Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper: 7
`Entered: January 7, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2019-01218
`Patent 6,836,654 B2
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, NEIL T. POWELL, and JOHN D.
`HAMANN, Administrative Patent Judges.
`POWELL, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper: 7
`Entered: January 7, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2019-01218
`Patent 6,836,654 B2
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, NEIL T. POWELL, and JOHN D.
`HAMANN, Administrative Patent Judges.
`POWELL, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`IPR2019-01218
`Patent 6,836,654 B2
`
`
`I. INTRODUCTION
`Petitioner Samsung Electronics America, Inc., filed a Petition
`(Paper 1, “Pet.”) requesting an inter partes review of claims 1–9 of U.S.
`Patent No. 6,836,654 B2 (Ex. 1001, “the ’654 patent”). Patent Owner
`Uniloc 2017 LLC filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`Having considered the Petition and Preliminary Response, we
`conclude the Petition should be denied for the reasons discussed below.
`
`II. BACKGROUND
`A. Related Matters
`The parties identify a number of district court proceedings involving
`the ’654 patent. Pet. 1; Paper 3, 2. Of the identified district court
`proceedings, Petitioner is involved in one, specifically Uniloc 2017 LLC v.
`Samsung Elecs. Am., Inc., Case No. 2-18-cv-00508 (E.D. Tex.) (hereafter
`“the district court proceeding”). Additionally, Petitioner has filed another
`Petition challenging the ’654 patent in IPR2019-01219.
`
`2
`
`
`
`
`IPR2019-01218
`Patent 6,836,654 B2
`
`
`B. The Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–9 of the ’654 patent are unpatentable
`based on the following grounds:
`Claims Challenged
`35 U.S.C. §
`1–3, 7–9
`1031
`4–6
`103
`1, 2, 7–9
`103
`4–6
`103
`3
`103
`
`References/Basis
`Nokia2, Alos3
`Nokia, Alos, Kemppi4
`Matsukida5, Alos
`Matsukida, Alos, Kemppi
`Matsukida, Alos, Miller6
`
`Petitioner also relies on the Declaration of Zygmunt J. Haas, Ph.D.
`(Ex. 1002).
`C. The ’654 Patent
`The ’654 patent relates to protecting against theft of a mobile
`radiotelephony device. Ex. 1001, code (57). The ’654 patent notes a
`previously disclosed method of protecting a radiotelephone by creating a
`
`
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011), amended 35 U.S.C. § 103 effective March 16, 2013. Because the
`’654 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.
`2 Owner’s Manual for the Nokia 9000i Communicator, Issue 1.1 (Ex. 1004).
`3 Published U.S. Patent Application No. 2002/0147028 A1, pub. Oct. 10,
`2002 (Ex. 1005).
`4 U.S. Patent No. 4,868,846, iss. Sep. 19, 1989, (Ex. 1006).
`5 Japanese Patent Application Publication No. JP H6-216841, pub. Aug. 5,
`1994 (Ex. 1021).
`6 U.S. Patent No. 6,141,563, iss. Oct. 31, 2000, (Ex. 1022).
`3
`
`
`
`
`IPR2019-01218
`Patent 6,836,654 B2
`
`link between the device and a particular user identification module and
`preventing normal use of the device in the event that the user identification
`module installed in the device is not the linked user identification module.
`Id. at 1:21–29. The ’654 patent laments that this method may allow use of a
`lost or stolen device until the user alerts an operator and the network blocks
`use of the identification module linked to the device. Id. at 1:30–36.
`To address this issue, the ’654 patent discloses a method of blocking
`normal use of a radiotelephony device that has a user identification module.
`Id. at 1:39–50. Specifically, the ’654 patent discloses blocking normal use
`of the radiotelephony device in response to confirmation of the user
`identification module and detection of a period of inactivity of the device.
`Id. Consequently, when the device is lost or stolen, by the time a third party
`has the device, “it has most probably been inactive for a period of time that
`is sufficiently long for its normal operation to be blocked.” Id. at 1:51–54.
`“Thanks to the invention the lost or stolen device becomes totally unusable.”
`Id. at 1:59–60.
`
`D. Illustrative Claim
`Claim 1 is independent. Each of claims 2–9 depends, directly or
`indirectly, from independent claim 1. Claim 1 is illustrative and recites:
`1. A mobile radiotelephony device, comprising:
`blocking means for preventing a normal operation of the mobile
`radiotelephony device, wherein the normal operation includes
`processing of outgoing calls;
`timing means for activating the blocking means in response to
`the mobile radiotelephony device being inactive during the
`normal operation of the mobile radiotelephony device for a
`defined period of time subsequent to a mounting of a linked
`
`4
`
`
`
`
`IPR2019-01218
`Patent 6,836,654 B2
`
`
`user identification module inside the mobile radiotelephony
`device; and
`deblocking means for permitting the normal operation of the
`mobile radiotelephony device in response to a supply of a
`deblocking code to the mobile radiotelephony device
`subsequent to the mounting of the linked user identification
`module
`inside
`the mobile radiotelephony device and
`subsequent to the defined period of time.
`Ex. 1001, 6:39–56.
`
`III. ANALYSIS
`A. Claim Construction
`In an inter partes review for a petition filed on or after November 13,
`2018, the “[claims] of a patent … shall be construed using the same claim
`construction standard that would be used to construe the [claims] in a civil
`action under 35 U.S.C. § 282(b), including construing the [claims] in
`accordance with the ordinary and customary meaning of such claims as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent.” Changes to the Claim Construction Standard for
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
`Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (codified at 37 C.F.R.
`§ 42.100(b) (2019)) (amending 37 C.F.R. § 42.100(b) effective November
`13, 2018); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed.
`Cir. 2005). Only those terms that are in controversy need be construed, and
`only to the extent necessary to resolve the controversy. See Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999)).
`
`5
`
`
`
`
`IPR2019-01218
`Patent 6,836,654 B2
`
`
`Petitioner notes that certain terms in the claims use the word “means,”
`thereby triggering a presumption that the terms invoke 35 U.S.C. § 112,
`sixth paragraph. Pet. 6–9. Petitioner also notes that construing means-
`plus-function limitations involves identifying structures disclosed in the
`Specification that correspond to the functions recited in the claims.
`Id. at 6 (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–49
`(Fed. Cir. 2015) (en banc)). Petitioner asserts that the functions recited in
`the claims require a special purpose computer, such that the Specification
`“must disclose corresponding structure in the form of an algorithm for
`performing the claimed function.” Id. (citing Williamson, 792 F.3d at
`1352). Petitioner argues that the Specification “does not set forth an
`algorithm for performing the functions,” but “merely restates the
`functions recited in the claims.” Id. at 6–7. Petitioner explains that “for
`purposes of this proceeding, Petitioner assumes that Patent Owner will
`argue that the corresponding structure for the identified functions is
`software executed by a processor that performs the identified functions
`(or equivalents thereof) recited in the claims and described in [certain
`portions of the Specification identified by Petitioner].” Id. at 7.
`Patent Owner declines to adopt the position Petitioner “assume[d]”
`Patent Owner would. Prelim. Resp. 10. Instead, Patent Owner argues that
`Petitioner’s claim construction arguments unambiguously assert that the
`Specification does not contain any structure corresponding to the functions
`recited in the claims. Id. at 9–10. Patent Owner argues that Petitioner’s
`position prevents discerning adequately the basis of Petitioner’s challenges
`
`6
`
`
`
`
`IPR2019-01218
`Patent 6,836,654 B2
`
`under § 103. Id. at 10. Patent Owner argues that we should deny institution
`for these reasons. Id. at 9–12.
`For purposes of this decision, we do not find it necessary to construe
`expressly any claim term. Nor do we find it necessary to determine whether
`Petitioner’s claim construction arguments, by themselves, prove fatal to its
`Petition. We note, however, that if Petitioner is correct that the challenged
`claims contain means-plus-function limitations with no corresponding
`structure in the Specification, Patent Owner’s concerns about understanding
`the basis of Petitioner’s challenges under § 103 are valid. This raises
`concerns regarding whether it would be efficient to conduct an inter partes
`review based on Petitioner’s challenges under § 103.
`
`B. Discretion to Institute under 35 U.S.C. § 314(a)
`The Director has discretion to institute an inter partes review under 35
`U.S.C. § 314(a) and 37 C.F.R. § 42.108(a). See 35 U.S.C. § 314(a) (stating
`“[t]he Director may not authorize an inter partes review to be instituted
`unless the Director determines that the information presented in the petition .
`. . 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”
`(emphasis added)). In exercising discretion under 35 U.S.C. § 314(a) and 37
`C.F.R. § 42.108(a), we are mindful of the goals of the AIA—namely, to
`improve patent quality and make the patent system more efficient by the use
`of post-grant review procedures. See H.R. Rep. No. 112-98, pt. 1, at 40
`(2011).
`Petitioner argues that certain considerations weigh in favor of
`exercising discretion to institute inter partes review. Pet. 77–78. Petitioner
`
`7
`
`
`
`
`IPR2019-01218
`Patent 6,836,654 B2
`
`explains that it presents alternative unpatentability grounds based on Nokia
`and Matsukida because “[t]he Matsukida-based grounds are presented in the
`unlikely event that the Board finds Nokia to not be a printed publication.”
`Id. at 77. Petitioner asserts that it would not prove unduly burdensome to
`evaluate the alternative grounds because of simplicity of the technology and
`similarity between the alternative grounds. Id.
`Additionally, Petitioner argues that it filed the Petition promptly and
`the district court proceeding is in its early stages. Id. at 77. Petitioner notes
`that it filed the Petition “within eight months of Uniloc’s re-filing of its
`lawsuit.” Id. Petitioner also explains that the schedule of the district court
`proceeding includes a claim construction hearing in December 2019 and jury
`selection beginning in July 2020. Id.
`Patent Owner argues that we should exercise our discretion under
`§ 314(a) to deny institution of inter partes review. Prelim. Resp. 3–7. In
`particular, Patent Owner argues that instituting would use Board resources
`inefficiently. Id. at 3. Patent Owner disagrees with Petitioner’s
`characterizations of certain facts. Patent Owner disputes Petitioner’s
`assertion that the district court proceeding is in its early stages. To the
`contrary, Patent Owner argues that the timing of the district court proceeding
`relative to this one closely matches the facts in NHK Spring Co., Ltd. v.
`Intri-plex Technologies, IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018)
`(precedential). Prelim. Resp. 4–5. Patent Owner notes, for example, that
`“jury selection at the start of trial before the district court is set for July 6,
`2020, which is . . . six months prior to conclusion of trial before the Board if
`one were instituted, as in NHK Spring.” Id. at 5. Patent Owner also notes
`
`8
`
`
`
`
`IPR2019-01218
`Patent 6,836,654 B2
`
`the district court schedule includes the claim construction hearing in
`December 2019, as well as the close of expert discovery in March of 2020.
`Additionally, Patent Owner argues that, like NHK Spring, “the same grounds
`proposed in the Petition are included in Petitioner’s invalidity contentions in
`the district court.” Id.
`Patent Owner also argues that Petitioner’s reliance on this Petition and
`the petition in IPR2019-01219 to challenge the same patent unduly burdens
`the Board and Patent Owner. Id. at 6. Patent Owner argues that Petitioner’s
`filing of multiple Petitions challenging the same patent also raises concerns
`about fairness, timing, and efficiency. Id. Patent Owner argues that the
`circumstances are not sufficiently rare to warrant filing two Petitions to
`challenge one patent. Id. at 7.
`We find Patent Owner’s arguments regarding the proper use of our
`discretion more persuasive than Petitioner’s. First, as discussed above in
`Section III.A, concerns about whether an inter partes review would be an
`efficient use of the Board’s resources arise from Petitioner’s position that the
`claims recite means-plus-function limitations for which there is no
`corresponding structure in the Specification.
`Second, Petitioner does not distinguish persuasively the facts here
`from the facts in our precedential decision NHK Spring. Pet. 77–78.
`Petitioner bases this assertion on its contention that it filed its Petition
`promptly and the district court proceeding is in its early stages. But
`Petitioner does not identify a significant distinction between the timing of
`the district court proceeding here and the facts in NHK Spring. Petitioner
`acknowledges that jury selection in the district court is scheduled for July 6,
`
`9
`
`
`
`
`IPR2019-01218
`Patent 6,836,654 B2
`
`2020 (Pet. 77), approximately six months before a trial in this proceeding
`would conclude. Petitioner does not explain, and it is not apparent, how this
`differs from the facts of NHK Spring, where the district court trial was set
`for approximately six months before a trial before the Board would have
`concluded. NHK Spring at 20. Additionally, and importantly, Petitioner
`does not attempt to identify a distinction between the unpatentability
`grounds presented in this proceeding and those presented in the district court
`proceeding, leaving undisputed Patent Owner’s assertion that “the same
`grounds proposed in the Petition are included in Petitioner’s invalidity
`contentions in the district court.” Prelim. Resp. 5. Thus, Petitioner does not
`distinguish the present case from NHK Spring, where “the same prior art and
`arguments” were asserted in the district court proceeding and the Board
`proceeding. NHK Spring at 20.
`In view of the foregoing, we determine that the circumstances present
`here, on the whole, weigh in favor of exercising our discretion to deny
`institution under § 314(a).
`
`IV. CONCLUSION
`Taking account of the information presented in the Petition and the
`Preliminary Response, and the evidence of record, we exercise our
`discretion under § 314(a) and deny institution. Accordingly, the Petition is
`denied, and no trial is instituted.
`
`V. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that the Petition is denied, and no trial is instituted.
`
`
`
`10
`
`
`
`
`IPR2019-01218
`Patent 6,836,654 B2
`
`PETITIONER:
`
`Naveen Modi
`Joseph Palys
`Phillip Citroen
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`phillipcitroen@paulhastings.com
`
`
`PATENT OWNER:
`
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`
`
`
`
`
`
`11
`
`
`
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
