UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`MAILED
`NOV ~ 3 Z012
`OFFICE Or PETITIONS
`For Third Party Requester
`
`: For Patent Owner
`
`Novak Druce + Quigg LLP
`(NDQ Reexamination Group)
`1000 Louisiana St.
`53rd Floor
`Houston, Texas 77002
`
`Edell, Shapiro, & Finnan
`1901 Research Boulevard
`Suite 400
`Rockville, MD 20850
`
`In re Patent No. 7,394,432
`Ku et al.
`Issue Date: July 1, 2008
`Control No. 95/002,349
`Filed: September 14,2012
`Attorney Docket No. 1235-019
`Title: Built in Antenna Modular for Portable
`Wireless Terminal
`
`: DECISION ON PETITION FOR
`: AUTHORIZATION TO FILE
`: SECOND REQUEST FOR
`: INTER PARTES
`: REEXAMINATION
`
`This is a decision on third party requester's September 14, 2012 petition entitled "PETITION
`PURSUANT TO 35 U.S.C. § 317(a) AND 37 C.F.R. § 37 C.F.R. § 1.907(a) FOR
`AUTHORIZATION TO FILE A SUBSEQUENT REQUEST FOR INTER PARTES
`REEXAMINATION, AND IF NECESSARY, 37 C.F.R. § 1.183.
`
`The fee set forth in 37 CFR 1.17(t) for the third party requester-petitioner is $400.00, and it was
`charged to Deposit Account No. 14-1437.
`
`Thirp Party Requester-Petitioner's petition is before the Office of Patent Legal Administration,
`Office of Deputy Commissioner for Patent Examination Policy.
`
`Third Party Requester-Petitioner's petition is DISMISSED for the reasons set for below.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1026.0001
`
`

`

`Reexamination No. 951002,349
`
`Page 2
`
`This decision constitutes notice that, pursuant to 37 CFR 1.915(d), the filing date of September
`14, 2012, which was assigned to the request papers for the above-captioned inter partes
`reexamination proceeding is hereby vacated, as the certification that "the estoppel provisions of
`37 CFR 1.907 do not prohibit this reexamination" in the reexamination transmittal form is not
`correct, because the present petition for authorization to file a subsequent request for inter partes
`reexamination has not been granted. Thus, the estoppel provisions of 35 U.S.C. § 317(a) and 37
`CFR 1.907(a) do prohibit this reexamination. 1
`
`The proceeding as a whole is hereby vacated, and is being referred to the Central Reexamination
`Unit, to terminate preprocessing of the request.
`
`Unless otherwise indicated, all citations to 35 U.S.C. Chapter 31 (i.e., 35 U.S.C. §§ 311-318) are
`to the statute in effect as of the date of deposit of the present inter partes reexamination request.
`
`Background
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`U.S. Patent No. 7,394,432 (hereinafter, the '432 patent) issued Baliarda et al. on July I,
`2008 with 6 claims.
`
`On May 5, 2009, Patent owner filed a suit alleging infringement of the '432 patent by
`Samsung Electronics Co., Ltd.
`(Third Party Requester-Petitioner),
`Kyocera
`Communications Inc., and HTC Corporation and HTC America, Inc. The suit was filed
`in the U.S. District Court for the Eastern District of Texas, and styled Fractus, SA. v .
`. Samsung Electronics Co., Ltd. et ai., No. 6:09-cv-0203.
`
`A first request for inter partes reexamination of the '432 patent was filed on November
`11, 2010, identifying Samsung Electronics Co. Ltd., as the real party in interest. The
`request was accorded control number 951001,483 (hereinafter the'1483) and the specific
`claims for which reexamination was requested were 1-3 and 6.
`
`A second request for inter partes reexamination of the '432 patent was filed on December
`3, 2010, identifying HTC Corporation and HTC America, Inc. as the real parties in
`interest. The request was accorded control number 95/001,500 (hereinafter the '1500
`proceeding) and the specific claims for which reexamination was requested were 1-3 and
`6.
`
`A third request for inter partes reexamination of the '432 patent was filed on December
`13, 2010, identifying Kyocera Communications, Inc. as the real party in interest. The
`request was accorded control number 951000,588(hereinafter the '588 proceeding) and
`the specific claims for which reexamination was requested were 1-3, and 6.
`
`I In initially granting a filing date to the proceeding, the Office interpreted requester's certification as asserting that
`(I) the 37 CFR I. 907(b) estoppel does not apply; and (2) that the estoppel of37 CFR 1. 907(a) would not apply in
`the event that the Director were to authorize the filing of this reexamination request by granting of the concurrently
`filed petition.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1026.0002
`
`

`

`Reexamination No. 95/002,349
`
`Page 3
`
`6.
`
`7.
`
`8.
`
`9.
`
`The '1483, '1500 and '588 reexamination proceedings were merged into a single
`proceeding on March 17, 2011.
`
`On September 14,2012, a fourth request for inter partes reexamination of the '432 patent
`was deposited with the Office. The request identified Samsung Electronics Co. Ltd., as
`the real party in interest. The deposited request was assigned Control No. 95/002,349
`(hereinafter the '349 proceeding) and the specific claims for which reexamination was
`requested were claims 1 and 6. The request included a certification that the estoppel
`provisions of 37 CFR 1.907 do not prohibit this reexamination?
`
`Concurrently, on September 14, 2012, Third Party Requester-Petitioner Samsung filed a
`petition seeking Director authorization for
`the filing of a second
`inter partes
`reexamination request prior to the issuance and publication of the inter partes
`reexamination certificate in the '2349 reexamination proceeding. 3 It is this petition that is
`the subject of this decision.
`
`The Third Party Requester-Petitioner asserts that a reasonable likelihood exists that it will
`prevail with respect to at least one claim under 37 CFR 1.915(b) based upon the
`following references: The requester cited the following U.S. patents Yang 6,300,914;
`Pankinaho 6,140,966; Gangreat 6,133,879; and Yanagisawa 5,995,064. None of the
`references formed the basis of any proposed substantial new question or proposed or
`other rejection in the' 1389 reexamination proceedings.
`
`10.
`
`On October 3, 2012, a "Notice of Inter Partes Reexamination Request Filing Date" was
`mailed for the '2349 proceeding. The notice assigned the filing date of September 14,
`2012 to the request for reexamination.
`
`RELEVANT STATUTES, REGULATIONS,AND EXAMINING PROCEDURE
`
`35'U.S.C. § 317 Inter partes reexamination prohibited
`
`(a) Order for Reexamination. Notwithstanding any provision of this chapter, once an
`order for inter partes reexamination of a patent has been issued under section 3 13,
`neither the third-party requester nor its privies, may file a subsequent request for
`inter partes reexamination of the patent until an inter partes reexamination certificate
`is issued and published under section 316, unless authorized by the Director.
`(Emphasis added.)
`
`2 See previous footnote
`3 The' 1483 inter partes reexamination pr~ceeding filed by Samsung Electronics Ltd. is still pending, and thus, by
`statute, the filing of the present second inter partes reexamination proceeding by requester Samsung Electronics Ltd
`is prohibited without the authorization of the Director. See 35 U.S.C. § 317(a).
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1026.0003
`
`

`

`Reexamination No. 95/002,349
`
`Page 4
`
`(b) FINAL DECISION. Once a final decision has been entered against a party in a
`civil action arising in whole or in part under section 1338 of title 28, that the party
`has not sustained its burden of proving the invalidity of any patent claim in suit or if
`a final decision in an inter partes reexamination proceeding instituted by a third-party
`requester is favorable to the patentability of any original or proposed amended or
`new claim of the patent, 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 could 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, notwithstanding any other provision of this chapter. 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.
`
`§ 1.907 Inter partes reexamination prohibited.
`
`(a) Once an order to reexamine has been issued under § 1.931, neither the third party
`inter partes
`requester, nor
`its privies, may file a subsequent request for
`reexamination of the patent until an inter partes reexamination certificate is issued
`under § 1.997, unless authorized by the Commissioner.
`
`(c) If a final decision in an inter partes reexamination proceeding instituted by a
`third party requester is favorable to patentability of any original, proposed amended,
`or new claims of the patent, then neither that party nor its privies may thereafter
`request inter partes reexamination of any such patent claims on the basis of issues
`which that party, or its privies, raised or could have raised in such inter partes
`reexamination proceeding.
`
`MPEP § 2640 Decision on Request (emphasis added in bold)
`
`II. SECOND OR SUBSEQUENT REQUEST FILED DURING REEXAMINATION
`
`*****
`Where an ordered inter partes reexamination is pending, and an inter partes
`reexamination request is subsequently filed, the prohibition provision of 37 CFR
`1.907(a) must be borne in mind. Once an order for inter partes reexamination has
`been issued, neither the third party requester of the inter partes reexamination, nor
`its privies, may file a subsequent request for inter partes reexamination of the same
`patent until an inter partes reexamination certificate has been issued, unless
`expressly authorized by the Director of the Office. Note that 37 CFR 1.907(a) tracks
`the statutory provision of 35 U.S.C. 317(a). A petition for such express authorization
`is a request for extraordinary relief and will not be granted where there is a more
`conventional avenue to accomplish the same purpose and provide relief analogous to
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1026.0004
`
`

`

`Reexamination No. 951002,349
`
`Page 5
`
`that requested. See also Cantello v. Rasmussen, 220 USPQ 664 (Comm'r Pat. 1982)
`for the principle that extraordinary relief will not normally be considered if the rules
`provide an avenue for obtaining the relief sought.
`
`*****
`
`DECISION
`
`I. Third Party Requester's Petition of September 14,2012
`
`Third Party Requester-Petitioner is seeking that the Director, in his discretion pursuant to 35
`U.S.C. § 317(a), authorize the Third Party Requester-Petitioner to file a second request "for inter
`partes reexamination for claims 1 and 6 of U.S. Patent No. 7,394,432 B2" prior to the issuance
`and pUblication of an inter partes certificate in the' 1483 inter partes reexamination proceeding.4
`Third Party Requester-Petitioner asserts that due to the America Invents Act (hereinafter referred
`to as "AlA"), as of September 16, 2012, requester can no longer seek, as a matter of right, any
`inter partes relief concerning the patentability of the claims of the '208 patent.
`
`Petitioner notes that the AlA eliminated new inter partes reexamination filings on/after
`September 16, 2012, and that the AlA provides that "[a]n inter partes review may not be
`instituted if the petition requesting the proceeding is filed more than 1 year after the date the
`petitioner is served with a complaint alleging infringement of the patent." 35 U.S.C. § 31S(a)
`(effective September 16,2012). Petitioner points out that because it was served with a complaint
`of infringement of the '208 patent more than one year ago, it may not file a petition for inter
`partes review. 5 Accordingly, petitioner asserts that without relief through this petition to permit
`a second inter partes reexamination, it "will not have any avenue for a further inter partes
`challenge to the patentability of the '208 Patent.,,6
`
`Petitioner contends that justice dictates that it be allowed to file this additional inter partes
`reexamination request, because none of the four references relied upon were part of the existing
`reexamination proceedings and two of the references were only recently discovered. 7
`
`Third Party Requester-Petitioner asserts that a petitioner who discovers prior art subsequent to
`the filing the ordered inter partes reexamination proceeding has only three alternatives to bring
`new proposed rejections before the Office prior to September 16,2012. The alternatives asserted
`are the following:
`
`1. Initiate an ex parte reexamination of the patent;
`
`4 The undersigned notes that the deposited inter partes reexamination request seeks reexamination of claims 1 and
`6. The petition is treated as a request for authorization for the entire inter partes reexamination request.
`S Petition at 1.
`6 1d.
`7 Petition at 8.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1026.0005
`
`

`

`Reexamination No. 95/002,349
`
`Page 6
`
`2. Initiate an inter partes reexamination of the patent after the certificate issues in the
`ongoing reexamination; and
`
`3. File a petition under 35 U.S.C. § 317(a) to authorize the filing of the new inter partes
`reexamination prior to the certificate issuing in the ongoing reexamination. 8
`
`Petitioner also asserts that, for a request filed on/after September 16th
`, 2012, a fourth remedy
`available is the filing of an inter partes review under 35 U.S.C. § 314 (effective September 16,
`2012).
`
`The petitioner argues that the Director should exercise discretion to authorize the filing of the
`present additional inter partes reexamination as authorized by 35 U.S.C. §317(a) and 37 CFR
`1.907(a), because, absent such authorization, none of the potential alternative remedies protect
`the interest of the third party-requester petitioner. Petitioner states that failure to authorize the
`request would disadvantage petitioner in that there would be no inter partes relief available to
`third party requester-petitioner as a matter of right, concerning the '432 patent.
`
`Petitioner points out that inter partes reexamination would be unavailable to third-party
`requester-petitioner because 35 U.S.C. § 317(a) and 37 CFR 1.907 prevent the filing of an
`additional inter partes reexamination until a reexamination certificate is issued unless authorized
`by the Director. Since the certificate would not be issued prior to September 16,2012, the date
`in which the Leahy-Smith America Invents Aet ("AlA") precludes the submission of any new
`request for inter partes reexamination, requester would lose the ability to file an inter partes
`reexamination request unless the Office authorizes the third party requester-petitioner to file the
`present request notwithstanding a pending inter partes reexamination proceeding.
`
`Third party requester-petitioner asserts that inter partes review is unavailable be,cause 35 U.S.C.
`§ 315(b ) (effective September 16, 2012) precludes the filing of a request under the inter partes
`review statute, where, as here, the complaint for the infringement action was filed more than one
`year ago. 9
`
`Petitioner further argues that the present situation amounts to extraordinary situation that
`warrants that granting of relief under 37 CFR 1.183. Petitioner asserts that the situation was
`triggered by Patent Owner's procedural delays in prolonging the period of time to conclude
`prosecution on the merits. Third Party Requester-Petitioner asserts that 16 months accrued
`between the time of receipt of a non-final action and the Action Closing Prosecution. Given the
`asserted procedural delays by Patent Owner, the ability of the Office to act with special dispatch
`
`8 Petition at 10.
`9 As for the filing of anew request for inter partes review conducted by the Patent Trial and Appeal Board, the
`Office acknowledges that the Third Party Requester-Petitioner is correct in that it would be precluded from filing a
`request for inter partes review because litigation was filed more than one year prior to any potential filing of any
`inter partes review. See 35 U.S.c. 3J5(b) America Invents Act §6(a). Patent owner filed a civil action in 2009,
`which has been on-going more than one year, Accordingly, inter partes review is not a viable option.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1026.0006
`
`

`

`Reexamination No. 95/002,349
`
`Page 7
`
`has been impacted and the proceeding has not been concluded with a certificate prior to
`September 16,2012.
`
`II. Analysis and Decision
`
`The Third Party Requester-Petitioner's petition is DISMISSED. Petitioner requests a 35 U.S.C.
`§ 317(a) authorization to file its second request for inter partes reexamination. In MPEP 2640,
`the Office explains that a petition is required for the 35 U.S.C. 317(a) authorization to file the
`second reexamination, and the petition is "a request for extraordinary relief'; petitioner has filed
`such a petition for authorization. The burden of establishing facts and circumstances to establish
`an extraordinary situation to justify the Office exercising its discretion to authorize the second
`reexamination is on the party requesting its second inter partes reexamination (prior to the
`issuance of the reexamination certificate concluding the prior inter partes reexamination
`. proceeding). In this instance, requester has not satisfied that burden.
`
`The statutory 35 U.S.C. § 317 estoppel as to a second filing of an inter partes reexamination by a
`party, and the § 317(a) exception to that estoppel only where the Director authorizes a
`subsequent inter partes reexamination request, are statutory safeguards provided for patent
`owners, as can be understood from the legislative history of 35 U.S.C. § 317, which provides
`(emphasis added):
`
`"Subtitle F creates a new section 317 which sets forth certain conditions by which
`inter partes reexamination is prohibited to guard against harassment of a patent
`holder.
`In general, once an order for inter partes reexamination has been issued,
`neither a third-party requester nor the patent owner may file a subsequent request for
`inter partes reexamination until an inter partes reexamination certificate is issued and
`published, unless authorized by the Director."
`
`106 Congo Rec. S14720, (Nov. 17, 1999) (emphasis added).
`
`Congress enacted the 35 U.S.C. § 317 estoppel structure in a way designed to prevent harassment
`of the patent owner by a party (or its privies) filing a multiple inter partes reexaminations for the
`same patent. Under § 317(a), once an inter partes reexamination is ordered on a patent, the
`requester (and its privies) may not file a subsequent request on the same patent until the
`reexamination certificate issues, absent an authorization from the Director. Under § 317(b), if a
`claim involved in an inter partes reexamination initiated by requester survives the proceeding,
`the requester (and its privies) are prohibited from requesting a subsequent inter partes
`reexamination of that claim on grounds that were raised or could have been raised in the initial
`reexamination.
`
`Thus, after an inter partes reexamination has been ordered and is ongoing, requester must wait
`until its conclusion, and then may file a second inter partes reexamination only on issues
`requester could not have raised in the first one. Congress did enact an exception to the rule that
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1026.0007
`
`

`

`Reexamination No. 951002,349
`
`Page 8
`
`requester must wait until conclusion, but that exception operates only if the Director authorizes
`filing a second inter partes reexamination while the first is pending.
`
`Since Congress did not pennit a requester to raise issues the requester could have raised in the
`first inter partes reexamination in a second inter partes reexamination filed after the first
`reexamination has concluded, it would not be appropriate to pennit a requester to raise issues the
`requester could have raised in the first inter partes reexamination in a second inter partes
`reexamination filed prior to the first reexamination being concluded (where the patent owner
`would have to defend against the second reexamination at the same time as the first). Thus, to
`obtain authorization for the second reexamination, a requester would need to show that the
`proposed grounds for the second reexamination could not have been raised earlier. 10 In short,
`authorization for the second reexamination will not be pennitted to circumvent the "could have
`been raised" estoppel provision of § 317(b).
`
`In the present instance, all claims being requested in this filing are under rejection in the merged
`proceeding. Requester must demonstrate why the newly proposed grounds of this reexamination
`could not have been raised earlier.
`
`In an effort to satisfy its burden to obtain §317(a) "authorization" for its second inter partes
`reexamination, requester relies on two main points:
`
`1. The unavailability of inter partes reexamination requests after September 16, 2012
`(i.e., the inability to file such a proceeding after the conclusion of the' 1389 proceeding) deprives
`requester of the ability to file a subsequent inter partes reexamination request and obtain inter
`partes participation absent such authorization; 11 and
`2. Delay in the processing of the' 1483 proceeding is the cause for the inability to file a
`second request as of the deposit date of September 14, 2012. (i.e., if the' 1483 proceeding had
`tenninated and been concluded with the issuance of a reexamination certificate, requester would
`have been able to file without requesting authorization from the Director.)
`
`These points are not persuasive for the requested authorization, because requester has not
`additionally demonstrated why the newly proposed grounds of this reexamination could not have
`been raised earlier, as will be discussed in detail later in this decision. In this regard, it is noted
`that the fact Congress has chosen to remove inter partes reexamination as an available procedure
`for challenging a patent is not, in and of itself, grounds for granting such a petition authorizing
`such a request. Furthennore, the fact that inter partes review is unavailable for situations where
`suit has been filed more than one year prior to September 16, 2012, was known to Congress; yet,
`the inter partes review statute was enacted without any provision for mitigating this situation
`where a first inter partes reexamination is still pending (and it was to be expected by Congress
`that there would be many pending many such proceedings inter partes reexamination pending,
`
`10 If a request deals with a claim that was not the subject of the first reexamination, the requester would need to
`show why that claim was not included earlier with the art being applied.
`II Requester points out that the new inter partes review available as of September 16, 2012, is not an option in this
`instance because suit has been filed more than 1 year prior to September 16, 2012.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1026.0008
`
`

`

`Reexamination No. 95/002,349
`
`. Page 9
`
`some of which would have the inter partes review litigation bar). That situation is not a per se
`reason for granting authorization, because if it were, then Congress would have explicitly
`included (in the AlA enactment) a revision of the inter partes reexamination statute authorizing a
`second inter partes reexamination (in the inter partes review enactment), in any situation where
`a requester's inter partes reexamination is pending and inter partes review is not available
`because suit has been filed more than 1 year previously.
`
`As to petitioner's assertion that the present situation was triggered by Patent Owner's procedural
`delays in prolonging the period of time to conclude prosecution on the merits of the ongoing
`inter partes reexamination proceeding, requester has not established that the petitioning was
`unwarranted, nor that the petitions account for the merged inter partes reexamination proceeding
`still being pending prior to September 16,2012. First, the time between the first non-final Office
`with the and the ACP in July of 2012 (16 months) is not solely attributable to patent owner
`activities. The filing of two other inter partes reexamination requests by defendants in the same
`litigation 12 led to merger of the proceedings and the issuan~e of a new non-final rejection in July
`2011. Additionally, even if the extensive petitioning asserted by requester did not occur, the
`95/001,483 inter partes reexamination proceeding would likely still be in progress, as many
`claims are under rejection, and patent owner could reasonably be expected to appeal such
`rejections. 13
`
`As to the petitioner not having met its burden to demonstrate why the newly proposed grounds of
`this reexamination could not have been raised earlier, the following is pointed out. Requester
`states that two of the prior art documents that form the basis of this request were "not discovered
`until recently, in approximately September 2012",14 The documents which requester puts forth
`as the basis of the current request are not new documents, and they are not documents which
`were "not readily available" at the time of filing of the '1483 reexamination request. They were
`available as of their publication d<;ltes as U.S. patents. Petitioner has not provided any
`explanation as to how these documents were discovered nor why these documents - U.S. patents
`issued more than a decade ago - were not previously available and why they were not included
`in the earlier reexamination request. For example, no explanation has been provided as to why a
`search for the most relevant art was not performed prior to the filing of the first reexamination
`request, to ensure completeness of that request.
`
`Petitioner has not met the burden of showing why the Director should authorize this second
`filing by real-party in interest, Samsung Electronics Co., Ltd. Accordingly the request for
`authorization to file this second inter partes reexamination request prior to the issuance of the
`reexamination certificate on the' 1483 request is not granted.
`
`It is further to be noted, that MPEP 2640 points out with respect to a 35 U.S.C. § 317(a)
`authorization that the request for this extraordinary relief "will not be granted where there is a
`
`12 The'ISO) and'S91 proceedings filed in December 2010.
`13 If patent owner were not to appeal the rejections, then the claims would be cancelled and petitioner would not be
`requesting a second reexamination.
`14 Petition page 2, Fact 5
`
`ZTE v Fractus
`IPR2018·01461
`
`ZTE
`Exhibit 1026.0009
`
`

`

`Reexamination No. 95/002,349
`
`Page 10
`
`more conventional avenue to accomplish the same purpose and provide relief analogous to that
`requested. See also Cantello v. Rasmussen, 220 USPQ 664 (Comm'r Pat. 1982) for the principle
`that extraordinary relief will not normally be considered if the rules provide an avenue for
`obtaining the relief sought." In this instance, although petitioner expresses the requested relief as
`the ability to participate in an inter partes proceeding within the Office, the underlying relief
`requested is seen to be the ability to have the patent claims reviewed in light of the prior art
`identified in this second request.
`
`In this regard, petitioner continues to have two remedies - (a) at the agency, via ex parte
`reexamination, and (b) in the district court, via the infringement action - that would address
`invalidity of the patent based upon the submitted prior art.
`
`First, the Third Party Requester-Petitioner is a defendant in a civil 'action that was filed by patent
`owner in the United States District Court for the Eastern District of Texas (No. 6:09-cv-00203).
`As a defense to such litigation, Third Party Requester-Petitioner can raise issues of invalidity of
`the patent or any claim in the suit or any ground specified in Part II of U.S. Code Title 35 as a
`condition of patentability, See 35 U.S.C. § 282. Accordingly, Third Party Requester-Petitioner
`may assert invalidity based upon novelty and non-obviousness as defense in the lawsuit. In the
`civil action, Third Party Requester-Petitioner may cite the same prior art against the patent that
`was cited in the present request for inter partes reexamination. ls
`
`In addition, the Third Party Requester-Petitioner seeking a review of the prior art by the Office
`can submit its request as a request for ex parte reexamination of the patent under 35 U.S.C. §
`302. Unlike the limitations in inter partes reexamination proceedings that prevent the filing of
`a second request by a third party requester or hislher privies once an order for reexamination of
`the patent has been issued, there is no such prohibition in the filing of the ex parte
`reexamination request. If an ex parte reexamination request is filed, the Office will determine
`whether or not a substantial new question of patentability affecting any of the claims of the
`patent is raised by the request. The standard of whether the patent raises a substantial new
`question of patentability is different than the standard in an inter partes reexamination
`proceeding that was filed on/after September 16, 2011, the date of enactment of the America
`Invents Act. 16 Accordingly, the likelihood of the Office ordering the ex parte reexamination
`request may be different than the likelihood of the Office ordering the inter partes reexamination
`request. Moreover, like inter partes reexamination, upon grant of the request for an ex parte
`reexamination, the proceeding will be handled with special dispatch. See 35 U.S.C. § 305. In
`addition, ex parte reexamination proceedings do not have the same estoppel provisions that inter
`partes reexamination proceedings have.
`
`ISIS The request for inter partes reexamination includes the following patents; (a) Gangreat et al 6,133,879 ; (b)
`Yanagisawa et al. 5,995,064; Pankinaho 6,140,966; and (d) Yang 6,300,914.
`16 The Office acknowledges that under certain situations the standard in the inter partes reexamination request may
`be more favorable because the standard, reasonable likelihood of prevailing know longer requires "new" issues.
`However, that issue is moot under the present factual facts because none of the identified references would be
`precluded under an ex parte reexamination request.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1026.0010
`
`

`

`Reexamination No. 951002,349
`
`Page 11
`
`Thus, there are two conventional avenues to accomplish the requester's purpose and provide
`relief analogous to that requested, i.e., review of the patent based on the cited prior art. While in
`this instance, resort to ex parte reexamination, and/or the district court apparently- is not the relief
`requester prefers; these avenues do provide the relief ultimately sought, i.e., review of the claims
`in view of the prior art publications. Requester~s desire for a new inter partes reexamination
`while a first (merged proceeding) is pending is not found to outweigh the policy considerations
`discussed above.
`
`Conclusion
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`The Third Party Requester petition under 35 U.S.C. 317(a) and 37 CFR 1.907(a) is
`dismissed.
`
`The filing date assigned to the request papers is hereby vacated, as is the inter partes
`reexamination proceeding, because the certification that "the estoppel provisions of 37
`CFR 1.907 do not prohibit this reexamination" in the reexamination transmittal form is
`not correct, because the present petition for authorization to file a subsequent request for
`inter partes reexamination has not been granted. Thus, the estoppel provisions of 35
`U.S.C. § 317(a) and 37 CFR 1.907(a) prohibit this reexamination.
`
`The papers of the IFW record for the '2349 proceeding will be marked "closed" and
`"non-public," and not constitute part of the public record. The present decision will,
`however, remain open to the public.
`
`A refund of the $8,800 reexamination filing fee will be made to requester in due course.
`
`The vacated inter partes reexamination proceeding is hereby referred to the Central
`Reexamination Unit, to terminate preprocessing of the request, including marking the file
`papers "closed" and "non-public," and making the refund of the reexamination filing fee.
`
`Telephone inquiries with regard to this decision should be directed to Kery A. Fries,
`Senior Legal Advisor, at 571-272-7757.
`
`,..-
`1/
`l~c,r~
`Kery klFries
`Senior Legal Advisor
`Office of Patent Legal Administration
`O