UNITED STATES PATENT AND TRADEMARK OFFICE
`—————————————
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`—————————————
`
`ZTE (USA), INC.
`Petitioner,
`v.
`FRACTUS S.A.,
`Patent Owner.
`
`—————————————
`
`IPR No. IPR2018-01461
`U.S. Patent No. 9,054,421
`—————————————
`
`
`PETITIONER’S UPDATED MANDATORY NOTICES
`
`
`
`
`
`
`
`
`
`
`—————————————
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`—————————————
`
`ZTE (USA), INC.
`Petitioner,
`v.
`FRACTUS S.A.,
`Patent Owner.
`
`—————————————
`
`IPR No. IPR2018-01461
`U.S. Patent No. 9,054,421
`—————————————
`
`
`PETITIONER’S UPDATED MANDATORY NOTICES
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-01461
`U.S. Pat. No. 9,054,421
`
`A. Real Party-in-Interest
`Petitioner identifies ZTE Corporation, ZTE (USA), Inc. and ZTE (TX), Inc.
`
`as the real parties-in-interest.
`
`B. Related Matters
`Petitioner is contemporaneously filing additional inter partes review (“IPR”)
`
`petitions on 6 patents that are based on the same specification 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).
`
`Patent Owner has alleged that Petitioner infringes these patents in Fractus,
`
`S.A. v. ZTE Corporation, ZTE (USA), Inc., and ZTE (TX), Inc., Civil Action No.
`
`3:18-cv-02838, which is pending in the U.S. District Court for the Northern District
`
`of Texas. Petitioner is not aware of other pending judicial or administrative matters
`
`that would affect, or be affected by, a decision in this proceeding.
`
`The ’421 patent has not been subject to any other litigation or PTO
`
`proceedings after its issuance, but it shares the same specification as several other
`
`patents that have been involved in the following proceedings.
`
`Two of the seven patents above (U.S. Patent Nos. 7,397,431 and 7,394,432)
`
`and several other patents claiming priority to the same specification, were the subject
`
`of the patent infringement lawsuit Fractus, S.A. v. Samsung et al., Civil Action No.
`
`
`
`1
`
`
`
`
`6:09-cv-00203-LED-JDL, filed in the U.S. District Court for the Eastern District of
`
`IPR2018-01461
`U.S. Pat. No. 9,054,421
`
`Texas in May of 2009. That litigation concluded in 2014, when the parties settled
`
`while the case was pending before the Federal Circuit.
`
`The ’421 patent was also related to the following PTO proceedings on patents
`
`issued from the same specification.
`
`Proceeding
`
`Inter partes reexamination
`of
` U.S. Patent No.
`7,394,432 (“ ’1483 IPX”)
`Inter partes reexamination
`of
` U.S. Patent No.
`7,394,432 (“ ’1500 IPX”)
`Inter partes reexamination
`of U.S. Patent No.
`7,394,432 (“ ’588 IPX”)
`Inter partes reexamination
`of
`
` U.S. Patent No.
`7,394,432 (“ ’2349 IPX”)
`Ex parte reexamination of
`U.S. Patent No. 7,394,432
`(“ ’3024 EPX”)
`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
`
`Case
`Number
`95/001,483
`
`Filed
`
`Status
`
`Nov. 11, 2010 Terminated
`
`95/001,500
`
`Dec. 3, 2010
`
`Terminated
`
`95/000,588
`
`Dec. 13, 2010 Terminated
`
`95/002,349
`
`Sep. 14, 2012 Dismissed
`
`90/013,024
`
`Oct. 9, 2013
`
`Certificate Issued
`
`IPR2014-
`00012
`
`Oct. 4, 2013
`
`Denied Institution
`
`95/001,482
`
`Nov. 11, 2010 Terminated
`
`95/001,497
`
`Dec. 3, 2010
`
`Terminated
`
`95/000,586
`
`Dec. 13, 2010 Terminated
`
`
`
`2
`
`
`
`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)
`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)
`
`
`
`
`
`
`
`IPR2018-01461
`U.S. Pat. No. 9,054,421
`
`95/002,346
`
`Sep. 14, 2012 Dismissed
`
`90/013,023
`
`Oct. 9, 2013
`
`Certificate Issued
`
`IPR2014-
`00011
`
`Oct. 4, 2013
`
`Denied Institution
`
`95/001,389
`
`Jul. 1, 2010
`
`Terminated
`
`95/001,501
`
`Dec. 3, 2010
`
`Dismissed
`
`95/000,591
`
`Dec. 14, 2010 Dismissed
`
`95/002,305
`
`Sep. 14, 2012 Dismissed
`
`90/013,022
`
`Oct. 9, 2013
`
`Certificate Issued
`
`IPR2014-
`00008
`
`Oct. 4, 2013
`
`Denied Institution
`
`95/001,455
`
`Sep. 30, 2010 Certificate Issued
`
`95/001,499
`
`Dec. 3, 2010
`
`Dismissed
`
`95/000,595
`
`Dec. 14, 2010 Certificate Issued
`
`IPR2014-
`00013
`
`Oct. 4, 2013
`
`Denied Institution
`
`3
`
`
`
`As explained in the concurrently filed petitions for the ’432 and ’431 patents,
`
`IPR2018-01461
`U.S. Pat. No. 9,054,421
`
`
`
`Samsung filed inter partes reexaminations on claims of those patents in November
`
`2010. The challenged claims were found invalid as anticipated by prior art
`
`references (described below) Misra I and Misra II. Patent Owner appealed to the
`
`Board. The parties settled, and the appeal was terminated on August 5, 2014 without
`
`issuance of any Reexamination Certificate. Samsung also filed ex parte
`
`reexaminations, which were not terminated due to the settlement. Patent Owner had
`
`to make amendments before claims were allowed.
`
`Notably, no claim of the related ’432 or ’431 patents was ever found valid in
`
`an inter partes procedure in the PTO, where an opposing party could respond to the
`
`Patent Owner’s arguments in favor of patentability. The claims in the ’421 patent
`
`are very similar to claims of the ’432 and ’431 patents, which were never allowed
`
`over the grounds of invalidity presented in this petition.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2018-01461
`U.S. Pat. No. 9,054,421
`
`Back-Up Counsel
`David P. Lindner
`Registration No. 53,222
`dlindner@brinksgilson.com
`
`Gang Chen
`Registration No. 68,754
`gchen@brinksgilson.com
`
`Andrea L. Shoffstall
`Registration No. 75,426
`ashoffstall@brinksgilson.com
`
`Brinks Gilson & Lione
`NBC Tower, Suite 3600
`455 N. Cityfront Plaza Dr.
`Chicago, Illinois 60611-5599
`Tel: (312) 321-4200
`Fax: (312) 321-4299
`
`
`
`C. Counsel and Service Information
`Lead Counsel
`James R. Sobieraj
`Registration No. 30,805
`jsobieraj@brinksgilson.com
`ZTE_FractusIPRs@brinksgilson.com
`
`Brinks Gilson & Lione
`NBC Tower, Suite 3600
`455 N. Cityfront Plaza Dr.
`Chicago, Illinois 60611-5599
`Tel: (312) 321-4200
`Fax: (312) 321-4299
`
`
`Respectfully submitted,
`
`
`
`
`September 30, 2019
`
`Date
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BRINKS GILSON & LIONE
`
`
`
`
` / James R. Sobieraj/
` James R. Sobieraj
`
`
`
`
`
`
`
`5
`
`
`
`
`
`IPR2018-01461
`U.S. Pat. No. 9,054,421
`
`CERTIFICATE OF SERVICE
`In accordance with 37 C.F.R. § 42.6(e), and pursuant to Patent Owner’s
`
`consent to service via email, the undersigned certifies that on the 30th day of
`
`September, 2019, a complete an entire copy of Petitioner’s Updated Mandatory
`
`Notice was served on counsel of record for Patent Owner via electronic mail to the
`
`following email addresses:
`
`
`
`
`
`
` September 30, 2019
`
`Date
`
`
`
`
`
`
`
`
`
`
`
`
`js@usiplaw.com
`pjf@usiplaw.com
`mjd@usiplaw.com
`
`Respectfully submitted,
`
`BRINKS GILSON & LIONE
`
`
`
`
`
`
` / James R. Sobieraj/
` James R. Sobieraj
`
`
`
`
`
`
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
