Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 12
`Entered: April 22, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`HTC CORPORATION AND HTC AMERICA, INC.,
`Petitioner,
`v.
`INVT SPE LLC,
`Patent Owner.
`_____________
`
`Cases IPR2018-01555 and IPR2018-01581
`Patent 7,848,439 B2
`
`
`Before THU A. DANG, KEVIN F. TURNER, and
`BARBARA A. BENOIT, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`

`

`IPR2018-01555, IPR2018-01581
`Patent 7,848,439 B2
`
`
`I. INTRODUCTION
`We instituted inter partes review of U.S. Patent No. 7,848,439 B2
`(Ex. 1001, “the ’439 patent” or “the challenged patent”)1 in two
`proceedings—IPR2018-01555 (“IPR1555”) and IPR2018-01581
`(“IPR1581”)—based on petitions filed by the same petitioner (HTC
`Corporation and HTC America, Inc., collectively “Petitioner”).
`(“IPR1581”). See IPR1555, Paper 8 (“IPR1555 Dec.”), Paper 10; IPR1581,
`Paper 9 (“IPR1581 Dec.”). The challenged patent is owned by INVT SPE
`LLC (“Patent Owner”).
`In IPR1555, we instituted review of claims 1–7 of the ’439 patent on
`March 7, 2019 and, in a scheduling order issued the same day, we set an oral
`hearing for December 17, 2019 (among other due dates). See generally
`IPR1555 Dec.; IPR1555 Paper 9 (Scheduling Order). In IPR1581, we
`instituted review of independent claim 8 of the ’439 patent on April 1, 2019
`and, in a scheduling order issued the same day, we set an oral hearing for
`January 8, 2019 (among other due dates). See generally IPR1581 Dec.;
`IPR1555 Paper 10 (Scheduling Order).
`
`II. THE CHALLENGES
`The challenges brought by Petitioner in IPR1555 and IPR1581 have
`substantial similarities. The independent claims challenged in each
`proceeding have many identical limitations, as illustrated in the following
`chart that italicizes the limitations that are identical.
`Claim 1 (Challenged in IPR1555)
`Claim 8 (Challenged in IPR1581)
`1. A communication apparatus comprising:
`8. A communication apparatus comprising:
`a channel estimating section that carries out a
`a channel estimating section that carries out
`channel estimation per subband;
`a channel estimation per subband;
`
`1 The challenged patent is Exhibit 1001 in both IPR1555 and IPR1581.
`
`2
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`

`

`IPR2018-01555, IPR2018-01581
`Patent 7,848,439 B2
`
`
`a parameter deciding section that decides
`modulation parameters and coding parameters per
`subband group comprised of a plurality of the
`subbands, based on a result of the channel
`estimation per subband;
`a parameter information transmission section
`that transmits, to a communicating party,
`parameter information indicating the modulation
`parameters and the coding parameters decided at
`the parameter deciding section;
`a receiving section that receives a signal
`containing data modulated and encoded on a per
`subband group basis at the communicating party
`using the modulation parameters and the coding
`parameters of the parameter information
`transmitted at the parameter information
`transmission section;
`a data obtaining section that demodulates and
`decodes the received signal received at the
`receiving section on a per subband group basis
`using the modulation parameters and the coding
`parameters decided at the parameter deciding
`section, and obtains the data contained in the
`received signal; and
` a pattern storage section that stores in advance
`patterns for selecting subbands constituting the
`subband groups wherein the parameter deciding
`section decides the modulation parameters and the
`coding parameters per subband group comprised
`of the subbands selected based on the patterns
`stored in the pattern storage section.
`
`a parameter deciding section that decides
`modulation parameters and coding parameters
`per subband group comprised of a plurality of the
`subbands based on a result of the channel
`estimation per subband;
`a parameter information transmission section
`that transmits to a communicating party,
`parameter information indicating the modulation
`parameters and the coding parameters decided at
`the parameter deciding section;
`a receiving section that receives a signal
`containing data modulated and encoded per
`subband group at the communicating party, using
`the modulation parameters and coding
`parameters of the parameter information
`transmitted at the parameter information
`transmission section; and
`a data obtaining section that demodulates
`and decodes the received signal received at the
`receiving section on a per subband group basis,
`using the modulation parameters and the coding
`parameters decided at the parameter deciding
`section, and obtains the data contained in the
`received signal;
`wherein the parameter deciding section
`decides the coding parameters in such a manner
`that a number of information bits obtained by
`assigning a weight per subband group to a sum of
`information bits that are able to be assigned to all
`of the subbands within the subband group, is
`assigned to the subband group.
`
`
`See Ex. 1001, 12:65–13:27 (claim 1), 13:65–14:26 (claim 8).
`Furthermore, Petitioner applies the following prior art2 in each
`proceeding:
`U.S. Patent No. 6,904,283 B2, filed April 17, 2001, issued June
`7, 2005 (Ex. 1003, “Li”);
`U.S. Patent No. 7,221,680 B2, filed September 1, 2004, issued
`May 22, 2007 (Ex. 1004, “Vijayan”); and
`U.S. Patent No. 6,721,569 B1, filed September 29, 2000, issued
`April 13, 2004 (Ex. 1005, “Hashem”).
`
`
`2 The same exhibit numbers are used for these references in both IPR1555
`and IPR1581.
`
`3
`
`

`

`IPR2018-01555, IPR2018-01581
`Patent 7,848,439 B2
`
`In IPR1581, Petitioner also asserts the following reference:
`U.S. Patent No. 5,596,604, filed August 17, 1993, issued
`January 21, 1997 (Ex. 1006, “Cioffi”).
`More particularly, the asserted ground at issue in IPR1555 is whether
`claims 1–7 are unpatentable as obvious under 35 U.S.C. § 103 over Li,
`Vijayan, and Hashem. The asserted ground at issue in IPR1581 is whether
`independent claim 8 of the ’439 patent as unpatentable under 35 U.S.C.
`§ 103 over Li, Vijayan, Hashem, and Cioffi. IPR1581 Dec. 7–8.
`In IPR1581, Petitioner cites to Cioffi as teaching using weighting per
`subchannel in combination with the cluster groups taught by Li and subband
`groups taught by Vijayan as teaching or suggesting limitation the wherein
`limitation recited in independent claim 8 but not recited in independent
`claim 1: “wherein the parameter deciding section decides the coding
`parameters in such a manner that a number of information bits obtained by
`assigning a weight per subband group to a sum of information bits that are
`able to be assigned to all of the subbands within the subband group, is
`assigned to the subband group.” IPR1581 Dec. 36 (citing Pet. 30).
`Petitioner also relies on declaration testimony by Dr. Zhi Ding
`(Exhibit 10073) in both IPR1555 and IPR1581.
`As noted in our Scheduling Order issued in IPR1581 (Paper 10),
`Patent Owner has the option to receive preliminary guidance from the Board
`on a motion to amend filed in that proceeding. See Notice Regarding a New
`Pilot Program Concerning Motion to Amend Practice and Procedures in
`Trial Proceedings under the America Invents Act before the Patent Trial and
`
`
`3 The same exhibit number is used in both IPR1555 and IPR1581.
`
`4
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`

`

`IPR2018-01555, IPR2018-01581
`Patent 7,848,439 B2
`
`Appeal Board, 84 Fed. Reg. 9497 (Mar. 15, 2019) (“MTA Pilot Program
`Notice”). In that Scheduling Order, we referred the parties to the Board’s
`Guidance on Motions to Amend in view of Aqua Products
`(https://go.usa.gov/xU6YV), and Lectrosonics, Inc. v. Zaxcom, Inc., Case
`IPR2018-01129 (Paper 15) (PTAB Feb. 25, 2019) (precedential). The MTA
`Pilot Program Notice does not automatically apply to IPR1555.
`
`III. CONFERENCE CALL WITH THE PARTIES
`A conference call took place on April 10, 2019 between Judges Dang,
`Turner, and Benoit and respective counsel for Patent Owner and Petitioner.
`The purpose of the call was to discuss ways in which IPR1555 and IPR1581
`could be consolidated or otherwise conducted in light of the significant
`overlap of the proceedings.
`Both parties agreed that this proceeding should proceed according to
`due dates in the IPR1581 scheduling order (IPR1581, Paper 10) and that a
`consolidated oral argument (if requested) should be held to address issues in
`IPR1555 and IPR1581. We agreed with the parties and, on April 11, 2019,
`issued a revised scheduling order for IPR1555 setting the dates according to
`due dates in IPR1581. IPR1555, Paper 12.
`The parties also recommended that, other than following the IPR1581
`schedule and consolidating the depositions of declarants to be used in both,
`the proceedings not be consolidated and that separate records be maintained
`for each proceeding. The parties subsequently reported that they were
`unable to agree on how Motions to Amend, if any, were to be handled in any
`consolidated proceeding.
`
`5
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`IPR2018-01555, IPR2018-01581
`Patent 7,848,439 B2
`
`
`IV. DISCUSSION
`As requested by the parties, we will not consolidate the records of the
`proceedings and terminate one of the proceedings. In other words, separate
`records will be maintained for each proceeding.
`As detailed above, however, these proceedings have substantial
`overlap of independent claim limitations, use of prior art, and declaration
`testimony. Under the present circumstances, we determine that resulting
`efficiencies for both the parties and the Office warrant consolidating at least
`Patent Owner responses filed under 37 C.F.R. § 42.120, any Petitioner reply
`to a Patent Owner response, and any Patent Owner sur-reply to a he
`Petitioner reply. IPR1555, Paper 12 (Revised Scheduling Order) IPR1581,
`Paper 10 (Scheduling Order); see 37 C.F.R. § 42.122(a) (“Multiple
`proceedings. Where another matter involving the patent is before the Office,
`the Board may during the pendency of the inter partes review enter any
`appropriate order regarding the additional matter including providing for the
`stay, transfer, consolidation, or termination of any such matter.”); see also
`U.S.C. § 316(b) (mandating rules for inter partes proceedings to be
`promulgated to take into account the “regulation on the economy, the
`integrity of the patent system, the efficient administration of the Office, and
`the ability of the Office to timely complete proceedings”).
`Accordingly, Patent Owner shall file an identical, consolidated Patent
`Owner Response under 37 C.F.R. § 42.120 in each proceeding. Similarly,
`Petitioner shall file an identical, consolidated Petitioner Reply to the Patent
`Owner Response in each proceeding. And, Patent Owner shall file an
`identical, consolidated Patent Owner Sur-Reply to Petitioner Reply to the
`Patent Owner Response in each proceeding. After considering the grounds,
`
`6
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`IPR2018-01555, IPR2018-01581
`Patent 7,848,439 B2
`
`the common prior art, and the claims challenged in each proceeding, we
`authorize Patent Owner and Petitioner to file up to one-and-a-half (1½)
`times the word count limit provided in 37 C.F.R. § 42.24 for each
`identicial, consolidated paper (that is, the Patent Owner Response, the
`Petitioner Reply, and the Patent Owner Sur-Reply). Patent Owner and
`Petitioner shall use a case caption to reflect the consolidation of the patent
`owner responses, replies, and sur-replies in accordance with the attached
`example.
`Some exhibits are common to both proceedings. For example, the
`’439 patent and references Li, Vijayan, Hashem, and Cioffi. For brevity, in
`a consolidated paper, a party may refer to such a common exhibit using the
`exhibit numbers in IPR1555. Similarly, a party should use a short citation to
`identify papers and exhibits that are not common to both proceedings. For
`example, a party may identify the respective petitions as “55Pet.” and
`“81Pet.” to identify a petition citation and “55Pet.Decl.” and “81Pet.Decl.”
`to identify a citation to one of Petitioner’s declarations filed with a petition.
`We will not contemplate consolidation of any potential motions to
`amend the patent under 37 C.F.R. § 42.121 unless requested by the parties or
`unless Patent Owner requests, as required under 37 C.F.R. § 42.121(a), to
`confer with the Board before filing a motion to amend.
`It is so ORDERED.
`
`
`
`
`7
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`

`IPR2018-01555, IPR2018-01581
`Patent 7,848,439 B2
`
`PETITIONER:
`
`Stephen Korniczky
`Martin Bader
`Nam Kim
`Darren Franklin
`Ericka Schulz
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`skorniczky@sheppardmullin.com
`mbader@sheppardmullin.com
`nkim@sheppardmullin.com
`dranklin@sheppardmullin.com
`eschulz@sheppardmullin.com
`
`FOR PATENT OWNER:
`
`Cyrus Morton
`Bryan Vogel
`Derrick Carman
`Stephanie Diehl
`Li Zhu
`Shui Li
`Stephanie A. Diehl
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`bvogel@robinskaplan.com
`dcarman@robinskaplan.com
`sdiehl@robinskaplan.com
`sli@robinskaplan.com
`lzhu@robinskaplan.com
`SDiehl@RobinsKaplan.com
`
`8
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`IPR2018-01555, IPR2018-01581
`Patent 7,848,439 B2
`
`
`
`Example Case Caption
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`HTC CORPORATION AND HTC AMERICA, INC.,
`Petitioner,
`v.
`INVT SPE LLC,
`Patent Owner.
`_____________
`
`Cases IPR2018-01555 and IPR2018-01581
`Patent 7,848,439 B2
`
`
`
`
`
`
`9
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