Paper 9
`Trials@uspto.gov
`Tel: 571-272-78 Entered: February 1, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZTE (USA) INC.,
`Petitioner,
`
`v.
`
`FRACTUS, S.A.,
`Patent Owner.
`
`Case IPR2018-01451 Patent 7,397,431 B2
`Case IPR2018-01455 Patent 7,394,432 B2
`Case IPR2018-01456 Patent 8,941,541 B2
`Case IPR2018-01457 Patent 8,976,069 B2
`Case IPR2018-01461 Patent 9,054,421 B2
`Case IPR2018-01462 Patent 9,240,632 B2
`Case IPR2018-01463 Patent 9,362,617 B21
`
`Before PATRICK M. BOUCHER, KEVIN C. TROCK,
`JOHN A. HUDALLA and AVELYN M. ROSS,
`Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`DECISION
`Granting Motion for District Court-Type Claim Construction
`37 C.F.R. § 42.100(b)(2016)
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`1 This Decision applies to each of the listed cases. We exercise our discretion
`to issue one Decision to be docketed in each case. The parties are not
`authorized to use a multiple case caption.
`
`
`
`Trials@uspto.gov
`Tel: 571-272-78 Entered: February 1, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZTE (USA) INC.,
`Petitioner,
`
`v.
`
`FRACTUS, S.A.,
`Patent Owner.
`
`Case IPR2018-01451 Patent 7,397,431 B2
`Case IPR2018-01455 Patent 7,394,432 B2
`Case IPR2018-01456 Patent 8,941,541 B2
`Case IPR2018-01457 Patent 8,976,069 B2
`Case IPR2018-01461 Patent 9,054,421 B2
`Case IPR2018-01462 Patent 9,240,632 B2
`Case IPR2018-01463 Patent 9,362,617 B21
`
`Before PATRICK M. BOUCHER, KEVIN C. TROCK,
`JOHN A. HUDALLA and AVELYN M. ROSS,
`Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`DECISION
`Granting Motion for District Court-Type Claim Construction
`37 C.F.R. § 42.100(b)(2016)
`
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`1 This Decision applies to each of the listed cases. We exercise our discretion
`to issue one Decision to be docketed in each case. The parties are not
`authorized to use a multiple case caption.
`
`
`
`
`
`
`DISCUSSION
`On November 19, 2018, Patent Owner contacted the Board by email
`with a “request to file Motions under 37 CFR 42.20 to Request a District
`Court-Type Claim Construction in inter partes reviews IPR2018-01456, -
`01451, -01455, -01457, and -01462.”2 Ex. 3001. In its email, Patent Owner
`also stated, “Patent Owner believes there is good cause for such motions
`because, among other things, the patents in IPR2018-01451, -01455, -01457,
`and -01462 will all expire within 18 months of the entry of the Notice of
`Filing Date Accorded to Petition, the patent in IPR2018-01456 will expire a
`few days later and before any appeal is concluded.” Id. On November 29,
`2018, the Board responded by email authorizing the request, and indicated
`that Patent Owner could also file such a motion in IPR2016-01461. Id.
`
`On December 7, 2018, Patent Owner filed a Motion for District Court-
`Type Claim Construction under 37 C.F.R. § 42.100(b)(2016) in all the cases
`identified in the Appendix (“these proceedings”), except for IPR2018-01463,
`in which the motion was filed on December 20, 2018, and IPR2018-01456, in
`which no motion was filed. Paper 8 (“Mot.”).3 In each Motion, Patent
`Owner certifies that the challenged patent will expire within 18 months of the
`entry of the Notice of Filing Date Accorded to Petition (Paper 8, 3), except
`for case IPR2018-01456, which Patent Owner indicates in its email request
`will expire a few days later, and requested that we apply a district court-type
`claim construction approach in each case (Paper 8, 2).
`
`
`2 Patent Owner made a similar request by email in IPR2018-01463 on December
`14, 2018, which was granted.
`3 Substantially identical papers were filed in each of the cases. Paper numbers and
`pages referenced are for IPR2018-01451.
`
`
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`2
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`On January 4, 2019, Petitioner filed a Response to each of the motions.
`Paper 10 (“Resp.”). In each of its Responses, Petitioner “agrees with Patent
`Owner that the underlying patent will expire within 18 months from the entry
`of the Notice of Filing Date Accorded to the instant Petition” (Paper 10, 1),
`and “agrees that the Board should construe the claims under the framework
`laid out in the Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).” Id.
`
` 37 C.F.R. § 42.100(b)(2016) provides that
`A party may request a district court-type claim construction approach
`to be applied if a party certifies that the involved patent will expire
`within 18 months from the entry of the Notice of Filing Date
`Accorded to Petition. The request, accompanied by a party’s
`certification, must be made in the form of a motion under § 42.20,
`within 30 days from the filing of the petition.
`The Petitions in these cases have filing dates of August 3, 2018, with
`the exception of IPR2018-01455, which has a filing date of August 2, 2018.
`What is not addressed by the parties in their papers, however, is the
`requirement in 37 C.F.R. § 42.100(b) that “[t]he request, accompanied by a
`party’s certification, must be made in the form of a motion under § 42.20,
`within 30 days from the filing of the petition.” 37 C.F.R. § 42.100(b)(2016)
`(emphasis added). Here, Patent Owner’s email sent to the Board requesting
`leave to file such a motion is dated November 16, 2018, well beyond the 30
`day time period.
`
`Petitioner explains that it “is contemporaneously filing additional inter
`partes review (“IPR”) petitions on 6 patents that are based on the same
`specification as the ’431 patent, namely U.S. Patent Nos. 7,394,432
`(IPR2018-01455); 8,941,541 (IPR2018-01456); 8,976,069 (IPR2018-01457);
`9,054,421 (IPR2018-01461); 9,240,632 (IPR2018- 01462); and 9,362,617
`(IPR2018-01463).” This suggests that any claim construction issues in these
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`3
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`proceedings may have substantial overlap, and that it would be appropriate to
`use the same claim construction standard in all of the cases, including
`IPR2018-01456.
`
`Moreover, the Board’s prior policy of using the Broadest Reasonable
`Interpretation (BRI) standard for construing unexpired and proposed
`amended patent claims in proceedings under the America Invents Act (AIA)
`has changed. For AIA petitions filed on or after November 13, 2018, the new
`standard is the same as that applied in Article III courts and the International
`Trade Commission (ITC) under Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
`Cir. 2005). 37 C.F.R. § 42.100(b) (2018); see also 83 Fed. Reg. 51340
`(Oct. 11, 2018) (revising the claim construction standard for interpreting
`claims in AIA proceedings before the Board). The new rule helps ensure,
`among other things, consistency in claim construction between the Board and
`proceedings in district court or at the ITC, and increases judicial efficiency.
`83 Fed. Reg. at 51342.
`
`Pursuant to 37 C.F.R. § 42.5, we have discretion to waive or suspend a
`requirement under Part 42. Given the identity of the parties in these
`proceedings, the apparent agreement by the parties to use the Phillips claim
`construction standard, the relationship among the patents being contested, the
`likelihood of significant overlap in claim construction issues, the recent
`change to use the Phillips claim construction standard by the Board, and the
`expected consistency and judicial efficiency of using a single claim
`construction standard in these cases, we waive the 30 day requirement of 37
`C.F.R. § 42.100(b) (2016) for these cases and grant each of Patent Owner’s
`Motions to use the Phillips claim construction standard in these proceedings,
`including IPR2018-01456.
`
`4
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`ORDER4
`
`It is, therefore,
`ORDERED that Patent Owner’s Motions for District Court-Type
`Claim Construction are granted; and
`
`FURTHER ORDERED that the Phillips claim construction standard
`shall be used in each of the above-captioned cases.
`
`
`4 This is not an order from an expanded panel of the Board. Judges Boucher,
`Trock, and Hudalla are paneled on IPR2018-01451, IPR2018-01455, IPR2018-
`01456, IPR2018-01457, and IPR2018-01461. Judges Boucher, Hudalla, and Ross
`are paneled on IPR2018-01462 and IPR2018-01463.
`5
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`PETITIONER:
`BRINKS GILSON & LIONE
`
`James Sobieraj
`Jon Beaupré
`David Lindner
`Gang Chen
`BRINKS GILSON & LIONE
`jsobieraj@brinksgilson.com
`jbeaupre@brinksgilson.com
`dlindner@brinksgilson.com
`gchen@brinksgilson.com
`
`PATENT OWNER:
`EDELL, SHAPIRO & FINNAN, LLC
`
`Jason Shapiro
`Patrick Finnan
`Mark J. DeBoy
`EDELL, SHAPIRO AND FINNAN, LLC
`js@usiplaw.com
`pjf@usiplaw.com
`mjd@usiplaw.com
`
`
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`6
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`APPENDIX
`
`
`Inter Partes Review
`Case IPR2018-01451
`Case IPR2018-01455
`Case IPR2018-01456
`Case IPR2018-01457
`Case IPR2018-01461
`Case IPR2018-01462
`Case IPR2018-01463
`
` U.S. Patent No.
` Patent 7,397,431 B2
` Patent 7,394,432 B2
` Patent 8,941,541 B2
` Patent 8,976,069 B2
` Patent 9,054,421 B2
` Patent 9,240,632 B2
` Patent 9,362,617 B2
`
`
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`7
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`
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