Trials@uspto.gov
`571-272-7822
`
`Paper 14
`Entered: July 19, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`QUALCOMM INCORPORATED,
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`
`
`IPR2021-00375
`Patent 8,265,096 B2
`
`
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Dismissing Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. 42.122(b)
`
`
`
`571-272-7822
`
`Paper 14
`Entered: July 19, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`QUALCOMM INCORPORATED,
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`
`
`IPR2021-00375
`Patent 8,265,096 B2
`
`
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Dismissing Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. 42.122(b)
`
`
`
`
`IPR2021-00375
`Patent 8,265,096 B2
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`
`I. INTRODUCTION
`A. Background
`Qualcomm Incorporated (“Petitioner”) filed a Petition requesting an
`inter partes review of claims 1–4 and 6–8 (“challenged claims”) of U.S.
`Patent No. 8,265,096 B2 (Ex. 1001, “’096 Patent”). Paper 1 (“Pet.”).
`Petitioner filed a Declaration of Sumit Roy, Ph.D. (Ex. 1002) with its
`Petition. Petitioner concurrently filed a Motion for Joinder seeking to join as
`a Petitioner in Intel Corp. v. UNM Rainforest Innovations, IPR2020-01576.
`(Paper 3, “Motion for Joinder”). UNM Rainforest Innovations (“Patent
`Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). Patent
`Owner filed a Declaration of Branimir Vojcic, D.Sc. (Ex. 2001) with its
`Preliminary Response. Pursuant to our authorization, Petitioner filed a
`Reply to the Preliminary Response (Paper 10, “Reply to Prelim. Resp.”) to
`address discretionary denial under 35 U.S.C. § 314(a), to which Patent
`Owner filed a Sur-reply (Paper 12, “Sur-reply to Prelim. Resp.”).
`We have authority to determine whether to institute review under
`35 U.S.C. § 314 and 37 C.F.R. § 42.4.
`For the reasons provided below, we determine, based on the record
`before us, there is a reasonable likelihood Petitioner would prevail in
`showing at least one of the challenged claims is unpatentable.
`
`B. Real Parties in-Interest
`Petitioner states that Qualcomm Incorporated is the real party in-
`interest and further identifies its customers Dell Technologies Inc., Dell Inc.,
`and EMC Corporation (collectively, “Dell”) as additional real parties in-
`interest. See Pet. 2.
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`Patent Owner states that the University of New Mexico Board of
`Regents is an additional real party in-interest. See Paper 6, 2.
`
`C. Related Matters
`The parties indicate the following matters may affect or be affected by
`a decision in this proceeding: UNM Rainforest Innovations v. Industrial
`Technology Research Institute, No. D-202-CV-2021-02803 (N.M. 2d.
`Judicial District Court May 4, 2021); UNM Rainforest Innovations v.
`ASUSTek Computer, Inc., No. 6:20-cv-00142-ADA (W.D. Tex.); UNM
`Rainforest Innovations v. Dell Technologies, Inc., No. 6:20-cv-00468-ADA
`(W.D. Tex.); UNM Rainforest Innovations v. D-Link Corp., No. 6:20-cv-
`00143-ADA (W.D. Tex.); UNM Rainforest Innovations v. TP-Link
`Technologies Co., No. 6:19-cv-00428-ADA (W.D. Tex.); UNM Rainforest
`Innovations v. ZyXEL Communications Corp., No. 6:20-cv-00522-ADA
`(W.D. Tex.); ZyXEL Communications Corp. v. UNM Rainforest Innovations,
`IPR2021-00734. See Pet. 2–3; Paper 6, 2; Paper 11, 1.
`Claims 1–4 and 6–8 were also the subject of a petition filed in Intel
`Corp. v. UNM Rainforest Innovations, IPR2020-01576, which was
`terminated upon granting a joint motion to terminate. See IPR2020-01576,
`Papers 2, 9.
`
`D. The ’096 Patent (Ex. 1001)
`The ’096 Patent relates to methods for constructing frame structures
`for orthogonal frequency-division multiple access (OFDMA) systems. See
`Ex. 1001, 1:16–19.
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`Figure 6A of the ’096 Patent is reproduced below:
`
`
`Figure 6A illustrates an OFDMA frame structure supporting high mobility
`and having a scalable bandwidth. See Ex. 1001, 4:1–3, 6:66–7:2. The frame
`structure includes downlink (DL) sub-frame 16-4 and uplink (UL)
`sub-frame 18-4. See id. at 7:5–7. The frame structure includes added
`regions related to zones 3 for high-mobility environments. See id. at 7:2–5.
`In DL sub-frame 16-4, a first added region includes preamble 68, a sub-
`MAP 67–2 and DATA 66-4. See id. at 7:5–7. In UL sub-frame 18-4, a
`4
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`second added region includes DATA 69-3 and 69-6 (zones 3). See id.
`at 7:7–8. DATA 66-4, 69-3, and 69-6 may be allocated for the extended
`OFDMA system under high mobility. See id. at 7:8–10. DL sub-frame 16-4
`is divided according to mapping information in DL-MAP 1, DL-MAP 2, and
`DL-MAP 3, and UL sub-frame 18-4 is divided according to the map
`information in UL-MAPs in DL burst #1 65-1 and/or 65-2. See id. at 7:10–
`14. A portion of the guard band that overlaps data zones 69-1 and 69-2 in
`UL sub-frame 18-4 may be used to transmit data in the extended system.
`See id. at 7:14–17. “As compared to the zones in the data region of the DL
`sub-frame 16-4 or the UL sub-frame 18-4 of the old/legacy system or the
`new/extended system, the placements of the pilot symbols may be denser,
`[and] the OFDMA symbol periods may be shorter . . . in zones 3 of UL
`sub-frame 18-4 or DL sub-frame 16-4 for the extended system under high
`mobility.” Id. at 7:21–27.
`
`E. Illustrative Claims
`Claims 1 and 8 are independent and claims 2–4, 6, and 7 depend
`ultimately from claim 1. Claims 1 and 8 are illustrative and reproduced
`below:
`
`1. A method of constructing a frame structure for data
`transmission, the method comprising:
`generating a first section comprising data configured in a
`first format compatible with a first communication
`system using symbols;
`generating a second section following the first section, the
`second section comprising data configured in a second
`format compatible with a second communication system
`using symbols, wherein the first communication system’s
`symbols and the second communication system’s
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`symbols co-exist in one transmission scheme and
`wherein:
`the second format is compatible with the second
`communication system configured to support higher
`mobility than the first communication system, wherein
`each symbol in the second communication system has a
`shorter symbol period than that in the first
`communication system;
`generating at least one non-data section containing
`information describing an aspect of data in at least one of
`the first section and the second section; and
`combining the first section, the second section and the at
`least one non-data section to form the frame structure.
`
`
`8. A method of constructing a frame structure for data
`transmission, the method comprising:
`generating a first section comprising data configured in a first
`format compatible with a first communication system using
`symbols;
`generating a second section following the first section, the second
`section comprising data configured in a second format
`compatible with a second communication system using
`symbols, wherein the first communication system's symbols
`and the second communication system’s symbols co-exist in
`one transmission scheme and wherein the second
`communication system has pilot symbols that are denser than
`those in the first communication system;
`generating at least one non-data section containing information
`describing an aspect of data in at least one of the first section
`and the second section; and combining the first section, the
`second section and the at least one non-data section to form the
`frame structure.
`Ex. 1001, 8:32–54, 9:6–25.
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`F. Asserted Challenges to Patentability and Asserted Prior Art
`Petitioner asserts the following challenges to the patentability of
`claims 1–4 and 6–8:
`Claim(s) Challenged
`1–4, 6, 7
`8
`
`35 U.S.C. §1
`103
`103
`
`Reference(s)/Basis
`Talukdar,2 Li3
`Talukdar, Nystrom4
`
`
`
`II. ANALYSIS
`A. Discretion under 35 U.S.C. § 314(a)
`Patent Owner argues that we should exercise our discretion and deny
`institution based on the parallel proceeding in UNM Rainforest Innovations
`v. Dell Techs., Inc., Dell Inc., and EMC Corp., No. 6:20-cv-00468-ADA
`(W.D. Tex.) (“parallel District Court proceeding”). See Prelim. Resp. 3–13;
`Sur-reply to Prelim. Resp. 1–4.
`Under § 314(a), the Director has discretion to deny institution of an
`inter partes review, and that discretion has been delegated to the Board. See
`37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the
`Director.”); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016)
`(“[T]he agency’s decision to deny a petition is a matter committed to the
`Patent Office’s discretion.”); SAS Inst. v. Iancu, 138 S. Ct. 1348, 1356
`(2018) (“[Section] 314(a) invests the Director with discretion on the
`question whether to institute review . . . .” (emphasis omitted)); Harmonic
`
`
`1 Petitioner challenges patentability under pre-AIA 35 U.S.C. § 103. Pet. 23,
`28, 30.
`2 Ex. 1012, US 2009/0067377 A1, published Mar. 12, 2009 (“Talukdar”).
`3 Ex. 1001, US 2007/0155387 A1, published July 5, 2007 (“Li”).
`4 Ex. 1017, US 2007/0104174 A1, published May 10, 2007 (“Nystrom”).
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`Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
`permitted, but never compelled, to institute an IPR proceeding.”).
`In NHK Spring Co. v. Intri-Plex Technologies, Inc., the Board denied
`institution relying in part on § 314(a) because the parallel district court
`proceeding was scheduled to finish before the Board reached a final
`decision. IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential).
`Following NHK, the Board articulated the following factors for
`consideration when determining whether to exercise discretion to deny
`institution in view of a parallel proceeding:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB
`Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to whether
`efficiency, fairness, and the merits support the exercise of authority to deny
`institution in view of an earlier trial date in the parallel proceeding.” Id. at 6.
`In evaluating these factors, we take “a holistic view of whether efficiency
`and integrity of the system are best served by denying or instituting review.”
`Id. (citing Patent Trial and Appeal Board Consolidated Trial Practice Guide
`November 2019, 58). We address each of these factors in turn below.
`
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`1. Analysis of Fintiv Factors
`a. Whether the court granted a stay and proximity of trial date
`(first and second factors)
`Although the parties stated previously that neither party has requested
`a stay in the parallel District Court proceeding (see Pet. 6–7; Prelim.
`Resp. 5), Petitioner recently informed the Board that “the district court has
`stayed the Dell . . . litigation[] and removed the previously scheduled
`Nov. 8, 2021 trial date from its calendar.” Paper 13, 1 (citing June 22, 2021
`Order in UNM Rainforest Innovations v. Dell Technologies Inc. et al., No.
`6:20-cv-00468-ADA (“District Court Order”)). The court “grant[ed] the
`motion to stay the [parallel District Court proceeding] ‘pending resolution of
`patent ownership issues in UNM Rainforest Innovations v. Industrial
`Technology Research Institute, et al., case number D-202-CV-2021-02803 in
`the Second Judicial District Court of Bernalillo County, New Mexico.’” Id.
`(quoting District Court Order).
`The granting of a stay pending inter partes review allays concerns
`about inefficiency and duplication of efforts and has weighed strongly
`against exercising discretion to deny institution. See Snap, Inc. v. SRK Tech.
`LLC, IPR2020-00820, Paper 15 at 9 (PTAB Oct. 21, 2020) (precedential as
`to § II.A); see Fintiv, Paper 11 at 6. Although the parallel District Court
`proceeding has been stayed and the trial date was removed from the calendar
`for reasons unrelated to Petitioner’s request for inter partes review, the
`current stay of the parallel District Court proceeding nonetheless allays some
`concerns about inefficiency and duplication of efforts. Accordingly, we find
`that the considerations of the first Fintiv factor weigh against discretionary
`denial.
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`According to Fintiv, “[i]f the court’s trial date is earlier than the
`projected statutory deadline, the Board generally has weighed this fact in
`favor of exercising authority to deny institution under NHK.” Fintiv,
`Paper 11 at 9. Because the trial date has been removed from the calendar in
`the parallel District Court proceeding, the considerations of the second
`Fintiv factor weigh against discretionary denial. See Snap, Paper 15 at 9.
`
`b. Investment in the parallel proceeding by the court and the parties
`Patent Owner asserts that this factor strongly favors denial because the
`parallel District Court proceeding has already seen substantial activity
`relevant to patent validity. See Prelim. Resp. 7. Patent Owner contends that
`the parties submitted a Joint Claim Construction Statement and have
`exchanged final infringement and invalidity contentions. See id. (citing
`Ex. 2006). Patent Owner asserts that by the time this decision issues, fact
`discovery will be closed. See id. (citing Ex. 2006). According to Patent
`Owner, “the pretrial litigation processes will be roughly 50% complete
`before an institution decision is issued.” Id. at 8. Patent Owner further
`contends that (1) the parties are already actively taking merits-based
`discovery, and (2) Patent Owner has served, and Petitioner has responded to,
`a subpoena for documents, source code, and other information pertaining to
`Qualcomm Wi-Fi chips incorporated into Dell’s accused products. See id.
`Petitioner does not dispute these facts. See generally Reply to Prelim. Resp.
`Fintiv provides the following guidance: “This investment factor is
`related to the trial date factor, in that more work completed by the parties
`and court in the parallel proceeding tends to support the arguments that the
`parallel proceeding is more advanced, a stay may be less likely, and
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`instituting would lead to duplicative costs.” Fintiv, Paper 11 at 10. In the
`circumstances before us, the anticipated remaining investment of time and
`effort to bring the parallel District Court proceeding to trial appears to be
`about equal to that which has already been invested and is not insignificant,
`and, therefore, the investment to date by the parties and the court weighs
`slightly in favor of discretionary denial.
`The third Fintiv factor also provides that a petitioner’s diligence or
`delay in filing a petition may be relevant. See Fintiv, Paper 11 at 11–12. If
`the evidence shows that a petitioner filed its petition expeditiously, such as
`promptly after becoming aware of the claims being asserted, this fact has
`weighed against denying institution. See id. at 11 (citing Intel Corp. v. VLSI
`Tech. LLC, IPR2019-01192, Paper 15 at 12–13 (PTAB Jan. 9, 2020);
`Illumina Inc. v. Natera, Inc., IPR2019-01201, Paper 19 at 8 (PTAB
`Dec. 18, 2019)). If, however, the evidence shows the petitioner did not file
`its petition expeditiously, such facts have favored denial. See id. at 11–12
`(citing Next Caller, Inc. v TRUSTID, Inc., IPR2019-00961, Paper 10 at 16
`(PTAB Oct. 16, 2019)).
`Petitioner contends that it acted expeditiously by filing this Petition
`shortly after its customer was sued. See Pet. 8 (citing Fintiv, Paper 11 at 11).
`Petitioner, however, does not specifically address the elapsed time between
`service of the complaint in the parallel District Court proceeding and the
`December 28, 2020, Petition filing date (Paper 5). Nor does Petitioner
`address when it became aware of the claims being asserted in the parallel
`District Court proceeding. Because Petitioner’s assertion is unsupported, we
`are unable to assess whether the Petition was filed expeditiously.
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`The investment of time and effort to date by the parties and the court
`evidenced by the record relative to the anticipated investment remaining to
`bring the parallel District Court proceeding to trial weighs slightly in favor
`of exercising discretion to deny institution. Petitioner’s unsupported
`assertion that the Petition was filed expeditiously does not mitigate our
`determination that the investment in the parallel District Court proceeding to
`date by the parties and the court weighs slightly in favor of discretionary
`denial. In sum, the considerations of the third Fintiv factor weigh slightly in
`favor of discretionary denial.
`
`c. Overlap between the issues raised in the petition and
`in the parallel proceeding
`Petitioner asserts that “the invalidity grounds, arguments, and
`evidence presented in this Petition will be different than those presented in
`the litigations.” Pet. 8. Petitioner further contends that “[t]his Petition
`challenges [two] claims . . . , which are not asserted in any of the
`litigations.” Id. Here, Petitioner appears to be referring to all of the
`numerous proceedings in the District Court, not just the parallel District
`Court proceeding. Petitioner also asserts that “Dell has indicated it will
`stipulate in the [parallel District Court proceeding], prior to any trial in
`which Dell products that incorporate Petitioner’s Wi-Fi components are
`accused of infringement, that if the Board institutes IPR of the challenged
`claims in this Petition, Dell will not pursue invalidity of the challenged
`claims on the same grounds or even the same references at issue in this
`Petition.” Id. (citing IPR2020-01576, Paper 2 at 8). Petitioner contends that
`the stipulation would mitigate concerns of duplicated efforts and conflicting
`decisions, and therefore this factor weighs against discretionary denial. See
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`id. at 8–9 (citing VMWare, Inc. v. Intellectual Ventures I LLC, IPR2020-
`00470, Paper 13 at 20 (PTAB Aug. 18, 2020)).
`Patent Owner asserts that this factor favors denial of institution
`because there is substantial overlap between the issues of invalidity
`presented in the Petition and the parallel District Court proceeding and
`because the narrow stipulation is insufficient. See Prelim. Resp. 8.
`According to Patent Owner, Petitioner “deceptively argues that the issues
`‘will be different’ because here Petitioner ‘challenges claims … which are
`not asserted’” in the parallel District Court proceeding. Id. (citing Pet. 9)
`(alteration in original). Patent Owner contends that Petitioner is challenging
`all the claims asserted in the parallel District Court proceeding in the
`Petition, and thus, there is a 100% overlap with the district court
`independent claims. See id. Patent Owner asserts that the narrow stipulation
`does not eliminate the possibility that substantially similar art and arguments
`will be raised in the parallel District Court proceeding. See id. at 8–9 (citing
`Philip Morris Prods., S.A. v. RAI Strategic Holdings, Inc., IPR2020-00921,
`Paper 9 at 19 (PTAB Nov. 16, 2020)).
`According to Fintiv, “if the petition includes the same or substantially
`the same claims, grounds, arguments, and evidence as presented in the
`parallel proceeding, this fact has favored denial” because “concerns of
`inefficiency and the possibility of conflicting decisions [are] particularly
`strong.” Fintiv, Paper 11 at 12. Based on the arguments and evidence
`presented, we are unable to determine if there is significant overlap in the
`grounds, arguments, and evidence presented in the parallel District Court
`proceeding and the challenges presented in the Petition. On the other hand,
`the Petition challenges the same claims as the parallel District Court
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`proceeding, and includes challenges to two additional dependent claims.
`Although Dell’s proposed stipulation mitigates to some degree the concerns
`of duplicative efforts between the parallel District Court proceeding and this
`proceeding, as well as concerns of potentially conflicting decisions, we find
`that the proposed stipulation does not fully allay such concerns. In other
`words, the proposed stipulation alleviates to some degree concerns of
`duplicative efforts and potentially conflicting decisions, but it does not
`eliminate them. See Sand Revolution, Paper 24 at 12. Accordingly, the
`considerations of the fourth Fintiv factor weigh slightly against discretionary
`denial.
`
`d. Whether the petitioner and defendant in the
`parallel proceeding are the same party
`Petitioner asserts that this factor weighs against discretionary denial
`because “Petitioner is not a defendant in any of the litigations nor the same
`party as any defendant.” Pet. 9 (citing Fintiv, Paper 11 at 11 n.20, 13); see
`id. at 6; see also Reply to Prelim. Resp. 3 (“Qualcomm, not Dell, has filed
`this IPR.”). According to Petitioner,
`Qualcomm has indemnity obligations to Dell and has
`coordinated with Dell and its subsidiary EMC in defense in the
`Dell litigation and as it relates to the Petition, including on the
`submission of a Sand Revolution-style stipulation that mitigates
`the risk of duplicative efforts between the district court and the
`Board (Petition at 8-9). Qualcomm thus identified Dell and
`EMC as RPIs out of an abundance of caution.
`Reply to Prelim. Resp. 2.
`Patent Owner argues that this factor favors denying institution
`because “Qualcomm is representing and acting as an agent for Dell’s and
`EMC’s interests in this [proceeding] and it is indemnifying Dell in the
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`District Court.” Prelim. Resp. 9. Patent Owner contends Dell and EMC,
`Qualcomm’s customers, are real parties in-interest to this proceeding and
`have agreed to be bound by the results of this proceeding. See id. (citing
`Pet. 2, 9). Patent Owner asserts that Qualcomm is indemnifying Dell
`because Dell’s position is that all of the remaining chips in the parallel
`District Court proceeding are Qualcomm chips and Qualcomm is using the
`same counsel in this proceeding as in the District Court and in regard to
`Patent Owner’s subpoena to Qualcomm. See id.
`“If a petitioner is unrelated to a defendant in an earlier court
`proceeding, the Board has weighed this fact against exercising discretion.”
`Fintiv, Paper 11 at 13–14. Given that there is overlap between the real
`parties in-interest named in this proceeding and the defendants in the parallel
`District Court proceeding, we determine that this factor, on balance, weighs
`slightly in favor of discretionary denial.
`
`e. Other circumstances, including the merits
`Petitioner contends the merits of the Petition “favor institution,
`because the grounds raised are particularly strong: the prior art demonstrates
`unpatentability based on references not considered by the Examiner that
`would have been combined by skilled artisans as asserted.” Pet. 9. Patent
`Owner asserts that Petitioner’s grounds are not particularly strong on the
`merits for reasons detailed in the Preliminary Response. See Prelim.
`Resp. 9. More specifically, Patent Owner contends that Talukdar, relied
`upon in the Petition, does not predate the priority date of the ’096 Patent and
`Patent Owner “has offered uncontroverted expert testimony that the
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`challenged claims of the ’096 patent are fully supported by its provisional
`application.” Id. at 9–10.
`When considering whether to exercise discretion to deny a petition,
`we undertake a balanced assessment of all relevant circumstances in the
`case, including the merits. Fintiv, Paper 11 at 14. Although we need not
`undertake a full merits analysis, we consider the strengths and weaknesses of
`the merits, where stronger merits may favor institution. See id. at 15–16.
`On the other hand, if the merits of the grounds presented in the petition are a
`closer call, then this fact has favored denying institution when other factors
`favoring denial are present. See id. at 15.
`We have reviewed Petitioner’s patentability challenges and Patent
`Owner’s Preliminary Response, as well as the parties’ additional briefing.
`As explained in the detailed analysis below, based on the record before, the
`merits of Petitioner’s patentability challenges appear to be sufficient to show
`a reasonable likelihood of prevailing at this stage of the proceeding with
`respect to at least one asserted ground. See infra Section II.F. Therefore,
`consideration of the merits is neutral.
`Petitioner also argues that it “has no legal recourse for this patent
`outside of IPR.” Pet. 9; see id. at 6. Petitioner, however, does not explain
`why this is the case. See id. Accordingly, Petitioner’s contention does not
`weigh in favor of institution.
`As other circumstances, Patent Owner also argues that institution
`should be denied because Petitioner failed to disclose all real parties in-
`interest as required by 35 U.S.C. § 312(a). See Prelim. Resp. 10. Patent
`Owner asserts that Petitioner admits that Dell and EMC are real parties in-
`interest because they are customers named as defendants in the parallel
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`District Court proceeding. See id. (citing Pet. 3). Patent Owner contends
`that ASUSTek is also a customer that has been named as a defendant in a
`related District Court proceeding. See id. (citing Pet. 3; Exs. 2004, 2012).
`On this basis, Patent Owner contends that Petitioner failed to disclose
`ASUSTek as a real party in-interest. See id. at 10–11. According to Patent
`Owner, “the ’096 patent has [also] been asserted against its customer LG, to
`which, on information and belief, Qualcomm is also an RPI and/or privy and
`owes indemnity.” Id. at 11 (citing Indus. Tech. Research Inst. v. LG Elecs.,
`Inc., No. 2:15-cv-00552, Dkt. No. 1 (E.D. Tex. April 24, 2015)).
`Petitioner disputes Patent Owner’s contentions regarding unnamed
`real parties in-interest. See Reply to Prelim. Resp. 1–2. Petitioner asserts
`that Patent Owner “has not presented any evidence to ‘reasonably bring[]
`into question the accuracy of petitioner’s identification of the real parties in
`interest.’” Id. at 1 (quoting Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242
`(Fed. Cir. 2018)) (alteration in original). According to Petitioner, “[n]either
`being a customer nor a co-defendant in a related litigation elevates a third
`party to an RPI.” Id. at 2 (citing Wi-Fi One, LLC v. Broadcom Corp., 887
`F.3d 1329, 1337–40 (Fed. Cir. 2018)). Petitioner further contends that
`theoretical and incorrect allegations of indemnity obligations also are
`insufficient. See id. (citing WesternGeco LLC v. ION Geophysical Corp.,
`889 F.3d 1308, 1321 (Fed. Cir 2018)). Finally, Petitioner contends that
`neither ASUSTek nor LG exercised or could have exercised control over
`Qualcomm’s petition, was involved in drafting the petition, or provided any
`funding. See id. (citing Puzhen Life USA, LLC v. ESIP Series 2, LLC,
`IPR2017-02197, Paper 24 at 10 (PTAB Feb. 27, 2019)).
`
`
`
`17
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`IPR2021-00375
`Patent 8,265,096 B2
`
`
`In response, Patent Owner contends that Petitioner does not deny that
`its customer agreements with ASUSTek and LG contain indemnity
`provisions similar to its agreements with Dell and EMC. See Sur-reply to
`Prelim. Resp. 4. According to Patent Owner, “[a]t a minimum, Qualcomm
`should provide its indemnity agreements with ASUSTek and LG to
`substantiate its argument that ASUSTek and LG are not similarly situated as
`Dell and EMC.” Id. Patent Owner further contends that “Fintiv factor 6
`requires corroboration of Qualcomm’s say-so by review of its ASUSTek and
`LG indemnity agreements.” Id.
`We agree that Patent Owner presents insufficient evidence to
`demonstrate that Petitioner’s statement regarding the real parties in-interest
`is inaccurate. Patent Owner also presents no persuasive authority to support
`its contention that Petitioner should produce indemnity agreements to refute
`Patent Owner’s unsupported assertions that ASUSTek and LG are real
`parties in-interest. For these reasons, Patent Owner’s contention that
`Petitioner does not name all real parties in-interest does not weigh in favor
`of discretionary denial.
`After performing a balanced assessment of the merits of the Petition
`and the other circumstances raised by the parties, the considerations of this
`Fintiv factor are neutral.
`
`2. Conclusion
`We have considered the circumstances and facts before us in view of
`the Fintiv factors. Because our analysis is fact-driven and we take a holistic
`view of the factors, no single factor is determinative of whether we exercise
`discretion to deny institution under § 314(a). Based on the record before us,
`
`
`
`18
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`IPR2021-00375
`Patent 8,265,096 B2
`
`the considerations underlying the Fintiv factors when viewed holistically
`lead us to determine that the efficiency and integrity of the system are best
`served by not exercising discretion to deny institution of inter partes review.
`
`B. Claim Construction
`The Board applies the same claim construction standard as applied in
`federal courts in a civil action under 35 U.S.C. § 282(b), which is generally
`referred to as the Phillips standard. See 37 C.F.R. § 42.100(b) (2020);
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under the
`Phillips standard, words of a claim are generally given their ordinary and
`customary meaning. Phillips, 415 F.3d at 1312.
`Petitioner identifies the following claim constructions, entered by the
`court in UNM Rainforest Innovations v. Apple Inc., No. 1:20-cv-00351
`(W.D. Tex.) (Ex. 1011)5 as consistent with the positions advanced in the
`Petition:
`Claim Term or Phrase
`“frame structure”
`
`“data/ non-data”
`“communication system”
`
`Construction
`“a single structure comprising one or
`more frames, wherein each frame may
`have one or more subframes”
`“[p]lain-and-ordinary meaning”
`“[p]lain-and-ordinary meaning, where the
`plain-and-ordinary meaning is ‘a
`combination of hardware and software
`that transmits and receives data according
`to one or more communication
`standards’”
`
`
`5 Patent Owner previously asserted the ’096 Patent in UNM Rainforest
`Innovations v. Apple Inc., No. 1:20-cv-00351 (W.D. Tex.), which was
`ultimately dismissed. See Pet. 3 n.1.
`19
`
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`IPR2021-00375
`Patent 8,265,096 B2
`
`
`“symbol”
`
`“[p]lain-and-ordinary meaning, wherein
`the plain-and-ordinary meaning means ‘a
`transmissible unit of information’”
`“[p]lain-and-ordinary meaning[,] where
`“wherein the first
`the plain-and ordinary
`communication system’s
`meaning is ‘wherein symbols of the first
`symbols and the second
`communication system and symbols of
`communication system’s
`the second communication system exist
`symbols co-exist in on
`together in one transmission scheme’”
`transmission scheme”
`“support higher mobility than” “support higher relative velocity
`between a transmitter and a receiver than”
`“the time it takes to transmit one symbol”
`“[...] and/or [...]”
`“more pilot symbols per unit time than,
`wherein a unit time is the symbol period
`of the first communication system”
`See Pet. 22–23 (alterations in original). Patent Owner identifies the same
`claim terms or phrases construed by the court. See Prelim. Resp. 18–19.
`Patent Owner further points out that the court construed the preambles of the
`claims as limiting. See id. at 18.
`As demonstrated in the analysis below, for the purpose of institution,
`we need not construe any claim term or phrase. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(“[W]e need only construe terms ‘that are in controversy, and only to the
`extent necessary to resol
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