`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ZTE (USA), INC.
`Petitioner,
`
`v.
`
`FRACTUS, S.A.
`Patent Owner.
`
`Case IPR2018-01461
`Patent 9,054,421
`
`PATENT OWNER’S MOTION FOR
`DISTRICT COURT-TYPE CLAIM CONSTRUCTION
`UNDER 37 C.F.R. § 42.20
`
`
`
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`
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`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`I. AUTHORIZATION
`
`Case IPR2018-01461
`Patent No. 9,054,421
`
`
`The Board authorized Patent Owner to file the present motion in an email to
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`counsel of record for both parties dated November 29, 2018.
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`II. RELIEF REQUESTED
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`Patent Owner Fractus, S.A. (“Patent Owner”) requests a district court-type
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`claim construction approach to be applied in this proceeding, in accordance with
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`37 C.F.R. § 42.20 and 37 C.F.R. § 42.100(b).
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`In 2016, the USPTO amended 37 C.F.R § 42.100(b) to give the Board
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`discretion to apply a district court-style claim construction approach “for claims of
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`patents that will expire before entry of a final written decision.” Amendments to
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`the Rules of Practice for Trials before the Patent Trial and Appeal Board, 81 Fed.
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`Reg. 18750, 18750 (Apr. 1, 2016). The amended rule allows a party to request a
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`district court-type claim construction approach to be applied “if a party certifies
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`that the involved patent will expire within 18 months from the entry of the Notice
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`of Filing Date Accorded to Petition.” Id., at 18766.
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`Here, the parties are in agreement that the involved patent will expire within
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`18 months from the entry of the Notice of Filing Date Accorded to Petition, and
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`Patent Owner certifies same below. See Certification, Section II, infra; see also
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`Petition, Paper 2, at 19. The parties are also in agreement that a district court-type
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`claim construction should be applied in this proceeding. See Petition, Paper 2, at
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`2
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`19 (“. . . the claims should be reviewed under the standard in Phillips v. AWH
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`Case IPR2018-01461
`Patent No. 9,054,421
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`Corp., 415 F.3d 1303 (Fed. Cir. 2005)(en banc)”), and Patent Owner Preliminary
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`Response, Paper 6, at 17. Accordingly, application of a district court-type claim
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`construction is appropriate.
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`II. CERTIFICATION
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`Patent Owner certifies that U.S. Patent No. 9,054,421 (“the ‘421 Patent”)
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`will expire within 18 months from the entry of the Notice of Filing Date Accorded
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`to Petition.
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`The ‘421 Patent is based on an application filed on January 2, 2013 and
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`claims priority through a series of continuing applications to an international
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`application filed on September 20, 1999. Ex. 1001, at pp. 1-2. The ‘421 Patent
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`includes 131 days of patent term adjustment. Id., at p. 1. The ‘421 Patent is
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`subject to a terminal disclaimer with respect to U.S. Patent No. 8,941,541, Ex.
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`2037, but the terminal disclaimer does not affect the term of the ‘421 Patent
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`because U.S. Patent No. 8,941,541 expires after the ‘421 Patent. Therefore, the
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`term of the ‘421 Patent expires on January 29, 2020. See 35 U.S.C. § 154(a)(2);
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`see also Petition, Paper 2, at 19 (“. . . the ’421 patent expires on January 29, 2020 .
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`. .”); and Patent Owner Preliminary Response, Paper 6, at 17.
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`The Notice of Filing Date Accorded to Petition was entered on September 7,
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`2018. The date that is 18 months from the Notice of Filing Date Accorded to
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`3
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`
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`Petition (i.e., March 7, 2020) is after the date of expiration of the ‘421 Patent (i.e.,
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`Case IPR2018-01461
`Patent No. 9,054,421
`
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`January 29, 2020). Thus, the ‘421 Patent will expire within 18 months of the
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`Notice of Filing Date Accorded to Petition.
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`Accordingly, Applicant requests that this motion for a district court-type
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`claim construction approach be granted.
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`Dated: December 7, 2018
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`Respectfully submitted,
`/Jason Shapiro/
`Jason Shapiro (Reg. No. 35,354)
`Attorney for Patent Owner
`Fractus, S.A.
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`4
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`
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`Case IPR2018-01461
`Patent No. 9,054,421
`
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that pursuant to 37 C.F.R. § 42.6(e), a copy of the
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`foregoing PATENT OWNER’S MOTION FOR DISTRICT COURT-TYPE
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`CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.20 was served via email (as
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`previously consented to by counsel) on December 7, 2018 to lead and backup
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`counsel of record for Petitioners as follows:
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`
`
`
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`James R. Sobieraj
`Reg. No. 30,805
`jsobieraj@brinksgilson.com
`ZTE_FractusIPRs@brinksgilson.com
`
`Jon H. Beaupré
`Reg. No. 54,729
`jbeaupre@brinksgilson.com
`
`David Lindner
`Reg. No. 53,222
`dlindner@brinksgilson.com
`
`Gang Chen
`Reg. No. 68,754
`gchen@brinksgilson.com
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`
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`Brinks Gilson & Lione,
`Tower, Suite 3600, NBC Tower
`455 N. Cityfront Plaza Drive
`Chicago, IL, 60611
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`Dated: December 7, 2018
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`
`
`
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`
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`
`
`/Mark J. DeBoy/
`Mark J. DeBoy (Reg. No. 66,983)
`Attorney for Patent Owner
`Fractus, S.A.
`
`5
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`
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