Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 7
`Entered: January 9, 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.
`
`IPR2019-01219
`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 9, 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.
`
`IPR2019-01219
`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
`
`
`
`
`
`
`IPR2019-01219
`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 10–20 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 IPR2019-01218.
`
`2
`
`
`
`
`IPR2019-01219
`Patent 6,836,654 B2
`
`
`B. The Asserted Grounds of Unpatentability
`Petitioner contends that claims 10–20 of the ’654 patent are
`unpatentable based on the following grounds:
`Claims Challenged
`35 U.S.C. §
`10–20
`1031
`10–12, 14–20
`103
`13
`103
`
`References/Basis
`Nokia2, Alos3
`Matsukida4, Alos
`Matsukida, Alos, Miller5
`
`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
`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.
`
`
`
`
`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 Japanese Patent Application Publication No. JP H6-216841, pub. Aug. 5,
`1994 (Ex. 1021).
`5 U.S. Patent No. 6,141,563, iss. Oct. 31, 2000, (Ex. 1022).
`3
`
`
`
`
`IPR2019-01219
`Patent 6,836,654 B2
`
`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
`Claims 10 and 17 are independent. Each of claims 11–16 and 18–20
`depends, directly or indirectly, from one of independent claims 10 and 17.
`Claim 10 is illustrative and recites:
`10. A method of protecting a mobile radiotelephony device, the
`method comprising:
`verifying a user identification module mounted inside the mobile
`radiotelephony device is linked to the mobile radiotelephony
`device;
`detecting a period of inactivity of the mobile radiotelephony
`device during a normal operation of
`the mobile
`radiotelephony device, wherein the normal operation includes
`a processing of all outgoing calls;
`preventing the normal operation of the mobile radiotelephony
`device in response to the verification of the linked user
`4
`
`
`
`
`IPR2019-01219
`Patent 6,836,654 B2
`
`
`identification module and in response to the detection of the
`period of inactivity of the mobile radiotelephony device.
`Ex. 1001, 5:27–40.
`
`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)).
`Petitioner “believes that no express construction is necessary to assess
`whether the prior art reads on the challenged claims.” Pet. 6. Patent Owner
`does not dispute this contention.
`For purposes of this decision, we need not construe expressly any
`claim terms.
`
`5
`
`
`
`
`IPR2019-01219
`Patent 6,836,654 B2
`
`
`B. Alleged Obviousness over Nokia and Alos
`1. Overview of Nokia
`Nokia discusses “the Nokia 9000i Communicator, the versatile
`communications tool you need to stay connected to the office when you are
`out.” Ex. 1004, 7. Nokia explains that the 9000i Communicator has two
`interfaces, including a phone interface, and a communicator interface. Id. at
`7–8.
`
`For the first start-up, Nokia instructs the user “[i]nstall the SIM card
`and switch on the phone interface before opening the communicator
`interface. In most locations, this will configure the settings for your voice
`mail and the SMSC.” Id. at 10. Nokia instructs the reader to then perform
`certain other steps for configuring the device’s settings and completing the
`start-up procedure. Id. at 11.
`Nokia discusses the option of locking the communicator to prevent
`outgoing calls. Id. at 81. Nokia also explains that “[i]f autolock is on, the
`communicator will lock automatically after the defined inactivity period.”
`Id.
`
`2. Overview of Alos
`Alos seeks to solve the problem of individuals using a radio-telephone
`device either after it has been misappropriated or after expiration of an
`authorized period of use for the device. Ex. 1005 ¶¶ 1–5. Alos teaches
`activating radio means of a mobile radio-telephone terminal with a chip
`card. Id. ¶¶ 6, 9. Alos explains that “the terminal has matching means
`which control the action of the chip card upon the radio means. The
`terminal is thus personalized and the card is linked thereto.” Id. ¶ 9. In one
`
`6
`
`
`
`
`IPR2019-01219
`Patent 6,836,654 B2
`
`embodiment, the matching means includes memory means containing data
`that is matched to data in memory means of the chip card. Id. ¶ 14.
`Controlling comparator means can read the chip card’s memory means and
`“authorize activation of the radio means only after the said match has been
`verified.” Id.
`Alos discloses an exemplary radio terminal in connection with its
`Figure, which is reproduced below.
`
`
`Alos’s Figure shows terminal 1, which is “a radio terminal, for example, for
`cellular telephony.” Id. ¶ 17. Terminal 1 includes keypad 2, transcoding or
`encrypting unit 3, and connector/reader 4. Id. Terminal 1 also includes
`memory 5, well as comparator 6, and radio transceiver unit 7. See id. ¶ 18.
`Memory 5 includes memory zone 522. Id.
`Connector/reader 4 can receive connector 14 of chip card 10. Id. ¶ 17.
`Chip card 10 includes comparator 11 and memory 12. Id. ¶ 18.
`
`7
`
`
`
`
`IPR2019-01219
`Patent 6,836,654 B2
`
`
`Comparators 6 and 11 control activation and deactivation of radio
`transceiver unit 7. Id. Comparator 11 connects to unit 3 through
`connectors 4, 14. Id. Comparator 11 also has a second input connected to
`memory 12. Id. Comparator 6 connects to zone 122 of memory 12, as well
`as memory zone 522 of memory 5. Id.
`
`3. Discussion
`Petitioner asserts that Nokia discloses most of the limitations of
`claims 10–20. Pet. 7–49. Anticipating that Patent Owner might argue “that
`‘linked’ in claim 10 requires storing the same data in the identification
`module and mobile radiotelephony device,” Petitioner argues that “such a
`link would have been obvious in view of Alos.” Id. at 10. Petitioner
`contends that “Alos describes a method of determining whether a SIM card
`is linked to a mobile terminal based on whether the same data is stored on
`both the SIM card and the device.” Id.
`Petitioner argues that it would have been obvious to combine these
`“teachings of Alos with the teachings of Nokia to verify that the SIM card
`and device in Nokia are linked, similar to as taught in Alos.” Id. at 12.
`Petitioner asserts that Nokia and Alos are analogous art and that a person of
`ordinary skill in the art would have expected success in applying its
`teachings to Nokia’s. Id. Petitioner also argues that a person of ordinary
`skill in the art would have understood “that incorporating the teachings of
`Alos, which ensures that a terminal and a linked SIM card can only be used
`together, would have improved security with respect to both Nokia’s
`Communicator and the SIM card—goals expressed by Nokia.” Id. at 13.
`
`8
`
`
`
`
`IPR2019-01219
`Patent 6,836,654 B2
`
`
`At this stage, there is a dispute regarding whether Petitioner has
`shown adequately that Nokia qualifies as a printed publication. Petitioner
`contends that Nokia qualifies as prior art under 35 U.S.C § 102(b), arguing
`that Nokia “was published and distributed along with the 9000i
`Communicator at least as early as October 1997.” Pet. 4. In support of its
`contention that Nokia constitutes a printed publication, Petitioner
`characterizes the Nokia 9000i as “a groundbreaking device in 1997” with a
`“widely heralded” release. Id. at 73 (citing Exs. 1010–1013). Petitioner
`notes that Nokia has been cited as prior art in many other proceedings at the
`Board. Id. Petitioner also identifies “an alternative reproduction with
`identical disclosures that indicates it was printed in April 1998” as evidence
`of Nokia’s status as a printed publication. Id. at 73–74. Additionally,
`Petitioner cites declaration testimony of Jari Toivanen that he was “a
`member of the team responsible for developing the . . . Nokia 9000i
`Communicator” and that “Nokia publicly distributed a user’s manual for the
`Nokia 9000i Communicator by at least October 1997.” Id. at 74 (citing Ex.
`1017, 1).
`Patent Owner argues that Petitioner’s evidence does not support its
`contention that Nokia is a printed publication. Prelim. Resp. 7–10. Patent
`Owner argues that reliance on the Nokia Communicator Owner’s manual in
`other Board proceedings does not obviate Petitioner’s burden to show the
`exhibit it relies on qualifies as a printed publication. Id. at 9. Noting that
`Exhibits 1010–1013 look like “printouts from the ‘Wayback Machine’
`website” (id. at 8), Patent Owner faults Petitioner for providing no testimony
`to authenticate these exhibits to any degree (id. at 8). Patent Owner argues
`
`9
`
`
`
`
`IPR2019-01219
`Patent 6,836,654 B2
`
`that the unsworn declaration of Jari Toivanen fails to meet multiple
`requirements for a declaration or affidavit in this proceeding. Id. at 9–10.
`Additionally, Patent Owner faults Mr. Toivanen’s testimony as conclusory
`with respect to the alleged public distribution of Nokia. Id. at 10.
`Patent Owner raises valid concerns regarding Petitioner’s evidence of
`Nokia’s printed publication status. For the reasons identified by Patent
`Owner, Exhibits 1010–1013 and the declaration of Mr. Toivanen ultimately
`may provide little or no support for Petitioner’s assertion that Nokia
`constitutes a printed publication. Aside from this, frequent reliance on the
`Nokia Communicator owner’s manual as prior art in other Board
`proceedings has limited persuasive value regarding whether Petitioner has
`shown that the exhibit on which it relies qualifies as a printed publication.
`To the extent these issues alone do not prove fatal to the Petition, they raise
`significant questions regarding whether it would be an efficient use of Board
`resources to conduct inter partes review.
`
`C. Alleged Obviousness over Matsukida and Alos
`1. Overview of Matsukida
`Matsukida describes an increasing demand for mobile devices for
`mobile communications corresponding with increasing incidence of
`unauthorized use. Ex. 1021 ¶ 1. As a result, Matsukida notes demand for a
`dial lock function to prevent unauthorized use. Id. Figure 1 of Matsukida is
`reproduced below.
`
`10
`
`
`
`
`IPR2019-01219
`Patent 6,836,654 B2
`
`
`
`Figure 1 of Matsukida “is a view of the principle of the present invention.”
`Id. ¶ 7.
`Figure 1 shows the interaction of various means. Included in Figure 1
`is operation means 1 “for carrying out an operation for putting the mobile
`device in dial lock state.” Id. ¶ 7. Storage means 2 stores information
`indicative of either a dial lock disengaged state or a dial lock state. Id. ¶ 8.
`Second storage means 3 stores a secret code. Id. Input means 4 allows entry
`of the secret code. Id. Cross-reference means 5 cross-references the
`11
`
`
`
`
`IPR2019-01219
`Patent 6,836,654 B2
`
`inputted secret code and the secret code in storage means 3. Id. In the event
`the secret codes match, cross-reference means 5 provides a dial lock
`disengage instruction to first storage means 2. Id. ¶ 9.
`First calculation means 7 determines the elapsed time from when dial
`lock is disengaged. Id. ¶ 10. Third storage means 9 stores first set time t1,
`which is the time “from disengagement of dial lock to automatic
`[reengagement] of the dial lock state.” Id. ¶ 11. First comparison means 11
`compares the calculated time from first calculation means 7 with first set
`time t1. Id.
`Monitoring means 6 detects when a call ends. Id. ¶ 12. Second
`calculation means 8 determines the time elapsed from the end of the call
`detected by monitoring means 6. Id. Fourth storage means 10 stores
`“second time t2 from completion of a call to automatic review engagement
`of a dial lock state.” Id. ¶ 13. Second comparison means 12 is “for
`comparing the calculated time and the second calculation means 8 and the
`second set time t2, and detecting that the calculated time has exceeded the
`second set time t2.” Id.
`When either comparison means 11 or comparison means 12 detects
`time excess, automatic setting means 13 stores in first storage means 2
`information indicating a dial lock state. Id. ¶ 14.
`
`2. Discussion
`Petitioner contends that Matsukida teaches most of the limitations of
`claims 10–12 and 14–20. Pet. 49–70. Petitioner notes that Matsukida does
`not disclose expressly a “user identification module.” Id. at 50. Petitioner
`argues, however, that Alos teaches a user identification module in the form
`
`12
`
`
`
`
`IPR2019-01219
`Patent 6,836,654 B2
`
`of its SIM card. Id. Petitioner argues that it would have been obvious to
`combine the teachings of Alos with Matsukida because a person of ordinary
`skill in the art would have understood that “incorporating the teachings of
`Alos relating to a linked SIM card would have improved mobile device
`security—a goal also expressed by Matsukida (Ex. 1021, ¶¶1, 5-6, 51-52,
`54-55)—as well as SIM card security.” Id. at 50–51. Petitioner further
`argues that the combination would have been obvious due to the ubiquity
`of SIM card use at the time, as well as the simplicity of implementing the
`technology. Id. at 51–52. At this stage, there are no disputes between the
`parties regarding the substance of Petitioner’s contention that claims 10–
`12 and 14–20 would have been obvious over Matsukida and Alos.
`
`D. Alleged Obviousness over Matsukida, Alos, and Miller
`1. Overview of Miller
`Miller explains that radiotelephone systems use a SIM card inside a
`radiotelephone device to “provid[e] subscriber identification, billing
`information and other information concerning the operation of the
`radiotelephone.” Ex. 1022, 1:12–17. According to Miller, “[i]n the present
`telecommunications environment, SIM cards are used to allow the SIM card
`holder to have access to any telecommunications device such as a cellular
`telephone which will receive the SIM card.” Id. at 1:34–37. Miller desires
`“to provide for limited use of subscriber units,” in order to reduce
`misappropriation or theft of subscriber units. Id. at 1:42–50.
`
`2. Discussion
`Claim 13 recites “wherein the prevention of the normal operation of
`the mobile radiotelephony device prevents all transmissions of non-
`13
`
`
`
`
`IPR2019-01219
`Patent 6,836,654 B2
`
`emergency outgoing calls and permits all transmissions of emergency
`outgoing calls.” Ex. 1001, 5:52–55. Petitioner contends that “[a]lthough
`Matsukida “does not expressly disclose permitting outgoing emergency calls
`while in the dial lock state, such a commonsense, widely-used functionality
`would have been obvious in view of Miller.” Pet. 71. Petitioner asserts that
`Miller discloses security features that may be averted for emergency calls.
`Id. at 71–72. Arguing that Miller “is in the same field of mobile device
`security,” Petitioner argues it would have been obvious to combine its
`teachings with those of Matsukida and Alos, explaining that a person of
`ordinary skill in the art would have understood the benefits of allowing
`emergency calls even in the absence of a valid SIM card. Id. at 72. At this
`stage, there is no dispute between the parties regarding the substance of
`Petitioner’s contention that claim 13 would have been obvious in view of
`Matsukida, Alos, and Miller.
`
`E. 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
`
`14
`
`
`
`
`IPR2019-01219
`Patent 6,836,654 B2
`
`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. 74–75. Petitioner
`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 74. 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. at 74–75.
`Additionally, Petitioner argues that it filed the Petition promptly and
`the district court proceeding is in its early stages. Id. at 75. 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)
`
`15
`
`
`
`
`IPR2019-01219
`Patent 6,836,654 B2
`
`(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
`the district court schedule includes the claim construction hearing in
`December 2019, as well as the close of expert discovery in March of 2020.
`Id. at 5–6. 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. at 5.
`Patent Owner also argues that Petitioner’s reliance on this Petition and
`the petition in IPR2019-01218 to challenge the same patent unduly burdens
`the Board and Patent Owner. Id. at 6–7. 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.B.3, concerns about whether an inter partes review would be an
`efficient use of the Board’s resources arise from the issues regarding the
`evidence submitted by Petitioner in support of its contention that Nokia
`qualifies as a printed publication.
`Second, Petitioner does not distinguish persuasively the facts here
`from the facts in our precedential decision NHK Spring. Pet. 74–75.
`Petitioner argues that it filed its Petition promptly and the district court
`
`16
`
`
`
`
`IPR2019-01219
`Patent 6,836,654 B2
`
`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, 2020 (Pet. 75),
`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.
`
`17
`
`
`
`
`IPR2019-01219
`Patent 6,836,654 B2
`
`
`V. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that the Petition is denied, and no trial is instituted.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`18
`
`
`
`
`IPR2019-01219
`Patent 6,836,654 B2
`
`PETITIONER:
`
`Naveen Modi
`Joseph E. Palys
`Phillip W. Citroën
`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
`
`
`
`
`
`
`
`
`19
`
`
`
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
