Trials@uspto.gov Paper 12
`571-272-7822
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`Entered: August 5, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`
`
`
`
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`UUSI, LLC d/b/a NARTRON,
`Patent Owner.
`____________
`
`Case IPR2019-00358
`Patent 5,796,183
`_____________
`
`
`
`
`Before BRYAN F. MOORE, MINN CHUNG, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`571-272-7822
`
`Entered: August 5, 2019
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`
`
`
`
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`UUSI, LLC d/b/a NARTRON,
`Patent Owner.
`____________
`
`Case IPR2019-00358
`Patent 5,796,183
`_____________
`
`
`
`
`Before BRYAN F. MOORE, MINN CHUNG, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`IPR2019-00358
`Patent 5,796,183
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`I. INTRODUCTION
`On November 29, 2018, Apple Inc. (“Petitioner” or “Apple”) filed a
`Petition (Paper 2, “Pet.”) requesting an inter partes review of claims 37–39,
`94, 96–99, 101–109, and 115–117 (the “challenged claims”) of U.S. Patent
`No. 5,796,183 (Ex. 1001, “the ’183 patent”). UUSI, LLC d/b/a Nartron
`(“Patent Owner”) filed a Preliminary Response (Paper 8, “Prelim. Resp.”) on
`May 6, 2019. Pursuant to a May 22, 2019 Order (Paper 9), the parties
`exchanged briefs further addressing the issue of discretionary denial of
`institution under 35 U.S.C. § 314(a) (Papers 10, 11).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a);
`see 37 C.F.R. § 42.4. For the reasons discussed below, upon considering the
`Petition, Preliminary Response, and evidence of record, we determine that
`the information presented in the Petition establishes a reasonable likelihood
`that Petitioner would prevail in showing the unpatentability of at least one
`challenged claim. We thus institute an inter partes review of all challenged
`claims (37–39, 94, 96–99, 101–109, and 115–117) of the ’183 patent, based
`on all grounds raised in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct.
`1348, 1359–60 (2018); U.S. Patent and Trademark Office, Guidance on the
`impact of SAS on AIA trial proceedings (Apr. 26, 2018),
`https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-
`board/trials/guidance-impact-sas-aia-trial (“SAS Guidance”).
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`II. BACKGROUND
`A. Related Matters
`According to Petitioner, the ’183 patent is the subject of the following
`district court litigation: UUSI, LLC v. Apple Inc., No. 3-18-cv-04637 (N.D.
`Cal.); and UUSI, LLC v. Apple Inc., No. 2:17-cv-13798 (E.D. Mich.), which
`has been transferred to the Northern District of California. Pet. 81. Patent
`Owner indicates that the ’183 patent is also the subject of UUSI, LLC v.
`Samsung Electronics Co., No. 1:15-cv-00146 (W.D. Mich.). Paper 3, 2.
`The ’183 patent has been subject to two reexaminations: Ex Parte
`Reexamination Control No. 90/012,439, certificate (“Reexam. Cert. C1”)
`issued April 29, 2013 (Ex. 1006, 1); and Ex Parte Reexamination Control
`No. 90/013,106, certificate (“Reexam. Cert. C2”) issued June 27, 2014
`(Ex. 1007, 24). The challenged claims were amended or added during the
`reexaminations. Ex. 1006, 2–3; Ex. 1007, 27–28.
`The ’183 patent is the subject of an earlier-filed inter partes review
`proceeding, Samsung Electronics Co. v. UUSI, LLC, Case IPR2016-00908
`(“Samsung IPR”). Pet. 81; Paper 3, 1. The Federal Circuit recently vacated
`the Final Written Decision in the Samsung IPR, in which the Board
`determined that Samsung had not demonstrated unpatentability of any
`claims, and remanded to the Board for further proceedings. Samsung Elecs.
`Co. v. UUSI, LLC, No. 2018-1310, 2019 WL 2511739, at *5 (Fed. Cir. June
`18, 2019) (“Samsung Appeal Opinion”).
`Petitioner has also filed five other petitions challenging claims of the
`’183 patent under various grounds in IPR2019-00355, IPR2019-00356,
`IPR2019-00357, IPR2019-00359, and IPR2019-00360. Paper 3, 1. We
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`denied institution of review in IPR2019-00355, IPR2019-00356, and
`IPR2019-00357. IPR2019-00355, Paper 14; IPR2019-00356, Paper 14;
`IPR2019-00357, Paper 12.
`
`B. The ’183 Patent
`The ’183 patent, titled “Capacitive Responsive Electronic Switching
`Circuit,” was filed January 31, 1996, and issued August 18, 1998. Ex. 1001,
`[22], [45], [54]. The ’183 patent has expired. Prelim. Resp. 18.
`The ’183 patent relates to a “capacitive responsive electronic
`switching circuit used to make possible a ‘zero force’ manual electronic
`switch.” Ex. 1001, 1:6–9. According to the ’183 patent, zero force touch
`switches have no moving parts and no contact surfaces that directly switch
`loads. Id. at 2:40–41. Instead, such switches detect an operator’s touch and
`use solid state electronics to switch loads or activate mechanical relays. Id.
`at 2:42–44. “A common solution used to achieve a zero force touch switch
`has been to make use of the capacitance of the human operator.” Id. at 3:12–
`14. As background, the ’183 patent describes three methods used by
`capacitive touch switches to detect an operator’s touch, one of which relies
`on the change in capacitive coupling between a touch terminal and ground.
`Id. at 3:13–15, 3:44–46. In this method, “[t]he touch of an operator then
`provides a capacitive short to ground via the operator’s own body
`capacitance.” Id. at 3:52–55. Figure 8, reproduced below, is an example
`that makes use of this method.
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`Figure 8 depicts a “touch circuit” in which, when a pad (not shown) is
`touched to create a short to ground via terminal 451, transistor 410 turns on
`and connects a high frequency input at 201 to resistor/capacitor circuit
`416/418, thus triggering Schmitt Trigger 420 to provide control output 401.
`Id. at 14:47–52, 15:17–47. Significantly, the operator of a capacitive touch
`switch using this method need not come in conductive contact with the touch
`terminal. Id. at 3:57–59. Rather, the operator needs only to come into close
`proximity of the switch. Id.
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`Figure 4 of the ’183 patent is reproduced below.
`
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`Figure 4 is a block diagram of a capacitive responsive electronic switching
`circuit according to a first embodiment of the ’183 patent. Id. at 7:23–25.
`As depicted in Figure 4, the electronic switching circuit of the first
`embodiment comprises voltage regulator 100, oscillator 200, floating ground
`generator 300, touch circuit 400, touch pad 450, and microcontroller 500.
`Id. at 11:64–12:33.
`Voltage regulator 100 converts a received 24 volts (V) AC voltage to
`a DC voltage and supplies a regulated 5 V DC power to oscillator 200 via
`lines 104 and 105. Id. at 11:67–12:2. Voltage regulator 100 also supplies
`oscillator 200 with 26 V DC power via line 106. Id. at 12:2–3.
`Upon being powered by voltage regulator 100, oscillator 200
`generates a square wave with a frequency of 50 kHz, or preferably greater
`than 800 kHz, and having an amplitude of 26 V peak. Id. at 12:6–9.
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`Floating common generator 300 receives the 26 V peak square wave from
`oscillator 200, and outputs a regulated floating common that is 5 volts below
`the square wave output from oscillator 200 and has the same phase and
`frequency as the received square wave. Id. at 12:14–18. This floating
`common output is supplied to touch circuit 400 and microcontroller 500 via
`line 301 such that the output square wave from oscillator 200 and floating
`common output from floating common generator 300 provide power to
`touch circuit 400 and microcontroller 500. Id. at 12:18–23.
`Touch circuit 400 senses capacitance from touch pad 450 via line 451
`and outputs a signal to microcontroller 500 via line 401 upon detecting a
`capacitance to ground at touch pad 450 that exceeds a threshold value. Id. at
`12:24–27. Figure 8 reproduced above describes touch circuit 400 in detail.
`Id. at 12:27–28.
`Upon receiving an indication from touch circuit 400 that a sufficient
`capacitance to ground is present at touch pad 450, microcontroller 500
`outputs a signal to load-controlling microcontroller 600 via line 501, which
`is preferably a two way optical coupling bus. Id. at 12:29–34.
`Microcontroller 600 then responds in a predetermined manner to control
`load 700. Id. at 12:33–35.
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`Figure 11 of the ’183 patent is reproduced below.
`
`
`Figure 11 is a block diagram of a capacitive responsive electronic switching
`circuit according to a second embodiment of the ’183 patent. Id. at 7:43–45.
`As depicted in Figure 11, the second embodiment discloses a “multiple
`touch pad circuit,” which is a variation of the electronic switching circuit of
`the first embodiment discussed above in that the multiple touch pad circuit
`includes “an array of touch circuits” 9001 through 900nm, where each
`element of the array includes touch circuit 400 described in Figures 4 and 8
`above, as well as touch pad 450 depicted in Figure 4. Id. at 18:34–43.
`In this “multiple touch pad circuit” embodiment, microcontroller 500
`selects each row of touch circuits 9001 to 900nm by providing the signal from
`oscillator 200 to selected rows of touch circuits. Id. at 18:43–46. The ’183
`patent describes that “[i]n this manner, microcontroller 500 can sequentially
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`activate the touch circuit rows and associate the received inputs from the
`columns of the array with the activated touch circuit(s).” Id. at 18:46–49. In
`other words, the microcontroller selects successive rows of the touch circuit
`array by providing the signal from oscillator 200 sequentially to each row,
`such that a particular activated touch circuit is detected by the
`microcontroller via association of an activated row with received input from
`a column line of the array. Id. at 18:43–49.
`The ’183 patent recognizes that placing capacitive touch switches in
`dense arrays, as in Figure 11, can result in unintended actuations. Id. at
`3:65–4:3. One method of addressing this problem known in the art involves
`placing guard rings around each touch pad. Id. at 4:4–7. Another known
`method of addressing this problem is to adjust the sensitivity of the touch
`pad such that the operator’s finger must entirely overlap a touch terminal.
`Id. at 4:8–14. “Although these methods (guard rings and sensitivity
`adjustment) have gone a considerable way in allowing touch switches to be
`spaced in comparatively close proximity, a susceptibility to surface
`contamination remains as a problem.” Id. at 4:14–18.
`The ’183 patent uses the technique of Figure 11 to overcome the
`problem of unintended actuation of small capacitive touch switches “by
`using the method of sensing body capacitance to ground in conjunction with
`redundant detection circuits.” Id. at 5:33–35. Specifically, the ’183 patent’s
`touch detection circuit operates at frequencies at or above 50 kHz, and
`preferably at or above 800 kHz, in order to minimize the effects of surface
`contamination on the touch pads. Id. at 11:19–29. Operating at these
`frequencies also improves sensitivity, allowing close control of the
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`proximity required for actuation of small-sized touch terminals in a close
`array, such as a keyboard. Id. at 5:48–57.
`
`C. Illustrative Claim
`Of the challenged claims, claims 37, 94, and 105 are independent.
`Claim 105 is illustrative of the challenged claims and is reproduced below.
`105. A capacitive responsive electronic switching circuit for a
`controlled keypad device comprising:
`an oscillator providing a periodic output signal having a
`predefined frequency;
`a microcontroller using the periodic output signal from the
`oscillator, the microcontroller selectively providing signal
`output frequencies to a closely spaced array of input touch
`terminals of a keypad, the input touch terminals comprising
`first and second input touch terminals, wherein the selectively
`providing
`comprises
`the microcontroller
`selectively
`providing a signal output frequency to each row of the closely
`spaced array of input touch terminals of the keypad;
`the first and second input touch terminals defining areas for an
`operator to provide an input by proximity and touch; and
`a detector circuit coupled to said oscillator for receiving said
`periodic output signal from said oscillator, and coupled to
`said first and second touch terminals, said detector circuit
`being responsive to signals from said oscillator via said
`microcontroller and a presence of an operator’s body
`capacitance to ground coupled to said first and second touch
`terminals when proximal or touched by the operator to
`provide a control output signal for actuation of the controlled
`keypad device, said detector circuit being configured to
`generate said control output signal when the operator is
`proximal or touches said second touch terminal after the
`operator is proximal or touches said first touch terminal.
`Ex. 1001, Reexam. Cert. C2, 7:42–8:10.
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`D. Asserted Prior Art and Grounds of Unpatentability
`Petitioner cites the following references in its challenges to
`patentability.
`
`Designation Exhibit No.
`Issue Date
`Reference
`U.S. Patent No. 4,561,002 Dec. 24, 1985 Chiu
`Ex. 1005
`U.S. Patent No. 4,922,061 May 1, 1990 Meadows1
`Ex. 1013
`U.S. Patent No. 4,418,333 Nov. 29, 1983 Schwarzbach Ex. 1014
`U.S. Patent No. 4,731,548 Mar. 15, 1988
`Ingraham ’548 Ex. 1016
`U.S. Patent No. 4,308,443 Dec. 29, 1981 Tucker
`Ex. 1019
`U.S. Patent No. 4,328,408 May 4, 1982
`Lawson
`Ex. 1032
`
`Petitioner also relies on the Declaration of Dr. Phillip D. Wright
`(Ex. 1003, “Wright Declaration” or “Wright Decl.”).
`Petitioner asserts the following grounds of unpatentability (Pet. 3):
`
`References
`Chiu and Schwarzbach3
`Chiu, Schwarzbach, and Lawson
`
`Statutory Basis
`Claim(s) Challenged
`37, 94, 96, 101, 105, 106 § 103(a)2
`38, 39, 104, 115, 116
`§ 103(a)
`
`1 For clarity and ease of reference, we only list the first named inventor.
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’183 patent has an
`effective filing date prior to the effective date of the applicable AIA
`amendment, we refer to the pre-AIA version of § 103.
`3 As discussed below, in the purported ground based on Chiu and
`Schwarzbach, Petitioner in fact argues two separate grounds—namely, one
`based on Chiu alone and another based on the combination of Chiu and
`Schwarzbach.
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`Claim(s) Challenged
`
`Statutory Basis
`
`97–99, 107–109
`
`§ 103(a)
`
`102
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`103
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`§ 103(a)
`
`§ 103(a)
`
`References
`Chiu, Schwarzbach, and
`Meadows
`Chiu, Schwarzbach, and
`Ingraham ’548
`Chiu, Schwarzbach, and Tucker
`
`III. ANALYSIS
`A. Discretionary Non-Institution Under 35 U.S.C. § 314(a)
`Based on the Samsung IPR
`Patent Owner asserts that the Board should exercise its discretion to
`deny the Petition under 35 U.S.C. § 314(a) based on the Samsung IPR
`challenging the same claims of the ’183 patent at issue in this case. Prelim.
`Resp. 16–24; Paper 10. The Samsung IPR involves a challenge to claims
`37–41, 43, 45, 47, 48, 61–67, 69, 83–86, 88, 90, 91, 94, 96, 97, 99, 101, and
`102 of the ’183 patent. Samsung IPR, Paper 35, 2. Petitioner also
`challenges these claims, either in the instant Petition or in other concurrently
`filed petitions for inter partes review identified above.
`Under § 314(a), the Director has discretion to deny institution of an
`inter partes review. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2140 (2016) (“[T]he agency’s decision to deny a petition is a matter
`committed to the Patent Office’s discretion.”). In General Plastic Industrial
`Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357, slip op. at 15–16
`(PTAB Sept. 6, 2017) (Paper 19) (precedential), the Board articulated a non-
`exhaustive list of factors to be considered in determining whether to exercise
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`discretion under § 314(a) to deny a petition that challenges the same patent
`as a previous petition. These factors are
`1. whether the same petitioner previously filed a petition directed to
`the same claims of the same patent;
`2. whether at the time of filing of the first petition the petitioner knew
`of the prior art asserted in the second petition or should have known
`of it;
`3. whether at the time of filing of the second petition the petitioner
`already received the patent owner’s preliminary response to the first
`petition or received the Board’s decision on whether to institute
`review in the first petition;
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the filing
`of the second petition;
`5. whether the petitioner provides adequate explanation for the time
`elapsed between the filings of multiple petitions directed to the same
`claims of the same patent;
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
`Id. at 16.
`
`Factor 1: Whether Petitioner Previously Filed a Petition Directed to the
`Same Claims of the Same Patent
`Beginning with the first factor, Petitioner asserts that it has not filed
`any previous petition challenging the ’183 patent. Pet. 6. Although
`Petitioner’s assertion appears to be undisputed, it does not end our inquiry
`under the first General Plastic factor, because our application of the General
`Plastic factors is not limited solely to instances where multiple petitions are
`filed by the same petitioner. Rather, when different petitioners challenge the
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`same patent, we consider any relationship between those petitioners when
`weighing the General Plastic factors. Valve Corp. v. Elec. Scripting Prod.,
`Inc., Case IPR2019-00062, slip op. at 9 (PTAB Apr. 2, 2019) (Paper 11)
`(precedential). Here, Petitioner Apple and Samsung are both defendants in
`lawsuits brought by Patent Owner alleging infringement of the ’183 patent.
`Patent Owner argues that Apple and Samsung are “similarly situated
`defendants” in district court litigation, both facing “the same ongoing threat
`of Patent Owner’s infringement claims” regarding the ’183 patent in
`co-pending lawsuits. Prelim. Resp. 23–24; Paper 10, 1–2. As the parties
`acknowledge, however, these are separate lawsuits in separate federal courts
`(Pet. 81; Paper 3, 2),4 and Patent Owner did not bring its lawsuit against
`Apple until two years after suing Samsung and a few weeks after the Final
`Written Decision was entered in the Samsung IPR (Pet. 5; Prelim. Resp. 17–
`18; Paper 11, 1).
`Apple argues that, unlike the parties in Valve, Apple and Samsung are
`unrelated and are not similarly situated defendants. Paper 11, 1. According
`to Apple, Apple and Samsung have never been co-defendants in an action
`involving the ’183 patent; Apple and Samsung have completely separate
`products; and Patent Owner makes no overlapping infringement allegations
`between Apple and Samsung in lawsuits filed more than two years apart. Id.
`
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`4 As noted above in Section II.A, Patent Owner’s infringement action against
`Samsung involving the ’183 patent was filed in the Western District of
`Michigan, whereas the lawsuits against Apple were filed in the Eastern
`District of Michigan and the Northern District of California. Pet. 81;
`Paper 3, 2.
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`Based on the record presented, we agree with Petitioner that, unlike
`the parties in Valve, there is no significant relationship between Petitioner
`and Samsung with respect to Patent Owner’s assertion of the ’183 patent.
`Cf. Valve, slip op. at 9–10 (related petitioners were co-defendants in the
`same litigation; accused devices sold by one petitioner incorporated
`technologies under a technology license from the other petitioner; and the
`petitioners collaborated on the development of the devices). Therefore,
`given that Petitioner has not filed any previous petitions challenging the ’183
`patent, the first General Plastic factor weighs against discretionary denial of
`institution. See Pet. 6.
`
`Factor 2: Whether Petitioner Knew of or Should Have Known of the Prior
`Art Asserted in the Instant Petition When the Prior Petition was Filed
`Turning to the second General Plastic factor, this factor includes
`considering whether the prior art relied on in the later petition “could have
`been found with reasonable diligence.” Gen. Plastic, slip op. at 20.
`Because Patent Owner did not sue Petitioner until after the Final
`Written Decision issued in the Samsung IPR, Petitioner would have had
`little discernable reason, at the time of filing of the first petition (i.e., the
`petition in the Samsung IPR) to look for and identify the prior art that it
`ultimately asserted in the instant Petition. Pet. 6; Paper 11, 1. According to
`Petitioner, it received no notice of its purported infringement of the ’183
`patent at the time Patent Owner sued Samsung. Paper 11, 1.
`Patent Owner submits that some of the references now relied upon
`were “known” to Petitioner during some unrelated patent prosecutions.
`Prelim. Resp. 19. Such “knowledge,” on the part of unidentified employees
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`or agents of Petitioner handling those unrelated matters, is of little relevance
`to this factor, given that, at the time such knowledge was acquired, the
`Patent Owner’s lawsuit against Petitioner had not yet commenced or, insofar
`as the record shows, been threatened. Thus, the second General Plastic
`factor also weighs against exercising our discretion to deny institution.
`
`Factor 3: Whether Petitioner Had Patent Owner’s Preliminary Response
`and the Board’s Institution Decision on the Prior Petition When Petitioner
`Filed the Instant Petition
`The Board explained the relevance of this factor in General Plastic:
`[F]actor 3 is directed to Petitioner’s potential benefit from
`receiving and having the opportunity to study Patent Owner’s
`Preliminary Response, as well as our institution decisions on the
`first-filed petitions, prior to its filing of follow-on petitions. . . .
`Multiple, staggered petitions challenging the same patent and
`same claims raise the potential for abuse. The absence of any
`restrictions on follow-on petitions would allow petitioners the
`opportunity to strategically stage their prior art and arguments in
`multiple petitions, using our decisions as a roadmap . . . . All
`other factors aside, this is unfair to patent owners and is an
`inefficient use of the inter partes review process and other post-
`grant review processes.
`Gen. Plastic, slip op. at 17–18 (emphases added) (internal citation and
`footnote omitted).
`Given the timing of Patent Owner’s lawsuit against Petitioner,
`Petitioner’s filing of the instant Petition does not raise the fairness concerns
`addressed by the third factor. Although Patent Owner alleges
`“gamesmanship” in Petitioner’s filing of the instant Petition, Petitioner
`persuasively explains that Petitioner could not have “delay[ed]” its Petition
`to gain a strategic advantage by learning from the Samsung IPR because, by
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`the time Patent Owner sued Petitioner, the Samsung IPR was already
`complete. Paper 11, 2. Upon considering the record presented, we agree
`with Petitioner that any “delay” in Petitioner’s filing of the instant Petition
`was the direct result of Patent Owner’s litigation activity, not any
`“gamesmanship” of Petitioner. See id. at 1–2.
`Patent Owner also asserts that Petitioner must have “studied
`Samsung’s IPR” (Prelim. Resp. 18) and used the Final Written Decision in
`the Samsung IPR “as a roadmap” in preparing the instant Petition (id. at 20).
`But there is no policy reason for discretionary denial of institution where, as
`here, Petitioner, when filing a Petition after being sued for infringement,
`takes into account prior proceedings that occurred before it was sued.
`Because the fairness concerns addressed by the third factor are not present
`under the specific circumstance of this case, the third General Plastic factor
`weighs against exercising our discretion to deny institution.
`
`Factor 4: The Elapsed Time Between the Time Petitioner Learned of the
`Prior Art Asserted in the Instant Petition and the Filing of the Instant
`Petition
`Addressing the fourth General Plastic factor, Petitioner argues that
`this factor also weighs against denial because Petitioner’s prior art search
`and review that identified the prior art references relied upon in the instant
`Petition was not conducted (and Petitioner would have had no reason to
`conduct) until after Patent Owner filed lawsuit against Petitioner, which was
`after the Samsung IPR was completed. Pet. 6.
`Patent Owner argues that four prior art references (Chiu, Meadows,
`Ingraham ’548, and Tucker) relied on in the Petition were known to
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`Petitioner either based on Petitioner’s own patent prosecution activities or
`from the ’183 patent itself, but Petitioner nonetheless waited a full year after
`being sued before filing the instant Petition. Prelim. Resp. 20–21. Patent
`Owner asserts that this “unexplained delay” weighs in favor of discretionary
`denial. Id. at 21.
`We are not persuaded by Patent Owner’s argument. By regulation,
`Petitioner had one year to file its Petition. See 37 C.F.R. § 42.101(b). In
`addition, Petitioner’s alleged “delay” does not appear to be a “wait and see”
`tactic to benefit from the preliminary response, the institution decision, or
`the Final Written Decision in the Samsung IPR because those papers were
`already available when Petitioner was sued by Patent Owner.
`Patent Owner also asserts the one year delay was a strategy to extend
`a stay of the patent lawsuit against Petitioner (Prelim. Resp. 21), but Patent
`Owner stipulated to a stay of that lawsuit (Ex. 2001 ¶ 13). Moreover, the
`decision of a district court to stay or not stay its lawsuits is not a primary
`concern of this forum.
`Based on the record presented, we determine that the fourth General
`Plastic factor weighs against exercising our discretion to deny institution.
`
`Factor 5: Whether Petitioner Has Provided Adequate Explanation for the
`Time Elapsed between the Filings of Multiple Petitions Directed to the Same
`Claims of the Same Patent
`Petitioner argues that the fifth General Plastic factor also weighs
`against discretionary denial because any delay between the filing of the
`petition in the Samsung IPR and the instant Petition is due to Patent Owner’s
`delay in filing suit against Petitioner. Pet. 7. For the reasons discussed
`
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`above, we agree with Petitioner’s argument. Thus, the fifth General Plastic
`factor also weighs against exercising our discretion to deny institution.
`
`Factors 6 and 7: Board Considerations
`Finally, upon review of the current record in this and the co-pending
`related proceedings, we determine that factors six and seven do not raise
`concerns about Board resources or deadlines.
`Patent Owner argues that Petitioner’s filing of multiple petitions
`challenging different claims of the ’183 patent amounts to a circumvention
`of the Board’s page limitation rules and places undue burden on the finite
`resources of the Board. Prelim. Resp. 22. Patent Owner bears some
`responsibility for this, however, given that it obtained 117 claims during two
`reexaminations, many of which are asserted against Petitioner. Although a
`multiple-petition strategy to “circumvent” page limitations is not encouraged
`and may not necessarily be effective, Petitioner’s filing of multiple petitions
`challenging the same patent may be appropriate where, as here, Petitioner
`has reasonable justification for multiple filings due to the multiplicity of
`claims to be challenged. See Office Trial Practice Guide July 2019 Update5
`referenced at 84 Fed. Reg. 33,925 (“July 2019 TPG Update”) (July 16,
`2019), at 26 (“[T]he Board recognizes that there may be circumstances in
`which more than one petition may be necessary, including, for example,
`when the patent owner has asserted a large number of claims in litigation or
`
`
`5 Available at https://www.uspto.gov/sites/default/files/documents/trial-
`practice-guide-update3.pdf.
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`when there is a dispute about priority date requiring arguments under
`multiple prior art references.”).
`Having considered the record presented, we conclude that factors six
`and seven are not implicated under the circumstances of this case, and,
`therefore, do not weigh for or against exercising our discretion to deny
`institution.
`
`Weighing the Factors for Discretionary Non-Institution Under § 314(a)
`To summarize, apart from the last two factors (factors six and seven),
`which are neutral, the majority of the General Plastic factors weigh against
`exercising our discretion to deny institution. Considering these factors as a
`whole, and on the record presented, we determine that exercising our
`discretion under 35 U.S.C. § 314(a) to deny institution is not appropriate in
`this case.
`
`B. Level of Ordinary Skill in the Art
`Petitioner’s declarant, Dr. Wright, opines that a person of ordinary
`skill in the art as of the critical date of the ’183 patent would have had at
`least a Bachelor of Science degree in electrical engineering or a related
`technical field, and two or more years of experience in electrical circuits and
`sensor systems. Ex. 1003 ¶ 22. Patent Owner does not propose a level of
`ordinary skill in the art in the Preliminary Response.
`At this stage of the proceeding, we find Petitioner’s proposal
`consistent with the level of ordinary skill in the art reflected by the prior art
`of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, for
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`purposes of this Decision, we adopt Petitioner’s unopposed position as to the
`level of ordinary skill in the art.
`
`C. Claim Construction
`Due to a recent rule change, the claim construction standard that
`applies in an inter partes review depends on whether the petition was filed
`before or after November 13, 2018. See Changes to the Claim Construction
`Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
`and Appeal Board, 83 Fed. Reg. 51,340, 51,340–41 (Oct. 11, 2018) (codified
`at 37 C.F.R. § 42.100(b) (2019)). Because the Petition was filed November
`29, 2018 (Paper 5, 1), we apply the same claim construction standard that
`would be used to construe a claim in a civil action under 35 U.S.C. § 282(b),
`following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303
`(Fed. Cir. 2005) (en banc).6 See 83 Fed. Reg. at 51,343.
`Under that standard, claim terms are generally given their ordinary
`and customary meaning, which is “the meaning that the term would have to
`a person of ordinary skill in the art in question at the time of the invention.”
`Phillips, 415 F.3d at 1312–13. “Importantly, the person of ordinary skill in
`the art is deemed to read the claim term not only in the context of the
`particular claim in which the disputed term appears, but in the context of the
`entire patent, including the specification.” Id. at 1313. “In determining the
`meaning of the disputed claim limitation, we look principally to the intrinsic
`evidence of record, examining the claim language itself, the written
`
`
`6 We note that, because the ’183 patent has expired, our claim interpretation
`would have followed Phillips regardless of filing date. See In re Rambus
`Inc., 694 F.3d 42, 46 (Fed. Cir. 2012).
`21
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`description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
`v. Medtron
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