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` Paper 10
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` Date: August 14, 2020
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`v.
`SEVEN NETWORKS, LLC,
`Patent Owner.
`____________
`
`IPR2020-00281
`Patent 10,027,619 B2
`____________
`
`
`
`
`
`
`Before THU A. DANG, KARL D. EASTHOM, and JONI Y. CHANG,
`Administrative Patent Judges.
`
`
`CHANG, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`IPR2020-00281
`Patent 10,027,619 B2
`
`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review (“IPR”) of claims 22−28, 32, 33, 36−42, 46, and 50−52 (“the
`challenged claims”) of U.S. Patent No. 10,027,619 B2 (Ex. 1001, “the ’619
`patent”). Paper 3 (“Pet.”), 1. Petitioner also filed a parallel Petition (“the
`’280 IPR Petition”), challenging the same claims of the same patent.
`IPR2020-00280, Paper 2. In each IPR proceeding, Petitioner filed a Notice
`ranking the Petitions in the order that Petitioner wishes the Board to consider
`the merits—namely, ranking the ’280 IPR Petition first and the instant
`Petition second. Paper 2 (“Notice”). Seven Networks, LLC, (“Patent
`Owner”) filed a Preliminary Response, arguing that the instant Petition
`should be denied as an improper parallel petition. Paper 8 (“Prelim. Resp.”),
`1−7. For the reasons stated below, we exercise our discretion under § 314(a)
`and deny institution of inter partes review in the instant proceeding.
`
`A. Related Matter
`The parties indicate that the ’619 patent is involved in Seven
`Networks, LLC v. Apple Inc., Case No. 2:19-cv-115 (E.D. Tex.). Pet. 75;
`Paper 5, 1.
`
`B. The ’619 Patent
`The ’619 patent discloses methods and systems for transmitting
`electronic mail (e-mail) messages to or from a mobile terminal. Ex. 1001,
`code (57), 1:20−22. Figure 1 of the ’619 patent is reproduced below.
`
`2
`
`
`
`IPR2020-00281
`Patent 10,027,619 B2
`
`
`
`
`Figure 1 above shows an exemplary system architecture. Id. at
`3:9−10. The ’619 patent “aims at improving cooperation between the host
`system 100 and mobile terminal 102 such that they can use a single e-mail
`account.” Id. at 3:15−18. The ’619 patent also describes a secure e-mail
`provisioning technique in which host system 100 authenticates the use of
`mobile terminal 102 by receiving a service activation code and conveying
`the code to message center 110. Id. at 4:56−5:37. Mobile terminal 102
`generates and displays a service activation code and host system 100
`authenticates the user who enters the code. Id.
`
`3
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`
`
`IPR2020-00281
`Patent 10,027,619 B2
`
`
`C. Illustrative Claim
`Of the challenged claims, claims 22, 37, and 51 are independent.
`Claims 23−28, 32, 33, and 36 depend from claim 22; claims 38−42, 46, and
`50 depend from claim 37; claim 52 depends from claim 51. Claim 22 is
`illustrative:
`22. A device comprising:
`a radio;
`a processor and memory containing instructions executable by
`the processor whereby the device is operable to:
`optically receive information including a displayed service
`activation code from a remote device;
`register the remote device for access to a messaging account
`using the service activation code;
`receive a message for the messaging account;
`encrypt the message using an encryption key; and
`send the message to the remote device,
`wherein the device is authenticated to access the messaging
`account.
`Ex. 1001, 11:5–17.
`
`D. Prior Art Relied Upon
`Petitioner relies upon the references listed below (Pet. 2):
`
`
`
`Reference
`
`Date
`
`Exhibit No.
`
`Nielson, PCT WO 2001/040605
`
`Thompson, PCT WO 2001/029731
`
`Richardson, US 2005/0210259 A1
`
`June 7, 2001
`
`Apr. 26, 2001
`
`Sep. 22, 2005
`
`1005
`
`1006
`
`1008
`
`4
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`
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`IPR2020-00281
`Patent 10,027,619 B2
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`Reference
`
`Eaton, US 2003/0101343 A1
`
`Friend, US 2004/0049599 A1
`
`Brown, US 7,603,556
`
`
`Date
`
`Exhibit No.
`
`May 29, 2003
`
`Mar. 11, 2004
`
`Oct. 13, 2009
`
`1009
`
`1010
`
`1012
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 1):
`
`Claims Challenged
`
`22−26, 32, 37−40, 46, 51
`
`22−28, 32, 33, 37−42, 46, 51
`
`32, 46
`
`36, 50, 52
`
`
`
`References
`
`35
`U.S.C.
`§
`103 Brown, Thompson, Nielsen
`103 Brown, Thompson, Nielsen,
`Easton
`Brown, Thompson, Nielsen,
`Easton, Richardson
`Brown, Thompson, Nielsen,
`Easton, Friend
`
`103
`
`103
`
`II. ANALYSIS
`Discretionary Denial Under 35 U.S.C. § 314(a)
`Petitioner argues that institution is warranted in both the instant IPR
`proceeding and the ’280 IPR proceeding, which challenge the same claims
`of the ’619 patent. Notice, 2−5. Patent Owner counters that the instant
`
`5
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`IPR2020-00281
`Patent 10,027,619 B2
`
`Petition should be denied for improper parallel petitioning. Prelim. Resp.
`2−7.
`
`Institution of an inter partes review is discretionary. Section 314(a)
`of title 35 of the United States Code provides that “[t]he Director may not
`authorize an inter partes review to be instituted unless the Director
`determines that 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.” The Supreme Court of the United States (“the Supreme Court”)
`has explained that, because § 314 includes no mandate to institute review,
`“the agency’s decision to deny a petition is a matter committed to the Patent
`Office’s discretion.” Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131,
`2140 (2016); see also Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356,
`1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is
`permitted, but never compelled, to institute an IPR proceeding”). The
`Director has delegated his authority under § 314(a) to the Board. 37 C.F.R.
`§ 42.4(a) (“The Board institutes the trial on behalf of the Director.”).
`In deciding whether to institute inter partes review, we consider the
`guidance in the Patent Trial and Appeal Board Consolidated Trial Practice
`Guide (“CTPG”) , which sets forth the following:
`Parallel Petitions Challenging the Same Patent. Based on the
`Board’s experience, one petition should be sufficient
`to
`challenge the claims of a patent in most situations. Two or more
`petitions filed against the same patent at or about the same time
`(e.g., before the first preliminary response by the patent owner)
`may place a substantial and unnecessary burden on the Board and
`the patent owner and could raise fairness, timing, and efficiency
`6
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`IPR2020-00281
`Patent 10,027,619 B2
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`concerns. See 35 U.S.C. § 316(b). In addition, multiple petitions
`by a petitioner are not necessary in the vast majority of cases. To
`date, a substantial majority of patents have been challenged with
`a single petition.
`CTPG, 59. Nonetheless, “more than one petition may be necessary,
`including for example, when the patent owner has asserted a large number of
`claims in litigation or when there is a dispute about priority date requiring
`arguments under multiple prior art references.” Id. To aid the Board, a
`petitioner who files two or more petitions challenging the same patent
`should identify:
`(1) a ranking of the petitions in the order in which it wishes the
`Board to consider the merits, if the Board uses its discretion to
`institute any of the petitions, and (2) a succinct explanation of the
`differences between the petitions, why the issues addressed by
`the differences are material, and why the Board should exercise
`its discretion to institute additional petitions if it identifies one
`petition that satisfies petitioner’s burden under 35 U.S.C. 314(a).
`Id. at 59−60.
`Here, Petitioner filed a Notice explaining the differences among the
`Petitions and ranking the Petitions in the order that Petitioner wishes the
`Board to consider the merits. Notice, 2−5. In particular, Petitioner requests
`that we first consider the ’280 IPR Petition. Id. at 2. For the reasons
`provided in our Decision on Institution in IPR2020-00280, we conclude that
`Petitioner has established a reasonable likelihood of prevailing in showing
`that the challenged claims of the ’619 patent are unpatentable. Therefore,
`we institute a review on all of the challenged claims in IPR2020-00280.
`Petitioner asserts that both proceedings are necessary, advancing
`several arguments. Notice 2−5.
`
`7
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`IPR2020-00281
`Patent 10,027,619 B2
`
`
`First, Petitioner argues that the ’280 Petition relies on references that
`qualify as prior art under § 102(b) and therefore cannot be antedated,
`whereas the Brown reference asserted in the instant Petition qualifies as
`prior art under § 102(e) by relying on an earlier filed provisional patent
`application. Notice 4. According to Petitioner, the instant Petition “opens
`up opportunities for both antedating by the Patent Owner, and an attack of
`the [priority claim] analysis.” Id.
`However, Patent Owner asserts that no dispute about priority dates
`has been raised and this part of Petitioner’s argument is based on speculation
`and thus insufficient to make a second Petition necessary. Prelim. Resp. 6.
`Moreover, as noted above, we consider the ’280 Petition first per Petitioner’s
`ranking, and institute the ’280 Petition on the same claims challenged by the
`instant Petition. Petitioner does not explain sufficiently why it is necessary
`to institute the instant Petition in this circumstance.
`Second, Petitioner argues that “[b]oth Petitions are necessary to show
`the breadth of prior art that reads on the overly broad claims.” Notice, 5.
`Petitioner’s argument is misplaced. In an IPR proceeding, we decide
`the patentability of the challenged claims and any new claims added based
`on the prior art of record, not the breadth of prior art that reads on the
`claims. See 35 U.S.C. § 318. Further, “we need only construe terms ‘that
`are in controversy, and only to the extent necessary to resolve the
`controversy’”—namely, whether the claims are patentable, not whether the
`claims are overly broad. See Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc.
`v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). In short,
`8
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`IPR2020-00281
`Patent 10,027,619 B2
`
`Petitioner fails to explain why both IPR proceedings are necessary to
`determine the patentability of the challenged claims.
`Third, Petitioner argues “[g]iven the number of claims asserted in
`litigation . . . (20 claims in the ’619 patent, alone), instituting two petitions is
`reasonable.” Notice 5.
`However, as Patent Owner asserts, “Patent Owner is not asserting the
`’619 patent against Petitioner in court at all.” Prelim. Resp. 7. Indeed, the
`evidence of record shows that the ’619 patent is no longer asserted in the
`related district court litigation. See Ex. 1042 (Seven’s Notice Regarding
`Claim Reduction); Ex. 1041 (Apple Inc.’s Notice Regarding Prior Art
`Reduction). Furthermore, there are only twenty challenged claims, which
`generally is not a large number of claims to address in a single petition, and
`Petitioner was able to assert multiple grounds against all twenty challenged
`claims in the Petition in IPR2020-00280.
`Finally, Petitioner argues that the difference in focus of the primary
`references leads to a difference in how the secondary references are applied
`by each Petition. Id. at 2−4. Petitioner contends that the primary reference
`Hind asserted in the ’280 Petition discloses several claim limitations for
`which instant Petition relies on secondary references. Id. at 3−4. Petitioner
`also avers that the Brown reference asserted in the instant Petition discloses
`the encryption key claim limitation, whereas the ’280 Petition relies on a
`secondary reference for that limitation. Id.
`Petitioner’s arguments do not show persuasively a genuine need to file
`two petitions against the same claims of the same patent. The mere fact that
`there is a difference in how the secondary references are applied by each
`9
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`
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`IPR2020-00281
`Patent 10,027,619 B2
`
`Petition, Petitioner does not explain why it is necessary to institute the
`instant Petition in addition to the ’280 Petition. As Patent Owner points out,
`Petitioner’s arguments “simply amount to an expression of Petitioner’s
`desire to be allowed more words with which to raise more grounds against
`the same set of claims.” Prelim. Resp. 4. In short, Petitioner fails to explain
`how this is one of those “rare” circumstances requiring two IPR proceedings
`for the same claims of the same patent.
`For the foregoing reasons, Petitioner has not provided sufficient
`justification for filing two petitions against the same claims of the ’619
`patent. Petitioner fails to show that the instant Petition contains sufficient
`material differences to support instituting an additional inter partes review
`of the ’619 patent. Accordingly, we exercise our discretion under § 314(a)
`to deny institution of review in the instant proceeding.
`
`III. CONCLUSION
`For the foregoing reasons, based on a balanced assessment of the
`circumstances of this case, we exercise our discretion under § 314(a) and
`deny the instant Petition requesting institution of inter partes review of the
`’619 patent.
`
`IV. ORDER
`
`Accordingly, it is hereby
`ORDERED that the instant Petition is denied as to all challenged
`claims and no trial is instituted.
`
`
`
`10
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`
`
`IPR2020-00281
`Patent 10,027,619 B2
`
`PETITIONER:
`W. Karl Renner
`Jeremy Monaldo
`Roberto Devoto
`David Holt
`Stuart Nelson
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`jjm@fr.com
`devoto@fr.com
`holt2@fr.com
`snelson@fr.com
`
`PATENT OWNER:
`Kenneth Weatherwax
`Nathan Lowenstein
`Bridget Smith
`Flavio Rose
`Edward Hsieh
`Parham Hendifar
`Patrick Maloney
`Jason C. Linger
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`lowenstein@lowensteinweatherwax.com
`smith@lowensteinweatherwax.com
`rose@lowensteinweatherwax.com
`hsieh@lowensteinweatherwax.com
`hendifar@lowensteinweatherwax.com
`maloney@lowensteinweatherwax.com
`linger@lowensteinweatherwax.com
`
`11
`
`
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