UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`OLYMPUS CORPORATION, OLYMPUS CORPORATION OF THE
`AMERICAS, and OLYMPUS AMERICA INC.,
`Petitioners,
`
`v.
`
`MAXELL LTD.,
`Patent Owner.
`_______________
`
`Case: IPR2018-00904
`
`U.S. Patent No. 8,339,493
`_______________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,339,493
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Apple v. Maxell
`IPR2020-00597
`Maxell Ex. 2023
`
`Page 1 of 56
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`

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`Patent No. 8,339,493
`Patent Owner’s Preliminary Response
`
`TABLE OF CONTENTS
`
`Page
`INTRODUCTION .......................................................................................... 1
`BACKGROUND ............................................................................................ 2
`A.
`Technology Background ...................................................................... 2
`B.
`Overview of the ’493 Patent Invention and Claims ............................. 4
`C.
`Summary of the Proposed Grounds of Unpatentability and the
`References Cited ................................................................................... 7
`III. CLAIM CONSTRUCTION ........................................................................... 8
`IV.
`THE BOARD SHOULD REJECT THIS SERIAL ATTACK ON THE
`’493 PATENT PURSUANT TO 35 U.S.C. § 314(A). ................................. 10
`A.
`Factor 1: “whether the same petitioner previously filed a
`petition directed to the same claims of the same patent” ................... 13
`Factor 2: “whether at the time of filing of the first petition the
`petitioner knew of the prior art asserted in the second petition or
`should have known of it” ................................................................... 14
`Factor 3: “whether at the time of filing of the second petition
`the petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision on
`whether to institute review in the first petition” ................................ 15
`Factor 4: “the length of time that elapsed between the time the
`petitioner learned of the prior art asserted in the second petition
`and the filing of the second petition” ................................................. 18
`Factor 5: “whether the petitioner provides adequate explanation
`for the time elapsed between the filings of multiple petitions
`directed to the same claims of the same patent” ................................ 18
`Factor 6: “the finite resources of the Board” ..................................... 19
`Factor 7: “the requirement under 35 U.S.C. § 316(a)(11) to
`issue a final determination not later than 1 year after the date on
`which the Director notices institution of review” .............................. 20
`THE PETITION ALSO FAILS ON THE MERITS. ................................... 21
`A.
`The Level of Ordinary Skill in the Art ............................................... 22
`
`F.
`G.
`
`I.
`II.
`
`V.
`
`B.
`
`C.
`
`D.
`
`E.
`
`i
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`Patent No. 8,339,493
`Patent Owner’s Preliminary Response
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`2.
`
`3.
`
`B.
`C.
`
`The Scope and Content of the Prior Art ............................................. 24
`The Differences Between the Prior Art and the Challenged
`Claims ................................................................................................. 25
`1.
`Grounds 1 and 2: Petitioners Fail To Establish That Any
`Claim Is Obvious Over Misawa ’482 and Misawa ’607. ........ 26
`Grounds 3 and 4: Petitioners Failed to Establish that
`Claims 1-5 Are Obvious Over Misawa ’607 in View of
`Okino ’947 and Further in View of The Knowledge of a
`POSITA .................................................................................... 36
`None of the Four Grounds Has a Likelihood of
`Succeeding Because the Petition Fails to Identify Which
`Claim Elements Are Missing from the Primary
`Reference. ................................................................................ 39
`Secondary Considerations of Nonobviousness .................................. 41
`D.
`THE PETITION SHOULD BE DENIED AS A RESULT OF
`DEFICIENCIES IN THE DECLARATION OF PETITIONER’S
`PROPOSED EXPERT. ................................................................................. 41
`A. Mr. Parulski’s “Omnibus” Declaration Provides a Separate
`Basis for Denying the Petition. .......................................................... 41
`B. Mr. Parulski’s Declaration is Unsupported and Simply Repeats
`the Language of the Petition. .............................................................. 42
`VII. THE PETITION EVADES THE BOARD’S WORD LIMIT BY
`USING ATYPICAL, IMPROPER CITATIONS. ........................................ 44
`VIII. CONCLUSION ............................................................................................. 47
`
`VI.
`
`ii
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`Patent No. 8,339,493
`Patent Owner’s Preliminary Response
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Abiomed, Inc. v. Maquet Cardiovascular, LLC,
`IPR2017-02134, Paper 7 (P.T.A.B. Apr. 16, 2018) ......................... 11, 13, 19, 20
`ActiveVideo Networks, Inc. v. Verizon Comm’s, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .......................................................................... 27
`Actware Sols., Inc. v. Eagle View Techs., Inc.,
`IPR2017-00021, Paper 9 (P.T.A.B. Apr. 14, 2017) ........................................... 16
`Am. Honda Motor Co. v. Intellectual Ventures II LLC,
`IPR2018-00349, Paper 9 (P.T.A.B. June 27, 2018) ..................................... 12, 16
`Apple v. Contentguard Holdings, Inc.,
`IPR2015-00356, Paper 9 (P.T.A.B. June 26, 2015) ..................................... 41, 42
`Facebook, Inc. v. Sound View Innovations, LLC,
`IPR2017-01003, Paper 14 (P.T.A.B. Sept. 1, 2017)........................................... 45
`Ferring B.V. v. Watson Labs., Inc.-Florida,
`764 F.3d 1401 (Fed. Cir. 2014) .......................................................................... 26
`Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (P.T.A.B. Sep. 6, 2017) .......................... 11, 12, 17, 20
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) ................................................................................................ 21
`Guangdong Alison Hi-Tech Co., Ltd. v. Aspen Aerogels, Inc.,
`IPR2017-00152, Paper 8 (P.T.A.B. Mar. 23, 2017) ............................... 27, 29, 36
`Halliburton Energy Serv., Inc. v. Schlumberger Tech. Corp.,
`IPR2017-02072, Paper 11 (P.T.A.B. April 12, 2018) ........................................ 32
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) .......................................................................... 11
`
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`Patent No. 8,339,493
`Patent Owner’s Preliminary Response
`
`TABLE OF AUTHORITIES
`(continued)
`
`Page(s)
`
`Initiative for Meds., Access & Knowledge (I-MAK), Inc. v. Gilead
`Pharmasset LLC,
`IPR2018-00122, Paper 10 (P.T.A.B. May 21, 2018) ......................................... 32
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 22
`InTouch Techs., Inc. v. VGo Commc’ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) .......................................................................... 22
`Kinetic Techs., Inc. v. Skyworks Sols., Inc.,
`IPR2015-00529, Paper 8 (P.T.A.B. Sep. 23, 2014) ............................................ 43
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 21, 27
`LG Elecs., Inc. v. Cellular Commc’ns Equip. LLC,
`IPR2016-00197, Paper 7 (P.T.A.B. Apr. 29, 2016) ..................................... 39, 40
`LG Elecs. Inc. v. Core Wireless Licensing S.A.R.L.,
`IPR2016-00986, Paper 12 (P.T.A.B. Aug. 22, 2016) ......................................... 20
`Medichem, S.A. v. Rolabo, S.L.,
`437 F.3d 1157 (Fed. Cir. 2006) .......................................................................... 22
`Olympus Corp. v. Maxell, Ltd.,
`IPR2018-908, Paper 2 (P.T.A.B. June 20, 2018) ................................................. 8
`Shenzhen Silver Star Intelligent Tech. Co., Ltd. v. iRobot Corp.,
`IPR2018-00761, Paper 15 (P.T.A.B. Sep. 5, 2018) ............................................ 12
`Snap-On Inc. v. Milwaukee Elec. Tool Corp.,
`IPR2015-01242, -01243, -01244 ........................................................................ 44
`St. Jude Med., LLC v. Snyders Heart Valve LLC,
`IPR2018-00105, -00106, -00107 ............................................................ 44, 45, 46
`
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`Patent No. 8,339,493
`Patent Owner’s Preliminary Response
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`TABLE OF AUTHORITIES
`(continued)
`
`Page(s)
`
`Toyota Motor Corp. v. Cellport Systems, Inc.,
`IPR2015- 01423, Paper 7 (P.T.A.B. Oct. 28, 2015) ........................................... 17
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) .......................................................................... 27
`Wowza Media Sys., LLC v. Adobe Sys. Inc.,
`IPR2013-00054, Paper 12 (P.T.A.B. Apr. 8, 2013) ........................................... 43
`ZTE Corp. et. al. v. Maxell, Ltd.,
`IPR2018-00236, Paper 9 (P.T.A.B. June 1, 2018) ............................................. 17
`Statutes
`35 U.S.C. § 103(a) ................................................................................................. 7, 8
`35 U.S.C. § 112, ¶ 6 ..................................................................................... 10, 31, 37
`35 U.S.C. § 314(a) ................................................................................... 1, 11, 18, 19
`Other Authorities
`37 C.F.R. § 4.21 ....................................................................................................... 41
`37 C.F.R. § 42.6(a)(2)(ii) ................................................................................... 44, 45
`37 C.F.R. § 42.6(a)(2)(iii) ........................................................................................ 45
`37 C.F.R. § 42.63(d)(2)(i) ........................................................................................ 42
`37 C.F.R. § 42.65(a) ................................................................................................. 43
`77 Fed. Reg. at 48,763 ............................................................................................. 42
`Trial Practice Guide Update at 7 (August 2018) .................................................... 46
`
`v
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`Patent No. 8,339,493
`Patent Owner’s Preliminary Response
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`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit Number Description
`2001
`U.S. Patent No. 5,828,406 (“Parulski ’406”)
`
`2002
`
`2003
`
`2004
`
`2005
`
`JP 11-355665
`
`JPO Translation of JP 11-355665
`
`U.S. Patent No. 7,250,969 (the “’969 patent”)
`
`U.S. Patent No. 6,882,366 (the “’366 patent”)
`
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`Patent No. 8,339,493
`Patent Owner’s Preliminary Response
`
`I.
`
`INTRODUCTION
`Petitioners Olympus Corporation, Olympus Corporation of the Americas, and
`
`Olympus America Inc. (“Petitioners”) intentionally held back filing of this Petition
`
`until after studying a Board decision in a prior IPR challenging the same patent.
`
`Despite never having been sued for infringement of this patent, Petitioners spent
`
`weeks analyzing this prior non-institution decision to ensure that “the instant petition
`
`suffers from none of the deficiencies for which institution of IPR2018-00236 [a prior
`
`proceeding involving the same patent] was denied.” See Pet. at 2. This reason, along
`
`with the Petition’s failure to explain why the Board should not deny institution based
`
`on the General Plastic factors, warrants denial here under 35 U.S.C. § 314(a).
`
`The Petition also fails on the merits. Petitioners have not shown a reasonable
`
`likelihood that any of claims 1-14 (the “challenged claims”) of U.S. Patent No.
`
`8,339,493 (the “’493 Patent”) are unpatentable. In particular, each of the Petition’s
`
`four grounds fails to adequately explain what exactly in the prior art constitutes the
`
`claimed “signal processing unit,” even under Petitioners’ own proposed
`
`constructions. The merits also fall short because the Petition does not present a
`
`proper obviousness analysis, neglecting to show how or why a person of ordinary
`
`skill in the art would combine the cited references in the manner claimed.
`
`Further, the Petition relies heavily on an improper “omnibus” declaration
`
`provided by putative expert Kenneth Parulski. Spanning nearly 400 pages with over
`
`1
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`1000 pages of appendices, and covering three different patents and four IPR
`
`petitions, Mr. Parulski’s omnibus declaration simply parrots many of the same
`
`conclusory statements found in the Petition, with no additional analysis. These
`
`conclusory statements do not provide the rational underpinning necessary to
`
`establish the unpatentability of the claims. They should be given no weight.
`
`Finally, the Petition attempts to circumvent the Board’s word limits by using
`
`non-standard citation formats that artificially omit spacing and any instances of “at”
`
`for pin cites. This abuse of the Board’s rules has grossly inflated the Petition’s true
`
`word count. To curtail future petitioners from this practice, this Petition should be
`
`denied as an example to others that the Board’s word limitations are meant to
`
`meaningful limit petitioners arguments, not encourage creative workarounds.
`
`For these reasons, the Board should decline to institute inter partes review.
`
`II.
`
`BACKGROUND
`A.
`Technology Background
`The ’493 Patent relates to electric cameras. Electric (or, digital) cameras
`
`operate using image sensing devices sometimes called “image sensors.” Ex. 1001 at
`
`1:29-40. Image sensors include an array of picture elements (or, pixels) arranged in
`
`a two-dimensional, often rectangular, grid. Id. at 4:45-55. An exemplary image
`
`sensor array is shown in the following demonstrative graphic:
`
`2
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`Each pixel is a tiny circuit containing a photodiode. Id. at 4:38-41, FIG. 2. In
`
`response to light incident on the photodiode, each pixel in the array generates an
`
`electrical signal. Id. at 4:55-5:13. The signals from the pixels in the array are
`
`collected by specialized circuitry, which digitally assembles all of the individual
`
`electrical signals from the thousands (or, in today’s cameras, millions) of pixels into
`
`a single digital image. Id. at 4:55-5:13.
`
`At the time of the ’493 Patent, around January 2000, it was “generally
`
`assumed” that the output images from electric cameras would be viewed on a display
`
`outside of the camera itself. Id. at 1:33-37. For example, users at the time would
`
`likely wish to view their digital images on their home television monitors, such as
`
`3
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`those compatible with the NTSC and PAL television systems—the predominant
`
`systems used in the US and Japan at the time. Id. at 1:33-37.1
`
`Overview of the ’493 Patent Invention and Claims
`B.
`Prior to the invention of the ’493 Patent in January 2000, conventional electric
`
`cameras had a number of unsolved problems. As one example, these pre-2000
`
`cameras were inflexible: they could not effectively capture both high-quality still
`
`images and acceptable-frame-rate videos in a single device. Id. at 2:67-3:2 (“Taking
`
`both moving and static images of satisfactory quality with a single camera is difficult
`
`to achieve.”).
`
`As an example of this “flexibility” problem, when taking “still pictures” with
`
`a camera designed for taking moving images, the number of pixels was insufficient
`
`for a high-quality image. Id. at 2:62-64. Conversely, when taking moving images
`
`with a camera designed for taking still images, the dynamic image quality of the
`
`moving image would deteriorate and the required circuitry would increase. Id. at
`
`2:65-67. This was due to the inability of affordable, light-weight circuitry at the time
`
`to quickly process information from the relatively large image sensor arrays used in
`
`1 Also known at the time were MPEG-1, MPEG-2, HDTV and the ATSC Standard
`A/63 (including 1080i, 1080p, and 720p), with MPEG-4 under development.
`
`4
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`still image cameras, leading to a reduction in frame rate and a corresponding
`
`reduction in the “dynamic” quality of the resulting images. Id. at 2:18-25, 2:44-67.
`
`The inventors also noted a “compatibility” problem with electric cameras
`
`available before January 2000. They recognized that camera users would want to
`
`view their recorded still images and videos on a variety of displays, such as those on
`
`the television systems many people already had in their homes. Id. at 2:30-32
`
`(“When taking a moving image or monitoring the video, it is necessary to generate
`
`signals that conform to the television system.”). The inventors further observed that
`
`the pixel arrays on conventional electric cameras were not compatible with the
`
`displays of these television systems. Id. at 2:32-35.
`
`In addition, the inventors further identified a problem with image instability
`
`in electric cameras, particularly when recording moving images. Id. at 3:2-7. Image
`
`instability causes blurriness in moving images due to shaking of the camera during
`
`recording, and the inventors noted that conventional cameras at the time failed to
`
`provide a means to correct this issue. Id.
`
`The inventors of the ’493 Patent solved each of these problems. To solve the
`
`“flexibility” problem, the ’493 Patent teaches processing circuitry that allows the
`
`camera to use different numbers of vertically arranged pixel lines in the image sensor
`
`array based on whether the camera was operating in still image mode or video mode.
`
`See, e.g., id. at 3:16-37. This allows each mode of the camera to use different
`
`5
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`numbers of pixels for each task: more pixels in still mode to ensure high-quality still
`
`images, and fewer pixels in video mode to ensure high frame-rate moving image. Id.
`
`at 3:32-37. The inventors designed a camera that achieved these goals in a low-cost,
`
`light-weight system. Id. at 2:10-17, 2:47-53 (noting problems with “large”
`
`processing circuitry and field memory required by conventional systems).
`
`These inventors also solved the “compatibility” problem. Their invention
`
`outputs signals from the pixel array “conforming to the aspect ratio of the television
`
`system.” Id. at 6:52-56, FIG. 5. The processing circuitry designed by the ’493
`
`Patent’s inventors allows for manipulation and interpolation of image signals from
`
`the pixel array in order to conform to a variety of display screen formats, including
`
`those compatible with the NTSC, PAL, and MPEG formats. Id. at 6:60-7:8.
`
`They solved the “image instability” problem as well. The ’493 Patent’s
`
`inventors designed a system for measuring the movement of the camera (for
`
`example, using a gyro sensor) and adjusting the area of pixels used to account for
`
`the camera’s movement. Id. at 5:7-15, 7:9-26. This effective movement of the pixels
`
`is based on the information from the measured image instability and allows for
`
`correction of the image instability. Id. at 7:9-26; FIG. 3. This leads to a reduction or
`
`complete elimination of the “shakiness” in the recorded video. Id. at 7:9-26.
`
`6
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`Patent No. 8,339,493
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`C.
`
`Summary of the Proposed Grounds of Unpatentability and the
`References Cited
`Patent Owner has never sued any of the Petitioners here for infringement of
`
`any claim of the ’493 Patent. Nevertheless, Petitioners filed a petition contending
`
`that every claim of this patent (claims 1-14) would have been obvious under pre-
`
`AIA 35 U.S.C. § 103(a). The Petition does not allege that any prior art reference
`
`anticipates any claim of the ’493 Patent.
`
`The Petition’s four grounds of alleged obviousness are based on the following
`
`four references:
`
`1.
`
`2.
`
`3.
`
`4.
`
`U.S. 5,44,482 (“Misawa ’482”) (Ex. 1005);
`
`U.S. 6,700,607 (“Misawa ’607”) (Ex. 1006);
`
`U.S. 6,292,218 (“Parulski ’218”) (Ex. 1007); and
`
`U.S. 6,529,236 (“Watanabe ’236”) (Ex. 1008).
`
`Though Petitioners included an additional three references (see Exs. 1009, 1010,
`
`1011), the Petition does not apply any of them against the claims of the ’493 Patent.
`
`The Petition asserts the following four grounds of alleged unpatentability:
`
`Ground
`
`1
`
`2
`
`3
`
`’493 Patent
`Claims
`Claim 1-9
`
`Type of
`Challenge
`35 U.S.C. § 103(a) Misawa ’482 and Misawa ’607
`
`Applied References
`
`Claims 10-14 35 U.S.C. § 103(a) Misawa ’482, Misawa ’607, and
`Parulski ’218
`
`Claim 1-9
`
`35 U.S.C. § 103(a) Misawa ’482 and Watanabe ’236
`
`7
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`4
`
`Claims 10-14 35 U.S.C. § 103(a) Misawa ’482, Watanabe ’236,
`and Parulski ’218
`
`Pet. at 7.
`
`III. CLAIM CONSTRUCTION
`With one exception (“signal processing unit”), Petitioners assert that all claim
`
`terms in the ’493 Patent should have their “plain and ordinary meaning.” Pet. at 15.
`
`But because “signal processing unit” has a well-understood meaning to a person of
`
`ordinary skill in the art, no construction for this term is needed here. Accordingly,
`
`Petitioners’ wordy proposal of “a unit that drives an image sensing device and
`
`performs signal processing on the output of the image sensing device” should be
`
`rejected.
`
`Despite the difference in standards applied by the Board and district courts,
`
`Petitioners contend that “signal processing unit” should be construed identically
`
`under either test. See id.
`
`Petitioners also advocate for a construction here that is inconsistent with their
`
`proposed construction for this same term in their petitions for inter partes review of
`
`related patents 8,059,177 and 9,100,604. See id. at 15 n.1. For example, in their
`
`Petition for Inter Partes Review of the ’604 Patent, Petitioners assert that “signal
`
`processing unit” should be construed as a “unit that performs signal processing on
`
`the output of the image sensing device.” Petition in Olympus Corp. v. Maxell, Ltd.,
`
`8
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`Patent No. 8,339,493
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`IPR2018-908, Paper 2 at 15 (P.T.A.B. June 20, 2018). In their present Petition,
`
`however, Petitioners tack on the additional requirement that the signal processing
`
`unit “drives an image sensing device.” Pet. at 15.
`
`But the claims never use the term “drives,” nor do the claims require that any
`
`“image sensing device” be driven, much less that it be driven by the signal
`
`processing unit. Petitioners are simply reading language into the claims from the
`
`specification’s description of a “driver,” not a signal processing unit. See id. at 16
`
`(citing ’493 Patent at 3:22-30, 5:56-60, 7:45-51, 7:60-65). Because it would add
`
`language from the specification describing a different component, Petitioners’
`
`construction should be rejected for this reason alone.
`
`As for the remainder of Petitioners’ proposal (requiring a unit that “performs
`
`signal processing on the output of the image sensing device”), this too is improper.
`
`In particular, Petitioners have not explained how this mere restating of the claim
`
`language itself would assist the Board here. See id. at 15-17. As Petitioners
`
`acknowledge, “[t]he claims of the ’493 Patent … recite that the ‘signal processing
`
`unit’ generates the image signals by mixing or culling signal ‘charges’ and
`
`generating output signals.” Id. at 16 (emphasis omitted).
`
`Indeed, if Petitioners’ construction were applied to claim 1, the full limitation
`
`for “signal processing unit” would be confusingly and unnecessarily repetitive: “a
`
`unit that drives an image sensing device and performs signal processing on the
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`Patent No. 8,339,493
`Patent Owner’s Preliminary Response
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`output of the image sensing device, that generates image signals by using the output
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`signals of the image sensing device.” See Ex. 1001 at cl. 1. Whatever the role of the
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`signal processing unit in the claimed inventions, the claims themselves recite these
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`features. Thus, the remainder of Petitioners’ proposed construction is superfluous
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`and is unnecessary here.
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`Accordingly, “signal processing unit” needs no construction in this
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`proceeding. Instead, the term should be accorded its plain and ordinary meaning, in
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`keeping consistent with the Eastern District of Texas’s construction of this term in
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`the ’493 Patent’s child (U.S. Patent No. 8,736,729). See Ex. 1015 at 14 (construing
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`term “signal processing unit” in the ’729 Patent per the parties’ agreement).
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`Finally, Patent Owner agrees with Petitioners that “signal processing unit”
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`connotes definite structure within the claims of the ’493 Patent and thus is not subject
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`to pre-AIA 35 U.S.C. § 112, ¶ 6. See Pet. at 17.
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`For these reasons, “signal processing unit” should be interpreted according to
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`its plain and ordinary meaning, and no specific construction is necessary here.
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`IV. THE BOARD SHOULD REJECT THIS SERIAL ATTACK ON THE
`’493 PATENT PURSUANT TO 35 U.S.C. § 314(A).
`Patent Owner has never asserted any claim of the ’493 Patent against these
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`Petitioners in litigation. Yet Petitioners filed this Petition against every claim of the
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`’493 Patent anyway, opening a case number over a month before eventually filing
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`the Petition, and waiting almost three weeks after receiving the non-institution
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`decision in a previous PTAB proceeding involving the same patent. This serial attack
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`should be rejected.
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`Section 314(a) grants the Board authority to deny institution of later-filed
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`petitions challenging the same patent. Abiomed, Inc. v. Maquet Cardiovascular,
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`LLC, IPR2017-02134, Paper 7 at 6 (P.T.A.B. Apr. 16, 2018) (citing Gen. Plastic
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`Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 15 (P.T.A.B.
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`Sep. 6, 2017) (precedential)); see also Harmonic Inc. v. Avid Tech., Inc., 815 F.3d
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`1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to
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`institute an IPR proceeding.”).
`
`In General Plastic, an expanded panel of the Board outlined seven factors
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`relevant to whether subsequently filed petitions, like the one here, should be granted:
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`1. whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
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`2. whether at the time of filing of the first petition the
`petitioner knew of the prior art asserted in the second
`petition or should have known of it;
`
`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s
`decision on whether to institute review in the first petition;
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`4. the length of time that elapsed between the time the
`petitioner learned of the prior art asserted in the second
`petition and the filing of the second petition;
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`5. whether the petitioner provides adequate explanation
`for the time elapsed between the filings of multiple
`petitions directed to the same claims of the same patent;
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`6. the finite resources of the Board; and
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`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a
`final determination not later than 1 year after the date on
`which the Director notices institution of review.
`
`See Gen. Plastic, Paper 19 at 9-10 (footnotes omitted).
`
`The Board has applied these General Plastic factors in cases, like here, where
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`the subsequent petitioner is different from the original petitioner. See, e.g., Shenzhen
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`Silver Star Intelligent Tech. Co., Ltd. v. iRobot Corp., IPR2018-00761, Paper 15 at
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`9 (P.T.A.B. Sep. 5, 2018). Indeed, “[d]iscretion to deny institution of inter partes
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`review under § 314(a) is not necessarily limited to situations where the same party
`
`files multiple petitions.” Am. Honda Motor Co. v. Intellectual Ventures II LLC,
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`IPR2018-00349, Paper 9 at 12 (P.T.A.B. June 27, 2018).
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`Given the particularly disingenuous gamesmanship displayed by Petitioners
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`here, the application of these factors in this situation is appropriate.
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`A.
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`Factor 1: “whether the same petitioner previously filed a petition
`directed to the same claims of the same patent”
`This is not the first time a petition for inter partes review has been filed for
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`the ’493 Patent. Although this is the first petition that these Petitioners have filed
`
`against the ’493 Patent, the same claims of the same patent have been challenged
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`before by ZTE Corp. and ZTE USA, Inc. in IPR2018-00236 (the “ZTE IPR”). On
`
`balance, however, this factor probably does not weigh against institution.
`
`Challenging claims of similar scope as those challenged in a prior petition,
`
`even if not challenged in a prior petition, weighs against institution. See Abiomed,
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`Paper 7 at 9.
`
`Here, the Petition challenges all claims of the ’493 Patent, including
`
`independent claims 1, 5, and 10. While the prior petition in the ZTE IPR challenged
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`only claims 5 and 6, independent claims 1 and 10 are, at least according Petitioners,
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`nearly identical in scope to the previously challenged claim 5. This fact is
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`demonstrated by Petitioners’ reliance on the same art and, indeed, identical
`
`arguments for all but one of the limitations of independent claims 1, 5, and 10. See,
`
`e.g., Pet. at 46-48 (referring to claim 1 arguments for every element of claim 5), 50-
`
`54 (referring to claim 1 arguments for all but one of claim 10’s limitations).
`
`On balance, however, the difference, at least in name, of the Petitioners here
`
`and those in the ZTE IPR, probably does not weigh against institution.
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`B.
`
`Factor 2: “whether at the time of filing of the first petition the
`petitioner knew of the prior art asserted in the second petition or
`should have known of it”
`Petitioners should have known of at least the asserted Parulski ’218, Misawa
`
`’607, and Watanabe ’236 references by the time the petition in the ZTE IPR was
`
`filed on November 22, 2017.
`
`Parulski ’218 is a divisional of U.S. Patent Application No. 08/367,399. Ex.
`
`1007 at (62), 1:5-6. The ’399 Application eventually issued as U.S. Patent No.
`
`5,828,406 (Ex. 2001), which was considered during examination of the ’493 Patent,
`
`is cited on the face of the ’493 patent (Ex. 1001 at (56)), and was cited in the ZTE
`
`IPR. Given the prominence of the Parulski references in both the ZTE IPR, and that
`
`the direct parent of Parulski ’218 was cited on the face of the ’493 Patent itself,
`
`Petitioners may have known, but certainly should have known, about Parulski ’218
`
`when the ’493 Patent issued and by the time the first petition in the ZTE IPR was
`
`filed in November 2017.
`
`In addition, the Japanese priority publication for a second asserted reference
`
`(Misawa ’607) is cited on the face of the ’493 Patent. See Ex. 1001 at (56) (citing
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`Japanese Patent Publication No. H11-355665 (attached as Exhibit 2002)).
`
`Accordingly, Petitioners should have known of the M