Trials@uspto.gov
`571-272-7822
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` Paper 9
`Date: November 22, 2021
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`TCL INDUSTRIES HOLDINGS CO., LTD. and HISENSE CO., LTD.,
`Petitioner,
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2021-00990
`Patent 7,110,444 B1
`____________
`
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
` Paper 9
`Date: November 22, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`TCL INDUSTRIES HOLDINGS CO., LTD. and HISENSE CO., LTD.,
`Petitioner,
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2021-00990
`Patent 7,110,444 B1
`____________
`
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`IPR2021-00990
`Patent 7,110,444 B1
`
`
`I. INTRODUCTION
`
`Background
`A.
`TCL Industries Holdings Co., Ltd. and Hisense Co., Ltd. filed a
`Petition (Paper 1, “Pet.”) requesting institution of inter partes review
`(“IPR”) of claims 2–4 (“the Challenged Claims”) of U.S. Patent
`No. 7,110,444 B1 (Ex. 1001, “the ’444 patent”). ParkerVision, Inc. (“Patent
`Owner”) filed a Preliminary Response (Paper 8, “Prelim. Resp.”).
`An inter partes review may be instituted only if “the information
`presented in the petition . . . and any [preliminary] 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.” 35 U.S.C. § 314(a)
`(2018). For the reasons given below, Petitioner has established a reasonable
`likelihood that it would prevail in showing the unpatentability of at least one
`of the Challenged Claims of the ’444 patent. Accordingly, we institute an
`inter partes review of claims 2–4 of the ’444 patent on all grounds raised in
`the Petition.
`
`Related Proceedings
`B.
`The parties identify the following as related matters: ParkerVision,
`Inc. v. Intel Corporation, 6:20-cv-00108 (W.D. Tex.) (“the Intel
`Litigation”); ParkerVision, Inc. v. TCL Industries Holdings Co., Ltd. et al.,
`No. 6:20-cv-00945 (W.D. Tex.) (“the TCL Litigation”); ParkerVision, Inc.
`v. Hisense Co., Ltd. et al., No. 6:20-cv-00870 (W.D. Tex.) (“the Hisense
`Litigation”)1; ParkerVision, Inc. v. ZyXEL Communications Corp., No. 6:20-
`
`
`1 Collectively, we refer to the TCL and Hisense Litigations as the “Related
`Litigations.”
`
`2
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`cv-01010 (W.D. Tex. )2; ParkerVision, Inc. v. LG Electronics Inc., No. 6:21-
`cv-00520 (W.D. Tex.); and Intel Corporation v. ParkerVision, Inc.,
`IPR2020-01265 (“the Intel IPR”). Pet. 4–5; Paper 5 (Petitioner’s Updated
`Mandatory Notice), 1; Paper 7 (Patent Owner’s Mandatory Notices), 1.
`Petitioner also identifies ParkerVision, Inc. v. Buffalo Inc., No. 6:20-cv-
`01009 (W.D. Tex.), as a related matter involving the ’444 patent. Pet. 5.
`Additionally, Petitioner challenges several claims of U.S. Patent
`No. 7,292,835 B2, owned by Patent Owner, in IPR2021-00985. Pet. 5;
`Paper 7, 1. 3
`
`Real Parties in Interest
`C.
`Petitioner identifies TCL Industries Holdings Co., Ltd.; Hisense Co.,
`Ltd.; TCL Electronics Holdings Ltd.; Shenzhen TCL New Technology Co.,
`Ltd.; TCL King Electrical Appliances (Huizhou) Co., Ltd.; TCL Moka Int’l
`Ltd.; TCL Moka Manufacturing S.A. DE C.V.; TCL Technology Group
`Corp.; TTE Technology, Inc.; and Hisense Visual Technology Co., Ltd.
`(f/k/a Qingdao Hisense Electronics Co., Ltd.) as real parties in interest.
`Pet. 4. Patent Owner identifies ParkerVision, Inc. as the sole real party in
`interest. Paper 7, 1.
`
`
`2 After the parties’ briefing, the district court granted a joint motion to
`dismiss with prejudice and the case is now closed. See Ex. 3001 (Docket
`Entry 25, Order dated Sept. 27, 2001).
`3 Patent Owner identifies the instant proceeding—IPR2021-00990—as a
`related matter, but we understand Patent Owner to refer to IPR2021-00985.
`See Paper 7, 1.
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`3
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`D.
`
`The Asserted Grounds of Unpatentability and Declaration
`Evidence
`Petitioner challenges the patentability of claims 2–4 of the ’444 patent
`on the following grounds:
`Claim(s) Challenged
`2, 3
`2–4
`
`35 U.S.C. §4
`103(a)
`103(a)
`
`Reference(s)/Basis
`Tayloe, 5 TI Datasheet6
`Lam, 7 Enz, 8 Tayloe
`
`Pet. 7.
`Additionally, Petitioner supports its challenge with a Declaration by
`Matthew B. Shoemake, Ph.D. (Ex. 1002) and a Declaration by Maureen M.
`Honeycutt (Ex. 1009).
`
`The ’444 Patent
`E.
`The ’444 patent is directed to “a wireless local area network (WLAN)
`that includes one or more WLAN devices (also called stations, terminals,
`access points, client devices, or infrastructure devices) for effecting wireless
`communications over the WLAN.” Ex. 1001, 2:10–14. The ’444 patent
`explains that “[t]he WLAN device includes at least an antenna, a receiver,
`
`
`4 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 103 that became effective on March 16, 2013. Because the
`’444 patent has an effective filing date before March 16, 2013, we apply the
`pre-AIA version of the statutory basis for unpatentability.
`5 U.S. Patent No. 6,230,000 B1, issued May 8, 2001 (Ex. 1004, “Tayloe”).
`6 SN74CBT3253 Dual 1-of-4 FET Multiplexer/Demultiplexer (rev. ed.
`May 1998) (Ex. 1005, “TI Datasheet”).
`7 U.S. Patent No. 5,937,013, issued Aug. 10, 1999 (Ex. 1006, “Lam”).
`8 Circuit Techniques for Reducing the Effects of Op-Amp Imperfections:
`Autozeroing, Correlated Double Sampling, and Chopper Stabilization,
`Proceedings of the IEEE, Vol. 84, No. 11, Nov. 1996 (Ex. 1007, “Enz”).
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`and a transmitter . . . . The WLAN receiver includes at least one universal
`frequency translation module that frequency down-converts a received
`electromagnetic (EM) signal.” Id. at 2:14–22.
`Figure 70A is reproduced below:
`
`
`Figure 70A of the ’444 patent “illustrates an IQ [in-phase quadrature]
`receiver having shunt UFT [universal frequency translation] modules.”
`Ex. 1001, 5:34–35.
`The ’444 patent explains that “I/Q modulation receiver 7000 receives,
`down converts, and demodulates a[n] I/Q modulated RF [radio frequency]
`input signal 7082 to an I baseband output signal 7084, and a Q baseband
`output signal 7086.” Id. at 35:51–54; see id. at 35:60–62 (Antenna 7072
`receives and outputs I/Q modulated RF input signal 7082.). The ’444 patent
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`states that, “[w]hen present, LNA 7018 amplifies I/Q modulated RF input
`signal 7082, and outputs amplified I/Q signal 7088.” Id. at 35:63–64.
`Thereafter, “[f]irst UFD [universal frequency down-conversion]
`module 7002 receives amplified I/Q signal 7088. . . . [,] down-converts the I-
`phase portion of the amplified input I/Q signal 7088 according to an I
`control signal 7090. . . . [, and] outputs an I output signal 7098.” Id. at
`35:65–36:2. Similarly, UFD module 7006 “receives amplified I/Q
`signal 7088[,]” “down-converts the inverted I-phase signal portion of
`amplified input I/Q signal 7088 according to an inverted I control
`signal 7092[,]” and “outputs an inverted I output signal 7001.” Id. at 36:33–
`37. Thereafter, “[f]irst differential amplifier 7020 receives filtered I output
`signal 7007 . . . . subtracts filtered inverted I output signal 7007 from filtered
`I output signal 7001, amplifies the result, and outputs I baseband output
`signal 7084.” Id. at 37:3–8.
`The ’444 patent’s first and second UFD modules in Figure 70A
`include capacitors 7074 and 7076, respectively, and UFT modules 7026 and
`7038, respectively. Ex. 1001, 36:3–5 (first UFD module 7002 comprises
`first storage module 7024 and first UFT module 7026), 36:14–15 (first
`storage module 7024 comprises first capacitor 7074), 36:38–40 (second
`UFD module 7006 comprises second storage module 7036 and second UFT
`module 7038), 36:50–51 (second storage module 7036 comprises second
`capacitor 7076).
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`Figure 1B is reproduced below:
`
`
`Figure 1B of the ’444 patent “is a more detailed diagram of a universal
`frequency translation (UFT) module.” Ex. 1001, 2:56–58.
`The ’444 patent explains that, “[g]enerally, the UFT module 103
`includes a switch 106 controlled by a control circuit 108.” Id. at 8:62–64
`(noting that switch 106 is referred to as a controlled switch); see id. at 36:5–
`7 (first UFT module, shown in Figure 70A, contains a switch that opens and
`closes as a function of I control signal 7090), 36:40–42 (second UFT
`module, also shown in Figure 70A, contains a switch that opens and closes
`as a function of inverted I control signal 7092).
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`The ’444 patent includes two alternative configurations of switches
`and capacitors in UFD modules (Ex. 1001, 9:43–57), as shown in
`Figures 20A and 20A-1 reproduced below:
`
`
`
`Figures 20A and 20A-1 of the ’444 patent “are example aliasing modules.”
`Ex. 1001, 3:50–51.
`The ’444 patent explains that, in Figure 20A, switch 2008 is in series
`with input signal 2004 and capacitor 2010 is shunted to ground; in
`Figure 20A-1, however, capacitor 2010 is in series with input signal 2004
`and switch 2008 is shunted to ground. Id. at 9:48–57 (also noting that “[t]he
`electronic alignment of the circuit components is flexible”).
`
`Illustrative Claims
`F.
`Claims 2 and 3, the independent claims challenged in this proceeding,
`are illustrative of the claimed subject matter and are reproduced below with
`Petitioner’s bracketing added for reference:
`2.
`[2-pre] A wireless modem apparatus, comprising:
`[2A] a receiver for frequency down-converting an input
`signal including,
`[2B] a first frequency down-conversion module to
`down-convert the input signal, wherein said first
`frequency down-conversion module down-converts said
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`input signal according to a first control signal and outputs
`a first down-converted signal;
`[2C] a second frequency down-conversion module
`to down-convert said input signal, wherein said second
`frequency down-conversion module down-converts said
`input signal according to a second control signal and
`outputs a second down-converted signal; and
`[2D] a subtractor module that subtracts said second
`down-converted signal from said first down-converted
`signal and outputs a down-converted signal;
`[2E] wherein said first frequency down-conversion
`module under-samples said input signal according to said first
`control signal, and [2F] said second frequency down-
`conversion module under-samples said input signal according
`to said second control signal.
`3.
`[3-pre] A wireless modem apparatus, comprising:
`[3A] a receiver for frequency down-converting an input
`signal including,
`[3b] a first frequency down-conversion module to
`down-convert the input signal, wherein said first
`frequency down-conversion module down-converts said
`input signal according to a first control signal and outputs
`a first down-converted signal;
`[3C] a second frequency down-conversion module
`to down-convert said input signal, wherein said second
`frequency down-conversion module down-converts said
`input signal according to a second control signal and
`outputs a second down-converted signal; and
`[3D] a subtractor module that subtracts said second
`down-converted signal from said first down-converted
`signal and outputs a down-converted signal;
`[3E] wherein said first and said second frequency down-
`conversion modules each comprise a switch and a storage
`element.
`Ex. 1001, 60:47–67, 61:1–18.
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`Level of Ordinary Skill in the Art
`G.
`Petitioner, supported by Dr. Shoemake’s testimony, proposes that a
`person of ordinary skill in the art at the time of the invention would have had
`“at least an undergraduate degree in electrical engineering or a related
`subject and two or more years of experience in the fields of communication
`systems, signal processing and/or RF circuit design.” Pet. 35 (citing
`Ex. 1002 ¶¶ 31–36). Petitioner explains that “[l]ess work experience may be
`compensated by a higher level of education, such as a master’s degree.” Id.
`(citing Ex. 1002 ¶¶ 31–36).
`Patent Owner does not express a position on the level of ordinary skill
`in the art in the Preliminary Response. See generally Prelim. Resp.
`At this stage of the proceeding, we find Petitioner’s proposal
`consistent with the level of ordinary skill in the art reflected by the
`’444 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
`1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt
`and apply Petitioner’s unopposed position as to the level of ordinary skill in
`the art in our consideration of the issues presently before us.
`
`II. CLAIM CONSTRUCTION
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2020). The
`claim construction standard includes construing claims in accordance with
`the ordinary and customary meaning of such claims as understood by one of
`ordinary skill in the art at the time of the invention. See id.; Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). In construing
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`claims in accordance with their ordinary and customary meaning, we take
`into account the specification and prosecution history. Phillips, 415 F.3d at
`1315–17.
`Additionally, only terms that are in controversy need to be construed,
`and these need be construed only to the extent necessary to resolve the
`controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
`controversy”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of
`an inter partes review).
`Petitioner proposes constructions for three claim terms—“frequency
`down-conversion module,” “subtractor module,” and “under-samples.”
`Pet. 15–18. Patent Owner does not propose constructions for any claim
`terms in its Preliminary Response. See generally Prelim. Resp. At this
`preliminary stage, we need not construe expressly any claim terms because
`none are in dispute. See Vivid Techs., 200 F.3d at 803.
`
`III. ANALYSIS
`In its Preliminary Response, Patent Owner contends that we should
`exercise our discretion to deny institution for three reasons. Prelim.
`Resp. 1–3. First, “because nearly all of the arguments and references in the
`Petition were already considered by the Patent Office,” we should exercise
`our discretion to deny institution pursuant to 35 U.S.C. § 325(d). Id. at 1;
`see id. at 3–12. Second, we should exercise our discretion under 35 U.S.C.
`§ 314(a) “to prevent duplicative proceedings and promote efficiency” by
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`finding that the General Plastic9 factors favor discretionary denial. Id. at 2;
`see id. at 12–26. Third, we should exercise our discretion under 35 U.S.C.
`§ 314(a) because of the advance state of parallel litigation in the Western
`District of Texas. Id. at 2–3 (relying on Apple Inc. v. Fintiv Inc., IPR2020-
`00019, Paper 11 at 5 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)); see
`id. at 26–35.
`We consider each of Patent Owner’s bases for discretionary denial in
`addition to Petitioner’s challenges.
`
`35 U.S.C. § 325(d)
`A.
`Institution of inter partes review is discretionary. See Harmonic 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.”); 35 U.S.C.
`§ 314(a) (2018). Pursuant to 35 U.S.C. § 325(d), in determining whether to
`institute an inter partes review, “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.” In
`evaluating arguments under § 325(d), we use:
`[a] two-part framework: (1) whether the same or substantially
`the same art previously was presented to the Office or whether
`the same or substantially the same arguments previously were
`presented to the Office; and (2) if either condition of [the] first
`part of the framework is satisfied, whether the petitioner has
`demonstrated that the Office erred in a manner material to the
`patentability of challenged claims.
`
`
`9 General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357,
`Paper 19 at 16−17 (PTAB Sept. 6, 2017) (§ II.B.4.i designated precedential)
`(“General Plastic”).
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`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)
`(“Advanced Bionics”); see also Becton, Dickinson & Co. v. B. Braun
`Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017)
`(precedential as to Section III.C.5, first paragraph) (listing factors to
`consider in evaluating the applicability of § 325(d)) (“Becton, Dickinson”)).
`Under Advanced Bionics, factors (a), (b), and (d) of Becton, Dickinson
`are considered in the evaluation of whether the same or substantially the
`same art or arguments were previously presented to the Office. Advanced
`Bionics at 10. Becton, Dickinson identifies these factors as:
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination;
`(b) the cumulative nature of the asserted art and the prior art
`evaluated during examination; and
`(d) the extent of the overlap between the arguments made
`during examination and the manner in which petitioner relies on
`the prior art.
`Becton, Dickinson at 17–18. If the first part of the Advanced Bionics
`framework is satisfied, we turn to the second part, where Becton, Dickinson
`factors (c), (e), and (f) are considered in the evaluation of whether a
`petitioner has demonstrated that the Office erred in a manner material to the
`patentability of the challenged claims. Becton, Dickinson identifies these
`factors as:
`(c) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for
`rejection;
`(e) whether petitioner has pointed out sufficiently how the
`examiner erred in its evaluation of the asserted prior art; and
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`(f) the extent to which additional evidence and facts presented
`in the petition warrant reconsideration of the prior art or
`arguments.
`
`Id.
`
`Advanced Bionics Framework – First Part
`1.
`For the first part of the Advanced Bionics framework (and factors (a),
`(b), and (d) of Becton, Dickinson), Patent Owner raises two primary
`arguments. First, Patent Owner points to the Intel IPR and the asserted prior
`art and arguments raised therein. In particular, Patent Owner contends that
`Tayloe and TI Datasheet are the same references asserted by Intel against the
`’444 patent in the Intel IPR and that Petitioner relies upon the references in
`the same manner. Prelim. Resp. 6–7. Patent Owner also notes that even
`though the Intel IPR involves only one overlapping claim (i.e., claim 3), 10
`claims 2 and 3 recite similar limitations. Id.
`Second, Patent Owner points to the prosecution history of the
`’444 patent. Patent Owner contends that Tayloe and Lam were previously
`considered by the Examiner as indicated by their inclusion on an
`Information Disclosure Statement (IDS) filed August 19, 2004, and the
`Examiner’s subsequent statement that the IDS was considered. Prelim.
`Resp. 7–8 (citing Ex. 1003, 1089). Additionally, Patent Owner asserts that
`Enz is cumulative of Tayloe and Lam because Petitioner argues that “Tayloe
`and Lam each discloses or renders obvious each element of the respective
`challenged claims.” Id. at 9 (quoting Pet. 82).
`
`
`10 The Intel IPR involves claims 1, 3, and 5 (see Ex. 2013, 4), whereas the
`instant Petition challenges claims 2–4 of the ’444 patent (Pet. 7).
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`Petitioner focuses its argument on the second part of the Advanced
`Bionics framework and does not address the first part. See Pet. 81–84.
`We agree with Patent Owner that Tayloe and TI Datasheet are the
`same prior art asserted in the Intel IPR and that Tayloe and Lam were
`previously presented in an IDS during prosecution of the ’444 patent. We
`do not agree, however, that Enz is cumulative of Tayloe or Lam despite the
`statement quoted by Patent Owner above. In particular, that statement
`conflicts with Petitioner’s reliance upon Enz’s “switched-capacitor sample-
`and-hold circuit as the first (in-phase) down-conversion module” when
`addressing claim element [2B]. See Pet. 62–63 (discussing the combination
`of prior art relied upon for claim element [2B]), 66–68 (discussing
`Petitioner’s reliance upon Enz).
`Accordingly, we find that Tayloe, Lam, and TI Datasheet were
`presented previously to the Office.
`
`Advanced Bionics Framework – Second Part
`2.
`With respect to the second part of the Advanced Bionics framework,
`Patent Owner contends that Petitioner fails to show a material error by the
`Office because (1) the Board instituted a trial based on the petition in the
`Intel IPR and by copying much of that petition’s challenge based on Tayloe
`and TI Datasheet, Petitioner effectively admits that there was no error in the
`Intel IPR institution decision, and (2) the Examiner did not commit a
`material error during the prosecution of the ’444 patent.
`Petitioner contends that the grounds set forth in the instant Petition
`indicate that the Examiner committed a material error by allowing the claims
`to issue despite Patent Owner’s inclusion of Tayloe and Lam on an IDS.
`Pet. 81–84. In particular, Petitioner notes that Tayloe and Lam are among
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`over 900 references submitted by Patent Owner during prosecution of the
`’444 patent, the Examiner did not issue any rejection based on Tayloe or
`Lam, and that under these circumstances, there is no basis to find that the
`Examiner substantively considered either reference. Id. at 81–84.
`Additionally, with respect to the Intel IPR, Petitioner explains that
`claims 2 and 4 are not at issue in the Intel IPR and that, while claim 3 is
`challenged here and in the Intel IPR, it “provide[s] substantively the same
`argument here only to preserve the ability to maintain the same challenge to
`claim 3 in the event of a settlement between Patent Owner and Intel.” Id. at
`84. Further, Petitioner stipulates that, “[i]n the event that the earlier Intel
`IPR does not settle and reaches a [final written decision] on the obviousness
`of claim 3 over Tayloe/TI Datasheet, Petitioner[] hereby stipulate[s] that the
`Board may enter the same result in the [final written decision] in this
`proceeding without further analysis.” Id. at 84 n.15.
`On the particular facts presented here, we find Petitioner’s arguments
`persuasive. First, with respect to the Intel IPR, the Board considered Tayloe
`and TI Datasheet with respect to determining whether to institute review in
`that proceeding. Although Tayloe and TI Datasheet were evaluated to
`render a decision on institution, a full evaluation of those references is not
`yet complete as the Intel IPR remains pending and a final written decision
`has not issued. Additionally, under the circumstances presented here, where
`Petitioner acknowledges raising substantively the same argument as the Intel
`petition, it would not be expected that Petitioner would allege a material
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`error in the Board’s consideration of Tayloe and TI Datasheet in the Intel
`IPR. 11
`Second, with respect to the prosecution of the ’444 patent, the
`Examiner does not appear to have examined Tayloe or Lam with any
`particularity. Neither reference was relied upon as the basis for a rejection,
`they were included among over 900 other references submitted by Patent
`Owner, and Petitioner’s analysis of the claims relying on Tayloe and Lam
`reflects that the Examiner did not consider the references in the manner
`proposed by Petitioner or with the benefit of an expert declaration as
`Petitioner provides here.
`Accordingly, in light of the record before us, we find that Petitioner
`has demonstrated sufficiently that the Office erred in a manner material to
`the patentability of the Challenged Claims with respect to Tayloe and Lam.
`Additionally, given the particular circumstances presented in this
`proceeding, including the additional arguments in favor of discretionary
`denial raised by Patent Owner, we do not find that Petitioner was required to
`explain why the Board erred in its institution decision in the Intel IPR.
`
`Determination as to 35 U.S.C. § 325(d)
`3.
`For the reasons explained above, we decline to exercise discretion
`under 35 U.S.C. § 325(d) to deny institution of inter partes review.
`
`35 U.S.C. § 314(a) – General Plastic
`B.
`The AIA was “designed to establish a more efficient and streamlined
`patent system that will improve patent quality and limit unnecessary and
`
`11 Below, we address issues pertaining to Patent Owner’s assertions that the
`instant Petition is a follow-on petition, in our discussion of Patent Owner’s
`arguments for discretionary denial under 35 U.S.C. § 314(a).
`
`17
`
`
`
`IPR2021-00990
`Patent 7,110,444 B1
`
`counterproductive litigation costs.” Patent Trial and Appeal Board
`Consolidated Trial Practice Guide at 56 (citations omitted). 12 The Board has
`recognized these goals of the AIA, but also “recognize[d] the potential for
`abuse of the review process by repeated attacks on patents.” General Plastic
`at 16−17.
`In General Plastic, the Board articulated a list of non-exclusive
`factors to be considered in determining whether to exercise discretion under
`§ 314(a) to deny a petition:
`1. whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
`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;
`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;
`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;
`6. the finite resources of the Board; and
`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.
`
`
`12 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`18
`
`
`
`IPR2021-00990
`Patent 7,110,444 B1
`
`General Plastic at 16 (citing NVIDIA Corp. v. Samsung Elec. Co., IPR2016-
`00134, Paper 9 at 6−7 (PTAB May 4, 2016)). In our analysis below, we
`address each of these factors.
`
`1. Whether the Same Petitioner Previously Filed a Petition
`Directed to the Same Claims of the Same Patent
`Patent Owner contends that, even though Petitioner did not file a
`previous petition, Petitioner was well aware of the earlier-filed petition by
`Intel, in the Intel IPR, and copied substantial portions of it. Prelim.
`Resp. 14. Patent Owner asserts that this factor thus “weighs against
`institution of . . . [the] follow-on petition because a significant relationship
`exists between” Petitioner and Intel and “the challenged patent claims.” Id.
`at 14–15 (citing Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062,
`Paper 11 at 9−10 (PTAB Apr. 2, 2019) (precedential) (“Valve”)). Patent
`Owner contends that “[a]s a result of copying, Petitioner[] all but stepped
`into the shoes of Intel” in the Intel IPR, and, therefore, Petitioner and Intel
`“retain common interest, vis-à-vis the parallel underlying district court
`litigation[s],” where Patent Owner accuses Petitioner and Intel of infringing
`claims 2–4 of the ’444 patent. Id. at 16.
`We do not find that this factor favors exercising our discretion to deny
`institution. First, Petitioner did not previously file a petition directed to the
`same claims of the same patent. Second, we find Valve distinguishable on
`its facts.
`In Valve, the Board stated that “our application of the General Plastic
`factors is not limited solely to instances where multiple petitions are filed by
`the same petitioner. Rather, when different petitioners challenge the same
`patent, we consider any relationship between those petitioners when
`
`19
`
`
`
`IPR2021-00990
`Patent 7,110,444 B1
`
`weighing the General Plastic factors.” Valve at 2. In particular, “Valve and
`HTC were co-defendants in the District Court litigation and were accused of
`infringing the . . . [same] patent based on the same product, namely HTC’s
`VIVE devices that incorporate technology licensed from Valve.” Id. at 9–10
`(citations omitted). Also, the two petitions challenged the same claims. Id.
`at 9. In light of those facts, the Board determined that “[t]he complete
`overlap in the challenged claims and the significant relationship between
`Valve and HTC favor denying institution.” Id. at 10.
`Unlike the facts in Valve, even though there is some overlap between
`the Intel petition and the instant Petition, the petitions do not challenge the
`same claims. The instant Petition challenges claims 2–4 of the ’444 patent,
`whereas Intel’s petition in the Intel IPR challenges claims 1, 3, and 5. Thus,
`only one claim—claim 3—overlaps between the two petitions. Second, the
`only alleged relationship between Petitioner and Intel is that each is accused
`of infringing claims of the ’444 patent and, thus, each has a common interest
`in invalidating the asserted claims. That “relationship,” if we can even call it
`a relationship, is tenuous at best and is nothing remotely close to the
`customer/supplier relationship that the Board found “significant” in Valve. 13
`Further, whether Petitioner copied portions of Intel’s prior petition does not
`indicate a relationship exists between them as Intel’s petition is publicly
`available.
`Accordingly, based on the evidence of record, we find that this factor
`weighs against the exercise of discretion to deny institution.
`
`
`13 These critical differences, most notably the lack of a significant
`relationship, between Petitioner and Intel distinguish Valve not on just this
`one factor, but rather each of the factors as discussed below.
`
`20
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`
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`IPR2021-00990
`Patent 7,110,444 B1
`
`
`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
`Patent Owner implicitly recognizes that this factor does not apply on
`its face to the facts of this case, but nonetheless argues that Petitioner knew
`or should have known about the prior art asserted here “earl[ier] than the
`filing of the instant Petition.” Prelim. Resp. 17.
`Patent Owner’s argument is unavailing. As discussed above, the
`instant Petition is Petitioner’s first petition challenging the ’444 patent, not
`the second. And, unlike Valve, Petitioner does not have a significant
`relationship with Intel. Therefore, the facts here are distinguishable from
`those underlying the decisions in General Plastic and Valve. See Sony
`Mobile Commc’ns AB v. Ancora Techs., Inc., IPR2021-00663, Paper 17 at
`12 (PTAB June 10, 2021) (“Sony”) (finding that this General Plastic factor
`weighed strongly in favor of institution where a second petition was filed by
`second petitioner without any significant relationship to the first petitioner).
`As the Board explained in Sony, “[t]his factor is based on whether the
`petitioner knew of the prior art asserted in the second petition at the time of
`filing of the first petition.” Id. (citing General Plastic at 16).
`Accordingly, we find that this
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