Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 9
`Entered: July 1, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION, HTC AMERICA, INC., AND ZTE (USA), INC.,
`Petitioner,
`
`v.
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`Patent Owner.
`____________
`
`Case IPR2019–00485
`Patent 8,213,970 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, CHRISTA P. ZADO, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`ZADO, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 9
`Entered: July 1, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION, HTC AMERICA, INC., AND ZTE (USA), INC.,
`Petitioner,
`
`v.
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`Patent Owner.
`____________
`
`Case IPR2019–00485
`Patent 8,213,970 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, CHRISTA P. ZADO, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`ZADO, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2019–00485
`Patent 8,213,970 B2
`
`I. INTRODUCTION
`
`HTC Corporation, HTC America, Inc., and ZTE (USA), INC.
`(collectively, “Petitioner”)1 filed a request for inter partes review of claims 1
`and 3–9 (the “challenged claims”) of U.S. Patent No. 8,213,970 B2
`(Ex. 1001, “the ’970 patent”). Paper 3 (“Pet.” or “Petition”). Concurrent
`with the filing of the Petition, Petitioner filed a Motion for Joinder to Inter
`Partes Review (35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b)), seeking to
`join IPR2018-01079 instituted on November 20, 2018 (“the ’1079 IPR”).
`Paper 4 (“Mot.” or “Motion”). AGIS Software Development, LLC (“Patent
`Owner”)2 filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
`Under 35 U.S.C. § 315(a)(1), “[a]n inter partes review may not be
`instituted if, before that 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.” 35 U.S.C. § 315(a)(1). Upon considering
`the evidence presented and the arguments made, we determine that inter
`partes review is barred under 35 U.S.C. § 315(a)(1). Accordingly, we do
`not institute an inter partes review.
`
`A. Related Proceedings
`The parties advise that the ’970 patent has been asserted in various
`district court proceedings, including, in pertinent part, ZTE (USA), Inc. v.
`AGIS Software Development LLC et al., No. 4:18-cv-06185 (N.D. Cal.)
`(filed October 9, 2018). Pet. 79–81; Paper 6, 3. Patent Owner further
`
`
`1 The Petition identifies as real parties-in-interest HTC Corporation, HTC
`America, Inc., ZTE (USA), Inc., and ZTE (TX) Inc. Pet. 79.
`2 Patent Owner identifies itself, pursuant to 37 C.F.R. § 42.8(b)(2), as the
`real party-in-interest. Paper 6, 1.
`
`2
`
`
`
`IPR2019–00485
`Patent 8,213,970 B2
`advises that the ’970 patent and patents related to the ’970 patent are the
`subject of various filings requesting inter partes review. Paper 6, 2–3 (see
`table identifying inter partes review case numbers).
`
`B. The ’970 Patent
`The ’970 patent generally discloses a specialized software application
`program on a personal computer (“PC”) or PDA/cell phone for creating and
`processing forced message alerts. Ex. 1001, Abstract. The specification of
`the ’970 patent (“Specification”) discloses it is desirable for a PDA/cell
`phone user to be able to simultaneously send Digital Smart Message Service
`(“SMS”) or TCP/IP messages to a large group of PCs or cell phones using
`cellular technology (such as GSM or CDMA) or WiFi. Id. at 1:51–57. The
`Specification further discloses that in some situations it is additionally
`desirable to know which PCs and PDA/cell phones received the message,
`which PCs and PDA/cell phones did not receive the message, and the
`response of each recipient of the message. Id. at 1:57–61. “As a result,
`what is needed is a method in which a sender of a text or voice message can
`force an automatic acknowledgement upon receipt from a recipient’s cell
`phone or PC and a manual response from the recipient via the recipient’s
`cell phone or PC.” Id. at 1:62–67. In addressing these issues, the
`Specification discloses “[t]he heart of the invention lies in [a] forced
`message alert software application program provided in each PC or
`PDA/cell phone.” Id. at 4:47–49. The software provides the ability to
`(a) allow an operator to create and transmit a forced
`message alert from a sender PDA/cell phone to one or
`more recipient PCs and PDA/cell phones within the
`communication network; (b) automatically transmit an
`acknowledgement of receipt to the sender PDA cell phone
`upon the receipt of the forced message alert; (c)
`periodically resend the message to the recipient PCs and
`3
`
`
`
`IPR2019–00485
`Patent 8,213,970 B2
`PDA/cell phones that have not sent an acknowledgement;
`(d) provide an indication of which recipient PCs and
`PDA/cell phones have acknowledged the forced message
`alert; (e) provide a manual response list on the display of
`the recipient PC and PDA/cell phone's display that can
`only be cleared by manually transmitting a response; and
`(f) provide an indication on the sender PDA/ cell phone of
`the status and content the manual responses.
`Id., Abstract. The Specification explains that a forced message alert is
`comprised of a text or voice message and a forced message alert software
`packet. Id. at 2:11–13, 8:23–25.
`
`C. Challenged Claims
`Petitioner challenges claims 1 and 3–9 of the ’970 patent. Claims 1
`and 6 are independent. Claim 1 is illustrative (brackets and numbering
`added).
`
`1. A communication system for transmitting,
`receiving, confirming receipt, and responding to an
`electronic message, comprising:
`[1.1] a predetermined network of participants,
`wherein each participant has a similarly equipped
`PDA/cell phone that includes a CPU and a touch
`screen display and a CPU memory;
`[1.2] a data transmission means that facilitates the
`transmission of electronic files between said
`PDA/cell phones in different locations;
`[1.3] a sender PDA/cell phone and at least one
`recipient PDA/cell phone for each electronic
`message;
`[1.4] a forced message alert software application
`program including a list of required possible
`responses to be selected by a participant recipient of
`a forced message response
`loaded on each
`participating PDA/cell phone;
`
`4
`
`
`
`IPR2019–00485
`Patent 8,213,970 B2
`[1.5] means for attaching a forced message alert
`software packet to a voice or text message creating
`a forced message alert that is transmitted by said
`sender PDA/cell phone to the recipient PDA/cell
`phone, said forced message alert software packet
`containing a list of possible required responses and
`requiring the forced message alert software on said
`recipient PDA/cell phone to transmit an automatic
`acknowledgement to the sender PDA/cell phone as
`soon as said forced message alert is received by the
`recipient PDA/cell phone;
`[1.6] means for requiring a required manual
`response from the response list by the recipient in
`order to clear the recipient’s response list from
`recipient’s cell phone display;
`[1.7] means for receiving and displaying a listing of
`which
`recipient
`PDA/cell
`phones
`have
`automatically acknowledged the forced message
`alert and which recipient PDA/cell phones have not
`automatically acknowledged the forced message
`alert;
`[1.8] means for periodically resending said forced
`message alert to said recipient PDA/cell phones that
`have not automatically acknowledged the forced
`message alert; and
`[1.9] means for receiving and displaying a listing of
`which recipient PDA/cell phones have transmitted a
`manual response to said forced message alert and
`details the responses from each recipient PDA/cell
`phone that responded.
`Ex. 1001, 8:65–9:39.
`
`
`5
`
`
`
`IPR2019–00485
`Patent 8,213,970 B2
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1 and 3–9 on the following grounds.
`Pet. 12.
`
`Ground
`References
`§ 103(a)
`Kubala3 and Hammond4
`Hammond, Johnson,5 and Pepe6 § 103(a)
`Hammond, Johnson, Pepe, and
`§ 103(a)
`Banerjee7
`
`Claims
`1 and 3–9
`1 and 3–9
`1 and 3–9
`
`
`
`Petitioner relies on the declaration of David Hilliard Williams to
`support its contentions. Ex. 1003 (“Williams declaration”).
`
`II. DISCUSSION
`A. Principles of Law
`Section 315 of Title 35 creates two bars to institution of inter partes
`review. § 315(a)(1) bars inter partes review if the petitioner files a civil
`action challenging the patent’s validity before filing the petition: “[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.” 35 U.S.C.
`
`
`3 U.S. Patent Publication 2006/0218232 A1, filed March 24, 2005 and
`published September 28, 2006. Ex. 1005 (“Kubala”).
`4 U.S. Patent 6,854,007 B1, filed September 17, 1998 and issued February 8,
`2005. Ex. 1006 (“Hammond”).
`5 U.S. Patent 5,325,310, filed June 26, 1992 and issued June 28, 1994.
`Ex. 1007 (“Johnson”).
`6 U.S. Patent 5,742,905, filed September 19, 1994 and issued April 21, 1998.
`Ex. 1008 (“Pepe”).
`7 U.S. Patent Publication 2003/0128195 A1, filed January 8, 2002 and
`published July 10, 2003. Ex. 1009 (“Banerjee”).
`
`6
`
`
`
`IPR2019–00485
`Patent 8,213,970 B2
`§ 315(a)(1); see also 37 C.F.R. § 42.101(a). § 315(b) bars inter partes
`review if the petitioner is served with a complaint alleging infringement of
`the patent more than one year before the petition is filed: “[a]n inter partes
`review may not be instituted if the petition requesting the proceeding is filed
`more than 1 year after the date on which the petitioner, real party in interest,
`or privy of the petitioner is served with a complaint alleging infringement of
`the patent.” 35 U.S.C. § 315(b); see also 37 C.F.R. § 42.101(b). Section
`315(b) provides an exception to the one-year statutory bar when a request
`for joinder is filed under 35 U.S.C. § 315(c), stating that “[t]he 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). However, § 315(a)(1)
`does not provide such an exception.
`Our rules specify that a party must file a request for joinder as a
`motion under 37 C.F.R. § 42.22 no later than one month after institution of
`the proceeding the party seeks to join. 37 C.F.R. § 42.122(b).
`
`B. 35 U.S.C. § 315(a)(1) and 35 U.S.C. § 315(c)
`Neither the Petition nor the Motion addresses whether the Petition is
`barred under § 315(a)(1). The Petition states only that “Petitioners certify
`that it is not barred or estopped from requesting inter partes review on the
`grounds proposed herein,” without further explanation. Pet. 3. The Motion
`purports to be timely because it was filed within one month of institution of
`the ’1079 IPR, Mot. 1 (citing 37 C.F.R. § 42.122(b)), but the Motion does
`not address whether the Petition is barred and whether Petitioner may,
`nonetheless, join the ’1079 IPR.
`Patent Owner contends that the Petition is barred under 35 U.S.C.
`§ 315(a)(1) because ZTE (USA) Inc. (“ZTE”)—named Petitioner and real
`party-in-interest in this proceeding—filed a civil action challenging the
`7
`
`
`
`IPR2019–00485
`Patent 8,213,970 B2
`validity of the ’970 patent prior to filing the Petition. Prelim. Resp. 4. As
`we noted above, Section 315(a)(1) states that “[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.” 35 U.S.C. § 315(a)(1).
`We agree with Patent Owner that § 315(a)(1) bars institution of inter
`partes review in this case. There is no dispute that ZTE is the petitioner and
`a real party-in-interest in this proceeding. See Pet. 1 (identifying ZTE as the
`petitioner); see also id. at 79 (identifying ZTE as a real party-in-interest).
`Patent Owner contends, and Petitioner does not dispute, that on October 9,
`2018, prior to the December 20, 2018 filing date of the Petition, ZTE filed a
`complaint for declaratory judgment alleging invalidity of the ’970 patent.
`Prelim. Resp. 4 (citing ZTE (USA), Inc. v. AGIS Software Devlopment LLC
`et al., No. 4:18-cv-06185 (N.D. Cal.) (filed October 9, 2018) (“ZTE
`action”)). Because ZTE filed a civil action challenging the validity of the
`’970 patent before the date on which it filed the Petition, we agree with
`Patent Owner that inter partes review is barred by ZTE’s civil action. 35
`U.S.C. § 315(a)(1).
`Patent Owner points out that, after the filing of the Petition, Patent
`Owner informed ZTE that the Petition is barred under 35 U.S.C. § 315(a)(1),
`and requested the Petition be withdrawn. Prelim. Resp. 4 (citing Ex. 2001).
`In particular, counsel for Patent Owner sent a letter to counsel for ZTE,
`stating,
`I write to request that ZTE immediately withdraw its
`frivolous IPR petitions against AGIS . . . in IPR2019-
`00485 . . . ZTE filed these petitions after filing its
`October 9, 2018 complaint for declaratory judgment for
`invalidity of the same patents . . . Section 315(a)(1)
`
`8
`
`
`
`IPR2019–00485
`Patent 8,213,970 B2
`prohibits a declaratory-judgment plaintiff from filing an
`IPR petition if the plaintiff filed a declaratory judgement
`complaint for invalidity before filing the IPR petition.
`Ex. 2001. Patent Owner alleges that, in a responsive correspondence, “ZTE
`refused to withdraw its [Petition] without addressing 35 U.S.C. § 315(a)(1).”
`Prelim. Resp. 4 (citing Ex. 2002). However, although the responsive
`correspondence from ZTE did not specifically address § 315(a)(1), ZTE
`disagreed that the Petition is statutorily barred “at least because we filed a
`joinder petition.” Ex. 2002. We note that Petitioner has not made this
`argument to the Board in this proceeding. Even if Petitioner had made this
`argument, it would not have resulted in a different outcome.
`Unlike 35 U.S.C. § 315(b), which provides an exception to the
`statutory time bar when a request for joinder is filed, nothing in the language
`of § 315(a)(1) indicates that the time bar does not apply if a party files for
`joinder. Consistent with the plain language of § 315(a)(1), which does not
`include a joinder exception, the Board has expressly held that a motion for
`joinder does not exempt a petitioner from the statutory bar under this
`section. Prelim. Resp. 5 (citing Colas Sols. Inc. v. Blacklidge Emulsions,
`Inc., Case IPR2018-00243, slip op. at 6, 9 (PTAB Feb. 27, 2018) (Paper 10)
`(informative)).
`Patent Owner also points out that on February 5, 2019, ZTE amended
`the complaint in the ZTE action, removing the invalidity challenges to the
`’970 patent. Id. at 4. Patent Owner asserts that this amendment does not
`remove the statutory bar. Id. at 4–5. According to Patent Owner, amending
`a declaratory judgment action to remove invalidity challenges is akin to a
`voluntary dismissal of a civil action. Id. at 5. Applying the Federal Circuit’s
`decision in Click-to-Call Tech., LP v. Ingenio, Inc., 899 F.3d 1321, 1338
`
`9
`
`
`
`IPR2019–00485
`Patent 8,213,970 B2
`(Fed. Cir. 2018), which held that voluntary dismissal of a civil action does
`not remove the statutory bar under § 315(b), Patent Owner argues that
`amendment of a declaratory judgment action does not remove the statutory
`bar under § 315(a)(1). Prelim. Resp. 5 (citing Cisco Sys., Inc. v. Chrimar
`Sys., Inc., Case IPR2018-01511, slip op. at 2, 8 (PTAB Jan. 13, 2019)
`(Paper 11)). Petitioner has not presented any argument regarding the impact
`on the statutory bar under § 315(a)(1), if any, of amending the complaint in
`the ZTE action.
`In determining whether amendment of the complaint in the ZTE
`action impacts the statutory bar in this case, we begin our analysis with the
`language of the statute. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355
`(2018) (“[s]tart[ing] where the statute does”). “The first step ‘is to
`determine whether the language at issue has a plain and unambiguous
`meaning with regard to the particular dispute in the case.’” Barnhart v.
`Sigmon Coal Co., Inc., 534 U.S. 438, 450 (2002) (quoting Robinson v. Shell
`Oil Co., 519 U.S. 337, 340 (1997)). The language of § 315(a)(1) is plain on
`its face and unambiguous. It states that “[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.” 35 U.S.C. § 315(a)(1). This language
`refers only to the date on which the petitioner or real party in interest filed
`the civil action alleging infringement. Cf. Click-to-Call, 899 F.3d at 1332
`(explaining that § 315(b) “clearly and unmistakably considers only the date
`on which the petitioner, its privy, or a real party in interest was properly
`served with a complaint”). Petitioner has not identified, nor do we discern,
`any language in the statute indicating that amending the complaint in the
`ZTE action has any impact on the statutory bar. Because the statutory
`
`10
`
`
`
`IPR2019–00485
`Patent 8,213,970 B2
`language is unambiguous, our inquiry regarding statutory interpretation
`ceases, and we determine that the amendment does not remove the statutory
`bar. See id. (citations omitted) (explaining that “[b]ecause ‘the statutory
`language is unambiguous and ‘the statutory scheme is coherent and
`consistent,’ our inquiry ceases”).
`For the foregoing reasons, we determine that under the circumstances
`presented here, institution of inter partes review is barred under 35 U.S.C.
`§ 315(a)(1). Therefore, we do not institute an inter partes review in this
`proceeding. In addition, because institution of inter partes review is barred
`under § 315(a)(1) and this section does not provide an exception for joinder
`under 35 U.S.C. § 315(c), we dismiss Petitioner’s Motion as moot.
`
`C. Additional Arguments by Patent Owner
`Patent Owner argues that we should exercise our discretion to deny
`the Petition under 35 U.S.C. § 314(a). Prelim. Resp. 16–20. Patent Owner
`also argues that we should deny the Petition for failure to show there is a
`reasonable likelihood that Petitioner would prevail in demonstrating at least
`one claim of the ’970 patent is unpatentable. Id. at 6–16. Because we deny
`the Petition on other grounds, supra Sec. II.B, we need not, and do not,
`address Patent Owner’s arguments regarding § 314(a) and patentability.
`
` III. CONCLUSION
`For the foregoing reasons, we determine that institution of inter partes
`review is barred under 35 U.S.C. § 315(a)(1). Therefore, we do not institute
`an inter partes review.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that the Petition is denied and no trial is instituted.
`
`11
`
`
`
`IPR2019–00485
`Patent 8,213,970 B2
`
`PETITIONER:
`
`Miguel J. Bombach
`Kyle R. Canavera
`PERKINS COIE LLP
`MBombach@perkinscoie.com
`KCanavera@perkinscoie.com
`
`
`Lionel M. Lavenue
`Cory C. Bell
`Bradford C. Schulz
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`lionel.lavenue@finnegan.com
`cory.bell@finnegan.com
`bradford.schulz@finnegan.com
`
`
`
`PATENT OWNER:
`
`Vincent J. Rubino, III
`Alfred R. Fabricant
`Peter Lambrianakos
`Enrique W. Iturralde
`BROWN RUDNICK LLP
`vrubino@brownrudnick.com
`afabricant@brownrudnick.com
`plambrianakos@brownrudnick.com
`eiturralde@brownrudnick.com
`
`12
`
`
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