
`undated "Rebuttal Expert Report of Dr. Stuart A. Long" (the Long Rebuttal Report),17 have been.
`filed by the patent owner in the present reexamination proceeding, as evidence that the requester
`was aware of the prior art raised in the reexamination at a time when it could have been raised in
`the litigation. IS The captions of these documents each state that the document is "Confidential"
`or "Highly Confidential" and "Subject to [the) Protective Order". The patent owner states that
`the version of patent owner's Long Rebuttal Report 19 submitted in this proceeding has been
`
`15 See requester's October 31, 2012 opposition paper, footnote 1.
`16 See requester's October 10,2013 opposition paper, page 12.
`17 Attached to the present petition as Exhibits 0-10 and 0-11; see also patent owner's October I, 2012 "Petition for
`Suspension of Inter Partes Reexamination Proceedings" (patent owner's October I, 2012 petition to suspend),
`Exhibits 0-12 and 0-14.
`18 See, e.g., patent owner's October I, 2012 petition to suspend, pages 6-10; see also pages 6-11 of the present
`petition.
`19 Dr. Stuart A. Long was apparently employed by the patent owner.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1024.0007
`
`

`

`Inter Partes Reexamination Control No. 95/001,390
`
`-6-
`
`redacted to remove confidential information.2o The patent owner also states that requester's
`invalidity contentions "are of public record at least as of September 6, 2011 ", when requester's
`invalidity contentions were filed as part of an information disclosure statement in a related
`proceeding.21 The Office also notes that neither party has alerted the Office to the possibility
`that such documents remain subject to a protective order, or has objected to the submission of
`such documents to the Office,z2
`
`The Office was not a party to the litigatio~. The parties to the litigation are required to be aware
`of the provisions of any protective order rendered by the court, and any modifications of those
`provisions. It is the responsibility of the parties to the litigation to determine, and to ensure, that
`any document filed in this proceeding is not, or does not remain, subject to a protective order of
`the court. For this reason, the Office presumes that the parties, and in particular, the party filing
`the document in the present reexamination proceeding, has determined and ensured that the
`document is not, or does not remain, subject to a protective order. If any document filed in this
`proceeding remains subject to a protective order, the parties are required to so inform the
`Office.
`
`In addition, the requester has pointed to an earlier, inconsistent petition decision which was
`rendered in an unrelated reexamination proceeding (the '545 proceeding),23 as evidence that it
`could not have raised the same issues in the litigation that were raised in the reexamination
`proceeding. The decision stated that a requester's reliance on the same prior art references in
`both the refexamination proceeding and in the civil litigation does not mean that the same issues
`were raised or could have been raised in both proceedings, because of the difference in claim
`construction between the Office, which uses the broadest reasonable interpretation standard, and
`the district court, which uses a narrower .standard.
`
`However, the Office does not follow this reasoning set forth in the petition decision in the' 545
`proceeding. The broadest reasonable interpretation standard is used by the. Office in the majority
`of inter partes reexamination proceedings. The narrow construction used by the courts is only
`used by the Office in an inter partes reexamination proceeding in the rare situation where the
`patent under reexamination has expired. If the Office were to follow the reasoning set forth in
`the petition decision in the' 545 proceeding, nearly all inter partes reexamination proceedings
`would be exempt from the estoppel provisions of pre-AlA 35 U.S.C. 317(b).
`
`20 See, e.g., patent owner's October 1,2012 petition to suspend, page 8; see also page 9 of the present petition.
`
`21 See patent owner's October 1,2012 petition to suspend, footnote 4; see also page 8 of the present petition,
`footnote I.
`
`22 For example, the patent owner filed, on September 30, 20 11, a "Petition under 37 C. F.R. §§ 1.59 and 1.182 to
`Expunge Information Submitted under MPEP § 724.02" (petition to expunge), informing the Office that the district
`court's September 22, 20 II consent judgment, filed by the patent owner under seal with the Office, had been filed
`under seal with the district court. The Office required the patent owner to show that the Office would not be
`violating a protective order of the court by reviewing the consent judgment and making it available to the public.
`See, e.g., the petition decisions mailed on November 15,2012 and on July 16,2013.
`
`23 See the petition decision mailed on February 17, 201 1 in inter partes reexamination proceeding 951000,545.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1024.0008
`
`

`

`Inter Partes Reexamination Control No. 951001,390
`
`-7-
`
`Prosecution of the Present Proceeding is Terminated
`
`For the reasons given above, patent owner's April 3, 2014 petition under 37 CFR 1.182 to
`terminate the present inter partes reexamination proceeding is granted.
`
`Prosecution of inter partes reexamination proceeding control no. 95/001,390 is hereby
`terminated.
`
`The' 1390 inter parIes reexamination proceeding is being referred to the Central Reexamination
`Unit (CRU) for conclusion of that proceeding. The CRU will mail the present decision, and
`process the reexamination file to update the Image File Wrapper (IFW) records for this
`proceeding. The file will be assigned an 822 status. A copy of the PALM "Application Number
`Information" screen and the "Contents" screen will be printed, the printed copy will be annotated
`by adding the commerit "PROCEEDING CONCLUDED," and the annotated copy will then be
`scanned into Image File Wrapper (IFW) using the miscellaneous letter document code.
`
`CONCLUSION
`
`• Patent owner's April 3, 2014 petition under 37 CFR 1.182 to terminate inter partes
`reexamination proceeding control number 95/001,390 is granted.
`
`• Prosecution of the '1390 inter partes reexamination proceeding is hereby terminated and
`will be concluded.
`
`• The' 1390 inter partes reexamination proceeding is being referred to the Central·
`Reexamination Unit (CRU) for further processing to conclude the' 1390 proceeding, as
`set forth in this decision.
`
`• Telephone inquiries related to this decision should be directed to the undersigned at (571)
`272-7724.
`
`~4±i.tL,~~
`
`Cynthi lL. Nessler
`Senior Legal Advisor
`Office of Patent Legal Administration
`
`"-'
`
`8/4/2014
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1024.0009
`
`

`

`Application Number Information
`
`Application Number: 95/001390 :\ssignments
`Filing or 371 (c) Date: 07/0212010 eDan
`Effective Date: 07/0212010
`Application Received: 07/0212010
`Patent Number:
`Issue Date: 00/00/0000
`Date of Abandonment: 00/00/0000
`Attorney Docket Number: 0690.0001L
`Status: 822 /DECISION V ACA TING REEXAM
`Confirmation Number: 8872
`Title of Invention: MULTILEVEL ANTENNAE
`
`AlA (First Inventor to File): NO
`Examiner Number: 78342/ MENEFEE, JAMES
`Group Art Unit: 3992
`Class/Subclass: 343/800.000
`Appeal Number: 2013010510
`Unmatched Petition: NO
`L&R Code: Secrecy Code:l
`Third Level Review: NO
`
`Oral Hearing: NO
`
`TYPE ENT: V
`IFW Madras
`
`Waiting for Response Desc.
`MuilAPDA
`CPA Processing
`CPA Processing
`
`Secrecy Order: NO
`Status Date: 08/05/2014
`Lost Case: NO
`
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`
`ZTE V Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1024.0010
`
`