IPR2018-01461
`U.S. Pat. No. 9,054,421
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ZTE (USA), INC.
`Petitioner,
`v.
`FRACTUS S.A.,
`Patent Owner.
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`—————————————
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`IPR No. IPR2018-01461
`U.S. Patent No. 9,054,421
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`PETITIONER’S AUTHORIZED REPLY TO PATENT OWNER’S
`OPPOSITION TO PETITIONER’S REQUEST FOR REHEARING
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`U.S. Pat. No. 9,054,421
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ZTE (USA), INC.
`Petitioner,
`v.
`FRACTUS S.A.,
`Patent Owner.
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`—————————————
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`IPR No. IPR2018-01461
`U.S. Patent No. 9,054,421
`—————————————
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`PETITIONER’S AUTHORIZED REPLY TO PATENT OWNER’S
`OPPOSITION TO PETITIONER’S REQUEST FOR REHEARING
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`IPR2018-01461
`U.S. Pat. No. 9,054,421
`Pursuant to the Board’s Order of April 10, 2019, Petitioner files this reply.
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`Patent Owner Fails to Rebut Petitioner’s Arguments Regarding § 314(a)
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`Petitioner correctly informed the Board that the district court litigation was
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`stayed on October 4, 2018. (Ex. 1031.) Patent Owner points to two orders on March
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`15, 2019, but neither one states that the stay has been lifted. (Ex. 1032, Ex. 2038.)
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`On April 26, the court entered a Scheduling Order, setting a trial date of February 3,
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`2020, and Petitioner plans to move to stay the trial if institution is granted. The
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`institution decision should occur more than six months before trial begins, making
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`it more likely that the court will grant the stay. Patent Owner does not deny that the
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`court has granted stays under similar circumstances. Contrary to Patent Owner’s
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`assertion, the Board has considered the potential of a district court stay as a reason
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`to decline to exercise its discretion to deny a petition under § 314(a). See, e.g.,
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`Ericsson Inc. et al v. Intellectual Ventures II, LLC, IPR2018-01689, Paper 15 at 56
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`(April 16, 2019); Intuitive Surgical, Inc. v. Ethicon LLC, IPR2018-01703, Paper 7
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`at 11-12 (Feb. 19, 2019).
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`Patent Owner overstates the significance of the court’s claim construction
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`orders. In all three cases cited by Patent Owner, the Board declined to exercise its
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`discretion to deny institution due to current litigation, making it all but certain that
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`both the Board and district court would independently consider claim construction.
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`Moreover, the Board has granted institution on many occasions after a district court
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`1
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`had construed the claims. E.g., Chevron N. Am., Inc. et al v. Milwaukee Elec. Tool
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`IPR2018-01461
`U.S. Pat. No. 9,054,421
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`Corp., IPR2015-00597, Paper 24 at 5-7 (July 31, 2015); Orthopediatrics Corp. v.
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`K2M, Inc., IPR2018-00521, Paper 8 at 10 (June 28, 2018).
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`The Board also has noted that even “if there is a near certainty” that the same
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`invalidity grounds will be considered by a court and the Board, “the different
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`burdens of proof between our proceeding and the district court action still urge us
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`not to exercise discretion here to dismiss the petition, based on our concern for patent
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`quality and the integrity of the patent system.” See Ericsson at 56.
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`Recent Board decisions also continue to question whether NHK Spring
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`suggests that § 314(a) alone is a sufficient basis for discretionary denial based on the
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`status of concurrent litigation. See, e.g., Ericsson at 57; Intuitive Surgical at 12-13
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`Finally, Patent Owner does not dispute the absence of abuse here, as this
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`Petition is the first post-grant challenge to claims of the ’421 patent.
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`The Becton Dickinson Factors
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`Patent Owner fails to cite any authority for its argument that a petition must
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`include a discussion of the Becton Dickinson factors. The Petition here succinctly
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`explained how its grounds were substantially different from the grounds considered
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`during prior examinations. (Petition at 5, 8-9.) Given the word limit for a petition,
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`Petitioner could not reasonably anticipate and preemptively dispel all of the possible
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`arguments that a Patent Owner might make under § 325(d). And it is particularly
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`2
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`unreasonable to require the Petitioner to anticipate that the POPR here would provide
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`IPR2018-01461
`U.S. Pat. No. 9,054,421
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`such an extensively incomplete and misleading account of prior PTO proceedings.1
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`Patent Owner’s arguments regarding Petitioner’s request to file a reply to the
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`POPR are a red herring. It should be obvious that Petitioner disagreed with the
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`Board’s decision to deny Petitioner’s request to file a reply to the POPR. And the
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`Board’s reliance on the absence of a reply in its Decision denying institution, and its
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`April 10 order allowing additional briefing, suggest that the Board should have
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`allowed a reply to the POPR. But regardless, the issue at hand is not the correctness
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`of the Board’s decision on a reply to the POPR, but whether the Board abused its
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`discretion by misapprehending significant facts and unreasonably weighed the
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`relevant factors in its Decision to deny institution.
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`Patent Owner argues that the Board’s evaluation of the Becton Dickinson
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`factors was reasonable and correct because the ’421 examiner allegedly
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`“considered” Misra I, Misra II, Grangeat, and claims charts from prior
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`reexaminations. (PO Opposition at 4.) The only support for Patent Owner’s
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`argument is that these references are listed in the ’421 Patent under the heading
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`“References Cited.” But “cited” is not the same as “considered.” Patent Owner does
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`1 The Petition also could not anticipate an argument based on NHK Spring, because
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`that decision issued more than one month after the Petition was filed.
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`3
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`not deny that Misra I, Misra II, Grangeat, and the claims charts were
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`IPR2018-01461
`U.S. Pat. No. 9,054,421
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`inconspicuously buried in hundreds of IDS pages. The Board has repeatedly refused
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`to infer that the examiner actually considered a reference merely because it is listed
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`in an IDS. See, e.g, Groupon Inc. v. Kroy IP Holdings, LLC, IPR2019-00044, Paper
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`14 at 11 (April 19, 2019) (rejecting § 325(d) argument where a reference was one of
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`60 references on the IDS).
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`Patent Owner misses the point when it argues that some “non-patent
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`literature” included in the IDS explained the relevance of Misra I and Misra II and
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`references allegedly “cumulative” to Grangeat. (PO Opposition at 5.) The
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`undisputed fact is that this “non-patent literature” was buried among thousands of
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`other documents indiscriminately listed in the IDS. There is no reasonable basis to
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`assume that the Examiner made any meaningful review of those documents.
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`Patent Owner continues to make its fallacious argument that prior
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`reexaminations evaluated the art with respect to patents “sharing the same disclosure
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`as the ’421 Patent.” (PO Opposition at 4.) Patent Owner does not dispute that it is
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`an error of law to evaluate prior art against the specification, rather than against each
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`claim independently. (Request for Rehearing at 10-11.) Indeed, the Board has
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`recently rejected arguments for a discretionary denial based on a previous challenge
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`to different claims, noting the significance of different limitations in different claims.
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`See, e.g., Netflix, Inc. v. Realtime Adaptive Streaming LLC, IPR2018-01630, Paper
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`4
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`13 at 16-17 (April 19, 2019); Ericsson at 60-62.
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`IPR2018-01461
`U.S. Pat. No. 9,054,421
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`Patent Owner argues that “there is significant overlap with the IPR
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`documents” and prior reexaminations (PO Opposition at 4), but does not deny that
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`there are significant differences. Notably, the §103 grounds based on Grangeat and
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`Misra I/II in the Petition do not duplicate any prior challenge to the ’421 claims.2
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`Patent Owner also treats each Becton Dickinson factor as if it is entitled to
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`equal weight, and the net sum of the factors controls the outcome. But other cases
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`suggest that the Board’s decision can be more qualitative and turn on a few, more
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`significant factors. See, e.g., Facebook, Inc. et al. v. Search & Soc. Media Partners
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`LLC, IPR2108-01622, Paper 8 at 8-9 (March 4, 2019); Netflix at 16-17. Patent
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`Owner cannot refute the showing in Petitioner’s Request for Rehearing that the
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`Becton Dickinson factors, qualitatively and quantitatively, weigh against
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`discretionary denial.
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`Respectfully submitted,
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`BRINKS GILSON & LIONE
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`2 Patent Owner also ignores that in the prior reexaminations the PTO did not regard
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`Misra I and II, Grangeat, Chiba or Korisch as groupings of single-level antennas,
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`and that claims were allowed over Misra II based solely on a perimeter limitation
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`unrelated to single-level antennas.
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`5
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`IPR2018-01461
`U.S. Pat. No. 9,054,421
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` / James R. Sobieraj/
` James R. Sobieraj
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` May 3, 2019
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`Date
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`6
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`IPR2018-01461
`U.S. Pat. No. 9,054,421
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`CERTIFICATE OF SERVICE
`In accordance with 37 C.F.R. § 42.6(e), and pursuant to Patent Owner’s
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`consent to service via email, the undersigned certifies that on the 3rd day of May,
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`2019, a complete an entire copy of the foregoing Request for Rehearing Pursuant to
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`37 C.F.R. § 42.71(c)-(d) was served on counsel of record for Patent Owner via
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`electronic mail to the following email addresses:
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` May 3, 2019
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`Date
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`js@usiplaw.com
`pjf@usiplaw.com
`mjd@usiplaw.com
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`Respectfully submitted,
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`BRINKS GILSON & LIONE
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` / James R. Sobieraj/
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` James R. Sobieraj
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`7
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