Paper 20
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: June 19, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., SAMSUNG TELECOMMUNICATIONS AMERICA,
`LLC, and SAMSUNG AUSTIN SEMICONDUCTOR, LLC,
`
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`Patent Owner.
`____________
`
`Case IPR2015-00555
`Patent 8,457,228 B2
`____________
`
`Before JAMESON LEE, HOWARD B. BLANKENSHIP, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`DECISION
`Denial of Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Denial of Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`Rembrandt Wireless
`Ex. 2014
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00034
`Page 1 of 10
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`

`

`IPR2015-00555
`Patent 8,457,228 B2
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`
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`
`
`I. BACKGROUND
`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc.,
`
`Samsung Telecommunications America, LLC, and Samsung Austin
`Semiconductor, LLC (collectively, “Petitioner”) filed a petition requesting
`inter partes review of claim 21 of U.S. Patent No. 8,457,228 B2 (“the ’228
`patent”) (Ex. 1301) under 35 U.S.C. §§ 311–319. See Paper 1 (Petition, or
`“Pet.”). With the Petition, Petitioner filed a motion for joinder (Paper 3,
`“Mot. Join.”), seeking to join with Samsung Electronics Co. v. Rembrandt
`Wireless Technologies, LP, Case IPR2014-00892 (“IPR ’892”). Patent
`Owner Rembrandt Wireless Technologies, LP filed an opposition to the
`motion for joinder (Paper 9, “Opp.”) and a preliminary response (see Paper
`19, “Prelim. Resp.”). Petitioner filed a reply to Patent Owner’s opposition to
`the motion for joinder. Paper 10 (“Reply”). We have jurisdiction under 35
`U.S.C. § 314.
`
`For the reasons that follow, we deny the motion for joinder and do not
`institute an inter partes review as to the challenged claim of the ’228 patent.
`
`A. Related Proceedings
`According to Petitioner, the ’228 patent is involved in the lawsuit
`Rembrandt Wireless Technologies, LP v. Samsung Electronics Co, No. 2:13-
`cv-00213 (E.D. Tex. 2013). Pet. 1. The ’228 patent also has been
`challenged in the following cases: Samsung Electronics Co. v. Rembrandt
`Wireless Technologies, LP, IPR2014-00889; Samsung Electronics Co. v.
`Rembrandt Wireless Technologies, LP , IPR2014-00890; Samsung
`Electronics Co. v. Rembrandt Wireless Technologies, LP , IPR2014-00891;
`Samsung Electronics Co. v. Rembrandt Wireless Technologies, LP ,
`
`2
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`Rembrandt Wireless
`Ex. 2014
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00034
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`
`
`IPR2015-00555
`Patent 8,457,228 B2
`
`
`IPR2014-00892; Samsung Electronics Co. v. Rembrandt Wireless
`Technologies, LP, IPR2014-00893; and Samsung Electronics Co. v.
`Rembrandt Wireless Technologies, LP, IPR2014-00895.
`
`
`B. The ’228 Patent
`The ’228 Patent issued from an application filed August 4, 2011,
`which claimed priority under 35 U.S.C. § 120 through a chain of intervening
`applications to an application filed December 4, 1998, and which further
`claimed priority under 35 U.S.C. § 119 to a provisional application filed
`December 5, 1997.
`The technical field of the patent relates to data communications and
`modulators/demodulators (modems), and in particular to a data
`communications system in which a plurality of modems use different types
`of modulation in a network. Ex. 1301, col. 1, ll. 21–25; col. 1, l. 58 – col. 2,
`l. 23.
`
`
`C. Challenged Claim
`Claim 21, the sole claim that is challenged, is reproduced below along
`with base claim 1.
`1. A master communication device configured to
`communicate with one or more slave transceivers according to
`a master/slave relationship in which a slave communication
`from a slave device to the master communication device occurs
`in response to a master communication from the master
`communication device to the slave device, the master
`communication device comprising:
`a master transceiver configured to transmit a first
`message over a communication medium from the master
`
`3
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`Ex. 2014
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00034
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`IPR2015-00555
`Patent 8,457,228 B2
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`transceiver to the one or more slave transceivers, wherein the
`first message comprises:
`
`first information modulated according to a first
`modulation method,
`
`second information, including a payload portion,
`modulated according to the first modulation method, wherein
`the second information comprises data intended for one of the
`one or more slave transceivers and
`
`first message address information that is indicative
`of the one of the one or more slave transceivers being an
`intended destination of the second information; and
`said master transceiver configured to transmit a second
`message over the communication medium from the master
`transceiver to the one or more slave transceivers wherein the
`second message comprises:
`
`third information modulated according to the first
`modulation method, wherein the third information comprises
`information that is indicative of an impending change in
`modulation to a second modulation method, and
`
`fourth information, including a payload portion,
`transmitted after transmission of the third information, the
`fourth information being modulated according to the second
`modulation method, the second modulation method being of a
`different type than the first modulation method, wherein the
`fourth information comprises data intended for a single slave
`transceiver of the one or more slave transceivers, and
`
`second message address information that is
`indicative of the single slave transceiver being an intended
`destination of the fourth information; and
`
`wherein the second modulation method results in a
`higher data rate than the first modulation method.
`
`4
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`Ex. 2014
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`IPR2015-00555
`Patent 8,457,228 B2
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`21. The master communication device as in claim 1,
`wherein the first information that is included in the first
`message comprises the first message address data.
`
`D. Prior Art
`Boer
`US 5,706,428
`
`Siwiak
`
`
`Jan. 6, 1998
`
`(Ex. 1304)
`
`US 5,537,398
`
`July 16, 1996
`
`(Ex. 1324)
`
`E. Asserted Ground of Unpatentability
`Petitioner asserts the following ground of unpatentability as to claim
`21 (Pet. 3): obviousness under 35 U.S.C. § 103(a) over Admitted Prior Art
`(“APA”)1, Boer, and Siwiak.
`
`
`II. ANALYSIS
`
`A. Background
`In IPR ’892, Petitioner asserted that claims 1–3, 5, and 10–21
`of the ’228 patent were unpatentable over APA and Boer. IPR ’892, Paper 2
`at 20–70. We did not institute an inter partes review of claim 21 based on
`that ground in IPR ’892. We explained as follows:
`Claim 21, which depends directly from claim 1, recites
`that the first information that is included in the first message
`“comprises the first message address data.” Petitioner maps the
`claimed “first information” as corresponding to header 218 of
`message 200 depicted in Figure 4 of Boer. Petitioner admits
`that Boer does not teach placing its address information in
`header 218 (Ex. 1304, Fig. 4). Boer teaches that DATA field
`
`
`1 Petitioner asserts that Patent Owner made admissions in the ’228 patent
`disclosure and in the prosecution history of a parent application regarding
`prior art. Pet. 12–14.
`
`5
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`214 (Fig. 4), which is deemed to correspond to the “second
`information,” contains a destination address.
`Petitioner submits that the ’228 patent “admits” that
`placing address information in the training sequence of a
`message is prior art. Petitioner does not indicate how such an
`admission might be relevant to claim 21. The ’228 patent
`teaches that in a multipoint system the address of the trib with
`which the master is establishing communication is also
`transmitted during the training interval. The “training signals”
`that are exchanged during the training interval, however, are
`“sequences of signals of particular subsets of all signals that can
`be communicated via the agreed upon common modulation
`method.” Petitioner does not identify any teaching of placing
`address data in the message header.
`Petitioner concludes that “[a] person having ordinary
`skill in the art would have been motivated to combine the APA
`with Boer due to the similarities between the packet structures
`and because where the address fields are placed is a matter of
`design choice.” Petitioner has not identified a teaching in the
`applied prior art of placing address data in the header of a
`message. Nor has Petitioner provided evidence sufficient to
`demonstrate that the ordinary artisan would have considered
`placing the address data as claimed to be a mere matter of
`“design choice.” Petitioner’s conclusory allegation of “design
`choice” does not provide the required “articulated reasoning
`with some rational underpinning to support the legal conclusion
`of obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
`418 (2007).
`
`IPR ’892, slip op. at 13–15 (PTAB Dec. 10, 2014) (Paper 8) (citations to
`record omitted).
`We do not reach the merits of Petitioner’s additional reasoning in the
`instant Petition as to why Petitioner asserts that the subject matter of claim
`21 would have been obvious over the combination of APA, Boer, and
`Siwiak. Instead, for the reasons discussed below, we exercise our discretion
`
`6
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`under 35 U.S.C. § 325(d) to deny institution of inter partes review in this
`proceeding.
`
`B. Principles of Law
`A petitioner is not entitled to multiple challenges against a patent:
`In determining whether to institute or order a proceeding under
`. . . chapter 31, the Director may take into account whether, and
`reject the petition or request because, the same or substantially
`the same prior art or arguments previously were presented to
`the Office.
`
`35 U.S.C. § 325(d) (titled: “MULTIPLE PROCEEDINGS”). Further, in
`construing our authority to institute inter partes review under 37 C.F.R.
`§ 42.108, we are mindful of the guidance provided in § 42.1(b): “[37 C.F.R.
`§ 42] shall be construed to secure the just, speedy, and inexpensive
`resolution of every proceeding.”
`
`
`C. Discussion
`The difference between what Petitioner presents in this proceeding
`and what Petitioner presented in IPR ’892 with respect to claim 21 of the
`’228 patent is that Petitioner now offers Siwiak as support for the asserted
`obviousness of placing address data in a message header as taught by Boer.
`Pet. 24–57; Mot. Join. 5–6. Petitioner, however, presents no argument or
`evidence that Siwiak was not known or available to it at the time of filing
`IPR ’892. In fact, Petitioner applied Siwiak in proposed grounds of rejection
`against claim 21 of the ’228 patent in another petition filed the same day as
`that in the IPR ’892 proceeding. See IPR2014-00889, Paper 2 at 58–60. On
`this record, we exercise our discretion and “reject the petition” because “the
`
`7
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`same or substantially the same prior art” previously was “presented to the
`Office” in the IPR ’892 proceeding. 35 U.S.C. § 325(d); see also Unilever,
`Inc., v. The Proctor & Gamble Co., Case IPR2014-00506, slip op. at 6
`(PTAB July 7, 2014) (Paper 17) (informative) (seven new references added
`to six that were applied in earlier petition).
`Petitioner is requesting, essentially, a second chance to challenge the
`claims. We, however, are not persuaded that a second chance would help
`“secure the just, speedy, and inexpensive resolution of every proceeding.”
`37 C.F.R. § 42.1(b). Permitting second chances in cases like this one ties up
`the Board’s limited resources; we must be mindful not only of this
`proceeding, but of “every proceeding.” Id.; see also ZTE Corp. v.
`ContentGuard Holdings, Inc., Case IPR2013-00454, slip op. at 5–6 (PTAB
`Sept. 25, 2013) (Paper 12) (“The Board is concerned about encouraging,
`unnecessarily, the filing of petitions which are partially inadequate.”); cf.
`Ariosa Diagnostics v. Isis Innovation, Ltd., Case IPR2013-00250, slip op. at
`2, 4 (PTAB Sept. 8, 2013) (Paper 25) (granting joinder when a new product
`was launched, leading to a threat of new assertions of infringement) and
`Paper 4 at 3; Microsoft Corp. v. Proxyconn, Inc., Case IPR2013-00109, slip
`op. at 3 (PTAB Feb. 25, 2014) (Paper 15) (granting joinder when additional
`claims had been asserted against petitioner in concurrent district court
`litigation).
`In this proceeding, however, we are not apprised of a reason that
`merits a second chance. Petitioner simply presents arguments now that it
`could have made in IPR ’892, had it merely chosen to do so. In view of the
`foregoing, and especially in light of the fact that, barring joinder, this
`petition is time-barred under 35 U.S.C. § 315(b), we exercise our discretion
`
`8
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`under 35 U.S.C. § 325(d) to deny the petition, because it presents merely
`“the same or substantially the same prior art or arguments” presented to us in
`IPR ’892. As a consequence, Petitioner’s motion for joinder is dismissed as
`moot.
`
`
`
`
`III. ORDER
`In view of the foregoing, it is
`ORDERED that Petitioner’s motion for joinder is dismissed; and
`FURTHER ORDERED that no trial is instituted.
`
`9
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`IPR2015-00555
`Patent 8,457,228 B2
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`
`PETITIONER:
`J. Steven Baughman
`Gabrielle E. Higgins
`Daniel Cardy
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`gabrielle.higgins@ropesgray.com
`cardyd@dicksteinshapiro.com
`
`
`
`PATENT OWNER
`
`Thomas Engellenner
`Reza Mollaaghababa
`George Haight
`Lana Gladstein
`PEPPER HAMILTON LLP
`engellennert@pepperlaw.com
`mollaaghababar@pepperlaw.com
`haightg@pepperlaw.com
`gladsteinl@pepperlaw.com
`
`
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