Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 11
`Entered: January 31, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CISCO SYSTEMS, INC.
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`____________
`
`
`Case IPR2018-01508
`Patent No. 8,155,012 B2
`____________
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 11
`Entered: January 31, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CISCO SYSTEMS, INC.
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`____________
`
`
`Case IPR2018-01508
`Patent No. 8,155,012 B2
`____________
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`IPR2018-01508
`Patent 8,155,012 B2
`
`
`I. INTRODUCTION
`
`A. Background
`
`Cisco Systems, Inc. (“Petitioner”) filed a Petition requesting an inter
`
`partes review of claims 1, 5, 6, 10, 13, 16, 22, 25, 26, 29, 30, 67, 73, 80, 88,
`
`106, 108, 114, 121, 129, and 147 (the “challenged claims”) of U.S. Patent
`
`No. 8,155,012 B2 (Ex. 1003, “the ’012 patent”). Paper 2 (“Pet.”), 1.
`
`Chrimar Systems, Inc. (“Patent Owner”) filed a Preliminary Response.
`
`Paper 7 (“Prelim. Resp.”). Petitioner filed a Reply to the Preliminary
`
`Response. Paper 9. Having considered the Petition, the Preliminary
`
`Response, the Reply, and the evidence of record, and applying the standard
`
`set forth in 35 U.S.C. § 314(a), which requires that Petitioner demonstrate a
`
`reasonable likelihood that it would prevail with respect to at least one
`
`challenged claim; we deny institution of inter partes review of the
`
`challenged claims of the ’012 patent.
`
`B. Related Matters
`
`
`
`Petitioner provides a list of a number of prior and pending related
`
`matters involving the ’012 patent. Pet. 1–2; Ex. 1017. In one of the listed
`
`cases, Petitioner filed a declaratory judgment action involving the ’012
`
`patent: Cisco Sys., Inc. v. ChriMar Sys. Inc., 2:17-cv-13770-AC-RSW
`
`(E.D. Mich.) (“’13770 lawsuit”). Pet. 1. A second case involving the ’012
`
`patent, Hewlett-Packard Enter. Co. v. ChriMar Sys. Inc., 2-17-cv-13784-
`
`AC-RSW (E.D. Mich.), was consolidated with the ’13770 lawsuit. Id.; see
`
`also Paper 5 (Patent Owner’s Mandatory Notice Listing Related Matters), 1;
`
`Pet. 2–6 (Ex. 1015)1 (a Docket Navigator Printout of Cases for the ’012
`
`
`1 Patent Owner alleges that the “vast majority” of the matters listed at pages
`2 through 6 of the Petition copied from Exhibit 1015 “are not pending.”
`
`2
`
`
`
`IPR2018-01508
`Patent 8,155,012 B2
`
`patent). Patent Owner lists another seven (7) lawsuits involving the ’012
`
`patent. Paper 5, 1–2.
`
`The Petition acknowledges “[t]he ’012 patent was also subject to
`
`IPR2016-00983 (“’983 IPR”) and IPR2016-01425 (“’01425 IPR”) based on
`
`different prior art and claims.” Pet. 10, n. 2. The ’983 and ’01425 IPRs both
`
`terminated upon settlement after institution. ’983 IPR, Paper 16; ’01425
`
`IPR, Paper 20.
`
`C. The ’012 Patent2
`
`The ’012 patent relates generally to a communication system
`
`“provided for generating and monitoring data over a pre-existing wiring or
`
`cables that connect pieces of networked computer equipment to a network.”
`
`Ex. 1003, 3:19–22. The ’012 patent discloses central module 15 and remote
`
`module 16 system for achieving identification of electronic computer
`
`equipment associated with computer network 17. Id. at 4:44–47. “[C]entral
`
`module 15 monitors remote module circuitry 16 that may be permanently
`
`attached to remote[] located electronic workstations such as personal
`
`computers 3A through 3D.” Id. at 4:53–56.
`
`
`Paper 5, 1, n1.
`
`2 See ’01425 IPR, Paper 15, 3–5.
`
`3
`
`
`
`IPR2018-01508
`Patent 8,155,012 B2
`
`
`Figure 3 of the ’012 patent is reproduced below:
`
`
`
`Figure 3 is a block diagram illustrating one embodiment of the
`
`invention. Ex. 1003, 3:52–53. As shown in Figure 3 of the ’012 patent
`
`above, “[r]emotely located personal computers 3A through 3D are each
`
`connected to the computer network 17 so as to provide widespread remote
`
`user access to the computer network 17.” Id. at 5:1–3. Data communication
`
`links, 2A through 2D, connects each of the respective personal computers
`
`3A through 3D to a hub 1. Id. at 5:4–6. Each data communication link,
`
`which can be a multi-wire cable, transmits and receives information between
`
`the personal computers and other communication devices on the network.
`
`Id. at 5:6–13. “Each pair of transmit wires and each pair of receive wires
`
`thereby form a current loop through one of the personal computers 3A
`
`through 3D.” Id. at 5:28–32.
`
`The central module 15 includes isolation power supply 8 to supply
`
`4
`
`
`
`IPR2018-01508
`Patent 8,155,012 B2
`
`continuous direct current (DC) to each of the current loops 2A through 2D.
`
`Id. at 5:33–35. A signal modulator 7 alters the voltage received from power
`
`supply 8 based upon status data received from encoder 9. Ex. 1003, 53–56.
`
`The encoder receives its status data from the firmware kernel 4. Id. at 5:56–
`
`57. Status information and power is provided to the remote module 16 by a
`
`signal modulator 7 over either the transmit lines or the receive lines. Id. at 5
`
`5:58–61.
`
`At the remote module 16, “information such as confirmation of the
`
`status information or additional data” about an external device 18, such as
`
`the computer 3A, is provided to the remote module 16. Ex. 1003, 6:19–24.
`
`irmware kernel 10 provides a preprogrammed unique identification number
`
`for the external device “to Manchester encoder 11 in order to reliably
`
`traverse the data communication link or cable 2A,” and the “Manchester
`
`encoder then passes this encoded number to signal transmitter 12 which
`
`sends the encoded number across the data communication link 2A by
`
`altering the total current draw of the remote module 16.” Id. at 6:7–13.
`
`The information developed at the remote module 16 about an external
`
`device is sent to the signal receiver 6 of “the central module 15, decoded by
`
`Manchester decoder 5, and passed on to the firmware kernel 4.” Ex. 1003,
`
`6:25–28. In tracking an asset, i.e., the external device, the firmware kernel
`
`may now pass this received information on to another computer, i.e.,
`
`external device 19, which is responsible for asset tracking. Id. at 6:28–30.
`
`
`
`D. Illustrative Claim
`
`Claims 1 and 67 of the challenged claims are independent and are
`
`directed respectively to a method “for adapting a piece of Ethernet
`
`5
`
`
`
`IPR2018-01508
`Patent 8,155,012 B2
`
`equipment” and to a method “for adapting a piece of terminal equipment.”
`
`Claims 5, 6, 10, 13, 16, 22, 25, 26, 29, and 30 depend directly or indirectly
`
`from claim 1. Claims 73, 80, 88, and 106 depend directly or indirectly from
`
`claim 67. Claim 108 is independent, directed to a terminal equipment.
`
`Claims 114, 121, 129, and 147 depend directly or indirectly from claim 108.
`
`Claim1 is illustrative and is reproduced below:
`
`
`
`1. A method for adapting a piece of Ethernet data terminal
`equipment, the piece of Ethernet data terminal equipment
`having an Ethernet connector, the method comprising:
`
`
`
`
`
`selecting contacts of the Ethernet connector comprising a
`plurality of contacts, the selected contacts comprising at
`least one of the plurality of contacts of the Ethernet
`connector and at least another one of the plurality of
`contacts of the Ethernet connector;
`
`
`
`coupling at least one path across the selected contacts of the
`Ethernet connector; and
`
`
`associating distinguishing information about the piece of
`Ethernet data terminal equipment to impedance within
`the at least one path.
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner argues under 35 U.S.C. § 103(a) that two different prior art
`
`combinations render the challenged claims unpatentable.
`
`The first ground is based on alleged prior art to Hunter3 and Bulan.4
`
`Pet. 18–53. The second ground is based on alleged prior art to Bloch5 and
`
`
`3 WO 96/23377 (Ex. 1033).
`
`4 U.S. Pat No. 5,089,927 (Ex.1027).
`
`5 U.S. Pat. No. 4,173,714 (Ex. 1025).
`
`6
`
`
`
`IPR2018-01508
`Patent 8,155,012 B2
`
`IEEE 802.3.6 Id. at 53–75.
`
`II. ANALYSIS
`
`
`
`Petitioner bears the burden of showing unpatentability under
`
`35 U.S.C. § 316(e) (“In an inter partes review instituted under this chapter,
`
`the petitioner shall have the burden of proving a proposition of
`
`unpatentability by a preponderance of the evidence.”); see also Click-To-
`
`Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1355 n.5 (Fed. Cir. 2018)
`
`(“We ignore for the purpose of this appeal whether the Board improperly
`
`placed the burden of demonstrating that the IPR petition was time-barred on
`
`. . . the patent owner.”).
`
`
`
`Under 35 U.S.C. § 315(a)(1), “[a]n inter partes review may not be
`
`instituted if, before the date on which the petition for such a review is filed,
`
`the petitioner or real party in interest filed a civil action challenging the
`
`validity of a claim of the patent.” For the reasons asserted by Patent Owner
`
`and discussed below, Petitioner does not meet its burden of showing it did
`
`not file a civil action challenge the validity of a claim of a patent.
`
`
`
`Patent Owner contends “Petitioner filed a civil action challenging
`
`the validity of a claim ‘012 Patent in 2014, long before the date (August 3,
`
`2018) on which it filed the petition for review.” Prelim. Resp. 1 (citing
`
`Cisco Systems, Inc. et al. v. Chrimar Systems, Inc., Case No. 2:14-cv-10290-
`
`
`6 IEEE Standard 802.3 (the 1993 Edition (“IEEE-93,” Ex. 1022) and the
`1995 supplement (“IEEE-95, Ex. 1021) (collectively, “IEEE 802.3”); see
`also Zimmerman Declaration, Ex. 1001 ¶¶ 156–157 (describing history of
`IEEE 802.3).
`
`
`
`7
`
`
`
`IPR2018-01508
`Patent 8,155,012 B2
`
`AC-RSW, Complaint and Jury Demand (E.D. Mich., filed Jan. 22, 2014)
`
`(“’10290 lawsuit”), Ex. 2001 ¶¶ 4–5, 60–65).
`
`
`
`Petitioner relies on a voluntary dismissal as erasing all legal effects of
`
`the prior civil action filing: “Cisco previously filed a declaratory-judgment
`
`action against in March 2015 against ChriMar including a claim of invalidity
`
`of the Challenged Claims of the ’012 patent, but that action does not estop
`
`Cisco from filing this petition, because Cisco voluntarily dismissed the
`
`March 15 action.” Pet. 7–8 (citing ’10290 lawsuit, Notice of Voluntary
`
`Dismissal, Dkt. No. 24, Ex. 2003). To support this theory, the Petition relies
`
`on Emerson Electric No. v. Sipco, LLC, Case IPR2015-01579, slip op. at *2–
`
`3 (PTAB Jan. 14, 2016) (Paper 7). Id. at 8. In Emerson (a nonprecedential
`
`Board decision), the panel reasoned that “[f]ederal courts treat a civil action
`
`that is dismissed without prejudice as ‘something that de jure never existed,’
`
`‘leav[ing] the parties as though the action had never been brought.’” Id.
`
`(citing Emerson, 2–3 (quoting Holloway v. U.S., 60 Fed. Cl. 254, 261
`
`(2004), aff’d 143 F. App’x 313 (Fed. Cir. 2005) (unpublished); citing
`
`Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002); Beck v.
`
`Caterpillar, Inc., 50 F.3d 405, 407 (7th Cir. 1995)).
`
`
`
`Nevertheless, as Patent Owner argues, in two recent cases decided
`
`after Emerson, the Board’s reviewing court announced that a dismissal of a
`
`civil action does not toll a § 315(b) bar date. Prelim. Resp. 1–2 (citing
`
`Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., 905 F.3d 1311,
`
`1315 (Fed. Cir. 2018) (holding § 315(b) “includes no exception for an
`
`involuntarily dismissed complaint”); Click-To-Call, 899 F.3d at 1329 n.3
`
`(holding § 315(b) includes no exception for a voluntarily dismissed
`
`complaint) (en banc)).
`
`8
`
`
`
`IPR2018-01508
`Patent 8,155,012 B2
`
`
`
`In Click-To-Call, the court framed the related § 315(b) issue and
`
`answer as follows: “[T]he appropriate question is whether the voluntary,
`
`without prejudice dismissal of a civil action in which a complaint had been
`
`served nullifies an administrative time bar [in § 315(b)] that is triggered by
`
`service of that complaint. It does not.” Click-To-Call, 899 F.3d at 1329,
`
`n.3, 1335. Petitioner attempts to distinguish Click-To-Call and limit its
`
`reach to § 315(b): “Click-To-Call’s holding that voluntary dismissal of a
`
`patent-infringement complaint under Rule 41(a) does not toll the one-year
`
`petition filing deadline under § 315(b) was based on interpretation of the
`
`specific statutory language appearing in 315(b)—‘served with a
`
`complaint’—which does not appear in 315(a)(1).” Reply 1 (emphasis by
`
`Petitioner).
`
`
`
`Petitioner argues “neither the holding nor logic of Click-To-Call
`
`applies to § 315(a)(1).” Id. at 4. Petitioner correctly notes § 315(a)(1)
`
`relates to whether a “petitioner . . . filed a civil action.” Id. at 2. Apart
`
`from pointing to the obvious differences in language between § 315(b)
`
`and § 315(a)(1), Petitioner fails to explain persuasively why the holding of
`
`Click-To-Call does not apply to § 315(a)(1). Petitioner argues that because
`
`it a voluntary dismissal of a complaint without prejudice, as occurred in the
`
`’10290 lawsuit “nullifies the act of filing.” Reply 6 (citing 9 Wright &
`
`Miller, Federal Prac. and Proc. § 2367 (3d. ed. 2018) (“[A]s
`
`numerous federal courts have made clear, a voluntary dismissal without
`
`prejudice . . . leaves the situation as if the action never had been filed.”)).
`
`But like the argument dismissed in Click-To-Call, this argument reduces to
`
`the assertion that the statutory language “filed a civil action” in § 315(a)(1)
`
`includes an exception such that it implicitly reads “unless the civil action
`
`9
`
`
`
`IPR2018-01508
`Patent 8,155,012 B2
`
`was later dismissed without prejudice.” See Click-To-Call, 899 F.3d at 1331
`
`(“Congress could have chosen to include a variation of the phrase ‘unless the
`
`action in which the complaint was served was later dismissed without
`
`prejudice,’ but it did not do so.”).
`
`
`
`We do not find any ambiguity in the statutory language “filed a civil
`
`action,” so this panel cannot read into the section the exception Petitioner
`
`advances. See Click-To-Call, 899 F.3d at 1330 (“The statute does not
`
`contain any exceptions or exemptions for complaints served in civil actions
`
`that are subsequently dismissed, with or without prejudice.”), 1342 (“The en
`
`banc issue is governed by statutory language that, as the panel opinion
`
`explains, is plain in its meaning.” (CJ (Taranto, C.J., concurring)). Petitioner
`
`does not contend § 315(a)(1) includes ambiguous language that justifies
`
`such an exception. See Reply 2 n.1 (arguing “action” is defined as “an
`
`ordinary proceeding in a court of justice” according to BLACK’S LAW
`
`DICTIONARY (10th ed. 2014), available at Westlaw BLACK’S. A “civil
`
`action” is “[a]n action brought to enforce, redress, or protect a private or
`
`civil right; a noncriminal litigation.” Id. The verb “file” means “[t]o
`
`commence a lawsuit.” Id. Appart from raising the effect of a volunatary
`
`dismissal, Petitioner does not dispsute that it “filed a civil action” prior to
`
`filing its Petition according to the plain meaning of the phrase.
`
`Neither does Petitioner persuade us that the statutory language a “filed
`
`a civil action” precludes “filing a complaint” as triggering § 315(a)(1). See
`
`Reply 2, 5. We disagree with Petitioner that the “triggering circumstance for
`
`315(a)(1)” is not “merely the procedural act of filing a complaint.” Id.
`
`Indeed, “[a] civil action is commenced by filing a complaint with the court.”
`
`Fed.R.Civ.P. 3.
`
`10
`
`
`
`IPR2018-01508
`Patent 8,155,012 B2
`
`
`
`In Click-To-Call, the court analyzed the statutory framework and
`
`noted that “Congress specifically addressed the effect of a dismissal of an
`
`IPR petitioner’s district court action in § 315(a)(2), but did not include any
`
`similar language in § 315(b).” Click-To-Call, 899 F.3d at 1331. This
`
`statutory framework analysis applies with equal force here, because
`
`“Congress . . . did not include any similar language in § 315[(a)(1)].” See
`
`Click-To-Call, 899 F.3d at 1331. In addition, the court reasoned
`
`Congress also demonstrated that it knew how to provide an
`exception to the time bar by including a second sentence in the
`provision: “The time limitation set forth in the preceding
`sentence shall not apply to a request for joinder under subsection
`(c).” 35 U.S.C. § 315(b). Similarly, Congress could have chosen
`to include a variation of the phrase “unless the action in which
`the complaint was served was later dismissed without prejudice,”
`but it did not do so.
`
`Click-To-Call, 899 F.3d at 1331 (emphasis added). As is the case with
`
`§ 315(b), the statutory language of § 315(a)(1) does not mention dismissal,
`
`voluntary or otherwise. That § 315(a)(2) includes a provision directed to
`
`dismissal is persuasive that Congress did not intend to include an exception
`
`based on dismissal with respect to § 315(a)(1).
`
`
`
`In Click-To-Call, the court also reasoned “[t]he Board misunderstood
`
`that the text of § 315(b) is agnostic as to the ‘effect’ of the service—i.e.,
`
`what events transpired after the defendant was served.” Click-To-Call, 899
`
`F.3d at 1333 (emphasis added). Then the court stated “[w]e reject the
`
`Board’s interpretation of § 315(b) for this reason alone.” Click-To-Call, 899
`
`F.3d at 1333 (emphasis added). Here, as in § 315(b), the text of § 315(a)(1)
`
`is agnostic as to the effect of filing the civil action—“i.e., what events
`
`transpired after the defendant was served.” See Click-To-Call, 899 F.3d at
`
`11
`
`
`
`IPR2018-01508
`Patent 8,155,012 B2
`
`1333. Petitioner does not explain persuasively how the Board can ignore
`
`Click-To-Call’s reasoning regarding the agnostic phrase “filed a civil action”
`
`that appears in § 315(a)(1).
`
`
`
`Regarding Petitioner’s related arguments that § 315(a)(1) implicitly
`
`requires a voluntary dismissal to nullify the filed civil action based on
`
`common law (see Reply 6–7 (citing Click-To-Call, 899 F.3d at 1348.
`
`(Taranto, C.J., concurring)), the concurrence in Click-To-Call noted “the
`
`federal courts do not always treat a voluntary, without-prejudice dismissal as
`
`leaving the dismissed action without legal effect.” Click-To-Call, 899 F.3d
`
`at 1343 (Taranto, C.J., concurring) (emphases added). The concurrence also
`
`observed “[n]or does the law recognize a universal nullification rule that
`
`such a dismissal eliminates all legal effects of a dismissed action.” Id. at
`
`1346 (Taranto, C.J., concurring) (emphasis added).
`
`
`
`Although Petitioner contends a plaintiff generally can re-ligitate the
`
`same “action” after a voluntary dismissal thereof in the “federal courts” (see
`
`Reply 6–7), this contention does not address § 315(a)(1), which specifically
`
`precludes an inter partes review after a “petitioner . . . filed a civil action
`
`challenging the validity of a claim of the patent.” Moreover, the Click-To-
`
`Call decision specifically noted limits to Petitioner’s general nullification
`
`theory even in federal courts: “a voluntary dismissal without prejudice . . .
`
`forbids the filing of a subsequent action ‘based on or including the same
`
`claim’ under Rule 41(a)(1)(B).”7 Click-To-Call, 899 F.3d at 1335 (emphasis
`
`added, listing other consequences to a voluntary dismissal).
`
`
`7 In context, the passage appears to refer limits on filing a third declaratory
`judgment action. See 899 F.3d at 1335.
`
`12
`
`
`
`IPR2018-01508
`Patent 8,155,012 B2
`
`
`
`So § 315(a)(1) operates to preclude choosing inter partes review after
`
`a party chooses another forum to file its validity challenging action. In a
`
`similar vein, characterizing the holding of Bonneville Assocs. v. United
`
`States, 43 F.3d 649, 655 (Fed. Cir. 1994) (Bonneville I), the concurrence in
`
`Click-To-Call observed as follows:
`
`And in Bonneville I, this court held that the Claims Court lacked
`jurisdiction over Bonneville’s claim because Bonneville had
`initially brought an appeal to the Board and had therefore elected
`that forum—even though Bonneville had later obtained a
`voluntary, without-prejudice dismissal of its Board appeal. 43
`F.3d at 651, 653–55. The earlier action, though it had been
`voluntarily dismissed without prejudice, blocked the Claims
`Court case—the opposite of being treated as if it had never been
`brought.
`
`Id. at 1347 (Taranto, Circuit Judge, concurring) (emphasis added). Here,
`
`similarly, and for the reasons noted above, Petitioner’s choice to file its civil
`
`action, though voluntarily dismissed, blocks this inter partes review under
`
`the plain and unambiguous language of § 315(a)(1) and under the holding
`
`and reasoning of Click-To-Call.
`
`
`
`Petitioner’s argument that it did not “actually ha[ve] a bite at the
`
`apple” (Reply 6) ignores that Petitioner filed the civil action. That Petitioner
`
`chose to voluntarily dismiss the suit does not unbite the apple for purposes
`
`of filing an inter partes review under § 315(a)(1), even if it does allow
`
`Petitioner to file another civil action. In essence, Petitioner controls the
`
`timing and forum it chooses under § 315(a)(1). Therefore, the dissent’s
`
`concern in Click-To-Call about gamesmanship by a Patent Owner does not
`
`apply here. See Click-To-Call, 899 F.3d at 1355 (“[I]f dismissals without
`
`prejudice did not nullify the underlying complaint, patent owners would
`
`have an incentive to file suits alleging infringement and subsequently
`
`13
`
`
`
`IPR2018-01508
`Patent 8,155,012 B2
`
`voluntarily dismiss these suits without prejudice after service of a
`
`complaint.”).
`
`
`
`Petitioner relies upon a legislative history passage that states “[t]he
`
`present bill does coordinate inter partes and post-grant review with litigation,
`
`barring use of these proceedings if the challenger seeks a declaratory
`
`judgment that a patent is invalid.” Reply 5 (citing 157 Cong. Rec. S1023,
`
`S1041 (March 1, 2011) (Senator Kyl)). To the extent comments by a single
`
`Senator lend insight to the plain meaning of § 315(a)(1), the relevant portion
`
`of the full passage states as follows:
`
`The present bill does coordinate inter partes and post-grant
`review with litigation, barring use of these proceedings if the
`challenger seeks a declaratory judgment that a patent is invalid,
`and setting a time limit for seeking inter partes review if the
`petitioner or related parties is sued for infringement of the patent.
`
`Id. (emphasis added).
`
`
`
`Petitioner’s quotation of the legislative history omits the parallel
`
`language at the end of the sentence about the time limit (i.e., language
`
`related to § 315(b)). See Reply 5–6. Based on the partially quoted sentence,
`
`Petitioner argues, inter alia, it “is not engaged in multiple proceedings over
`
`the patent requiring any coordination,” and Patent Owner “never even
`
`answered the declaratory-judgment complaint before it was dismissed
`
`without prejudice.” See id. at 5–6. But given the analysis and holding of
`
`Click-To-Call, and the parallel discussion about a declaratory judgment and
`
`time bar provision by Senator Kyl, the legislative history does not help
`
`Petitioner. If it did, it would apply with equal force to § 315(b), but Click-
`
`To-Call shows a voluntary dismissal does not alter the reach of § 315(b).
`
`Moreover, similar to the language of § 315(a)(1), the cited legislative history
`
`14
`
`
`
`IPR2018-01508
`Patent 8,155,012 B2
`
`passage is agnostic about filing an answer or a voluntary dismissal or
`
`whether a petitioner “is not engaged in multiple proceedings.” See Reply 6.
`
`That is, the passage agnostically states “seek[ing] a declaratory judgment
`
`that a patent is invalid” bars an inter partes review.
`
`
`
`In summary, according to the discussion above, Click-To-Call holds
`
`that serving a complaint triggers a time bar that runs regardless of a
`
`voluntary dismissal, thereby blocking an inter partes review after the time
`
`bar under § 315(b). Analogously, filing a civil action blocks an inter partes
`
`review regardless of a voluntary dismissal under § 315(a)(1).
`
`III. CONCLUSION
`
`After consideration of the Petition, the Preliminary Response, the
`
`Reply, and the supporting evidence, we determine that Petitioner fails to
`
`demonstrate a reasonable likelihood of prevailing in showing that at least
`
`one of the challenged claims is unpatentable. Accordingly, we deny
`
`institution of inter partes review of claims 1, 5, 6, 10, 13, 16, 22, 25, 26, 29,
`
`30, 67, 73, 80, 88, 106, 108, 114, 121, 129, and 147 of the ’012 patent.
`
`IV. ORDER
`
`Accordingly, it is
`
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is denied with respect to claims 1, 5, 6, 10, 13, 16, 22, 25, 26, 29, 30,
`
`67, 73, 80, 88, 106, 108, 114, 121, 129, and 147 of the ’012 patent and
`
`institution is denied with respect to all of the challenged claims.
`
`
`
`
`
`
`
`15
`
`
`
`IPR2018-01508
`Patent 8,155,012 B2
`
`
`For PETITIONER:
`
`James Marina
`Robert Kang
`Eugene Goryunov
`james.marina@kirkland.com
`robert.kang@kirkland.com
`eugene.goryunov@kirkland.com
`
`
`
`For PATENT OWNER:
`
`Frank A. Angileri
`Thomas A. Lewry
`Marc Lorelli
`Christopher C. Smith
`fangileri@brookskushman.com
`tlewry@brookskushman.com
`mlorelli@brookskushman.com
`csmith@brookskushman.com
`
`
`
`
`
`
`16
`
`
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
