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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`Petitioner,
`
`
`
`v.
`
`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2022-01248
`Patent 8,842,653
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`TABLE OF CONTENTS
`
`Case IPR2022-01248
`Patent 8,842,653
`
`
`Page
`
`I.
`
`INTRODUCTION ........................................................................................ 1
`
`II.
`
`THE PETITION SHOULD BE DENIED FOR PETITIONER’S
`FAILURE TO DISCLOSE OR APPLY ITS DISTRICT COURT
`CLAIM CONSTRUCTIONS (ALL CLAIMS, ALL GROUNDS). ......... 4
`
`A. Petitioner’s District Court And IPR Claim Construction Positions
`Are Inconsistent And Petitioner Fails To Show The Proposed
`District Court Constructions Are Met. .................................................. 5
`
`B.
`
`37 C.F.R. § 42.100(b) Was Intended To Preclude A Petitioner
`From Taking Inconsistent Claim Constructions. ................................ 10
`
`III.
`
`PETITIONER FAILS TO SHOW OBVIOUSNESS OVER ITS
`COMBINATIONS (ALL CLAIMS, ALL GROUNDS). ........................17
`
`A. Petitioner Fails To Prove Its Combinations Disclose Or Render
`Obvious “Multiplexed” “Signals” (Claims 1, 27; Grounds 1B,
`1D). ...................................................................................................... 18
`
`1.
`
`2.
`
`3.
`
`Petitioner Misstates Yegoshin’s Teachings And Fails To
`Substantiate The Alleged Motivation To Combine. ................. 21
`
`Petitioner Fails To Show That Bernard Teaches
`“Multiplexed” “Signals” Under Either Its Own Or Patent
`Owner’s Proposed District Court Claim Constructions............ 27
`
`Petitioner Fails To Prove That The POSITA Would Be
`Motivated To Combine Yegoshin And Bernard As
`Proposed. ................................................................................... 33
`
`B. The Petition Fails To Prove That Its Combinations Disclose Or
`Render Obvious “Combin[ing] The Data Paths Into A Single
`Transmission Interface To One Or More Applications” (Claim 17;
`Grounds 1C). ....................................................................................... 43
`
`i
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`C.
`
`Petitioner Fails To Prove Its Combinations Disclose Or Render
`Obvious “The First Wireless Component Is Accessible On A First
`IP Address And The Second Wireless Transmit And Receive
`Component Is Accessible On A Second IP Address” Or “A
`Plurality Of IP Enabled Interfaces” (Claims 1, 14; Grounds 1A,
`1B, 1C). ............................................................................................... 44
`
`1.
`
`2.
`
`Petitioner Fails To Explain How The POSITA Would
`Associate A Second IP Address With Yegoshin’s Phone. ....... 46
`
`The Combination As Proposed Would Not Meet The
`Claims Because Only Yegoshin’s Second (IP/LAN)
`Communication Interface Would Be Accessible On The IP
`Addresses. ................................................................................. 50
`
`D. The Petition Fails To Present A Rationale For The POSITA To
`Combine All The References Together To Meet The Claims. ........... 54
`
`IV. CONCLUSION ...........................................................................................63
`
`ii
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`
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`TABLE OF AUTHORITIES
`
`Case IPR2022-01248
`Patent 8,842,653
`
`
`Page(s)
`
`COURT DECISIONS
`
`In re Anova Hearing Labs, Inc.,
`809 Fed. App’x. 840 (Fed Cir. 2020) .................................................................55
`
`ATD Corp. v. Lydall, Inc.,
`159 F.3d 534 (Fed. Cir. 1998) ............................................................................42
`
`Cheese Sys. v. Tetra Pak Cheese & Powder Sys.,
`725 F.3d 1341 (Fed. Cir. 2013) ................................................................... 42, 62
`
`In re DataTreasury Corp.,
`669 F. App’x 574 (Fed. Cir. 2016) .....................................................................59
`
`Ecolochem, Inc. v. S. Cal. Edison Co.,
`227 F.3d 1361 (Fed. Cir. 2000) ..........................................................................42
`
`Fid. Fed. Sav. & Loan Ass’n v. de la Cuesta,
`458 U.S. 141 (1982) ............................................................................................14
`
`Gen. Elec. Co. v. Raytheon Techs. Corp.,
`983 F.3d 1334 (Fed. Cir. 2020) ..........................................................................55
`
`Halo v. Yale Health Plan,
`819 F.3d 42 (2nd Cir. 2016) ...............................................................................14
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................23
`
`Kim v. ConAgra Foods, Inc.,
`465 F.3d 1312 (Fed. Cir. 2006) ............................................................................ 8
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................23
`
`iii
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`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ..........................................................................23
`
`In re Medicis Pharm. Corp.,
`356 F. App’x 411 (Fed. Cir. 2009) .....................................................................59
`
`Monarch Knitting Mach. Corp. v. Sulzer Morat Gmbh,
`139 F.3d 877 (Fed. Cir. 1998) ............................................................................42
`
`Prime Datum, Inc. v. Baldor Elec. Co.,
`670 Fed. App’x. 702 (Fed. Cir. 2016) ................................................................57
`
`Ruiz v. A.B. Chance Co.,
`357 F.3d 1270 (Fed. Cir. 2004) ................................................................... 42, 63
`
`In re Schweickert,
`676 F. App’x 988 (Fed. Cir. 2017) .....................................................................60
`
`
`
`AGENCY DECISIONS
`
`Baldor Elec. Co. v. Prime Datum, Inc.,
`Appeal 2014-001464, Inter Partes Reexam. 95/002,286,
`Decision On Appeal (PTAB June 29, 2015) ......................................................57
`
`Belvac Prod. Mach., Inc. v. Crown Packaging Tech.,
`IPR2019-01076, Paper 9 (Oct. 29, 2019) ...........................................................23
`
`Carefusion Corp. v. Baxter Int’l, Inc.,
`IPR2016-01456, Paper 9 (Feb. 6, 2017) .............................................................11
`
`Ex Parte Evans,
`2017 Pat. App. LEXIS 7272 (PTAB Aug. 1, 2017) ...........................................60
`
`Ford Motor Co. v. Mass. Inst. Tech.,
`IPR2020-00010, Paper 9 (Mar. 26, 2020) ..........................................................16
`
`Google Inc. v. Koninklijke Philips N.V.,
`IPR2017-00409, Paper 10 (June 5, 2017) ...........................................................24
`
`iv
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`Hologic, Inc., v. Enzo Life Sciences, Inc.,
`IPR2018-00019, Paper 17 (Apr. 18, 2018) .........................................................11
`
`KioSoft Tech. LLC v. PayRange Inc.,
`CBM2020-00026, Paper 11 (Mar. 22, 2021) ............................................... 15, 16
`
`Ex Parte Orbotech LT Solar, LLC,
`2012 Pat. App. LEXIS 2784 (BPAI May 31, 2012) ...........................................60
`
`Orthopediatrics Corp. v. K2M Inc.,
`IPR2018-01546, Paper 10 (Feb. 14, 2019) .................................................. 15, 17
`
`Parsons Xtreme Golf, LLC v. Taylor Made Golf Co., Inc.,
`IPR2018-00518, Paper 14 (July 18, 2018) .........................................................48
`
`RPX Corp. et al. v. Parity Networks, LLC,
`IPR2018-00097, Paper 7 (Apr. 24, 2018) ...........................................................48
`
`Samsung Elecs. Co., Ltd. v. Ancora Techs., Inc.,
`IPR2020-01184, Paper 11 (Jan. 5, 2021) ............................................................16
`
`Toyota Motor Corp. v. Blitzsafe Tex., LLC,
`IPR2016-00422, Paper 12 (July 6, 2016) ...........................................................11
`
`
`
`REGULATIONS
`
`1 C.F.R. § 18.12 ................................................................................................ 12, 13
`
`37 C.F.R. § 42.100(b) ............................................................................................4, 8
`
`37 C.F.R. § 42.104(b)(3) ......................................................................................1, 10
`
`37 C.F.R. § 42.104(b)(4) ......................................................................................1, 10
`
`37 C.F.R. § 42.65 .....................................................................................................24
`
`
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`v
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`OTHER AUTHORITIES
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`83 Fed. Reg. 51,340 (Oct. 11, 2018) ........................................................... 13, 14, 28
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`EXHIBIT LIST
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`2001
`
`Reserved
`
`2002
`
`Declaration of Professor Todor V. Cooklev, Ph.D.
`
`2003
`
`2004
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`2005
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`2006
`
`2007
`
`2008
`
`2009
`
`Smart Mobile Technologies, LLC v. Apple Inc., Smart Mobile
`Technologies, LLC v. Samsung Electronics Co., Ltd. et al., Nos.
`6:21-cv-00603 and 6:21-cv-00701, Defendants’ Opening Claim
`Construction Brief (June 8, 2022) [Defendants’ Opening Claim
`Construction Brief]
`
`Smart Mobile Technologies, LLC v. Apple Inc., Smart Mobile
`Technologies, LLC v. Samsung Electronics Co., Ltd. et al., Nos.
`6:21-cv-00603 and 6:21-cv-00701, Defendants’ Opening Claim
`Construction Brief – Exhibit 1 (June 8, 2022) [Defendants’ Opening
`Claim Construction Brief – Exhibit 1]
`
`Kevin M. Stack, Preambles as Guidance, 84 GEO. WASH. L. REV.
`1252 (2016) (http://www.gwlr.org/wp-content/uploads/2016/09/84-
`Geo.-Wash.-L.-Rev.-1252.pdf) [Stack]
`
`ElectronicsTutorials, The Multiplexer, WWW.ELECTRONICS-
`TUTORIALS.WS, https://www.electronics-
`tutorials.ws/combination/comb_2.html (last visited Oct. 26, 2022)
`[Electronics Tutorial]
`
`TexasInstruments, 74HC153 Data Sheet, Dec. 1982, revised Feb.
`2022, WWW.TI.COM, https://www.ti.com/lit/gpn/sn74hc153
`[74HC153 Data Sheet]
`
`Lee Stanton, What is the Difference Between a Landline and a
`Mobile Phone Number?, WWW.ALPHR.COM, Feb. 22, 2022,
`https://www.alphr.com/difference-landline-mobile-phone-number/
`[Alphr]
`
`FOCUS LCDs, Serial Vs. Parallel, LCD RESOURCES,
`https://focuslcds.com/serial-vs-parallel/ (last visited Oct. 19, 2022)
`[LCD Resources]
`
`vii
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`2010
`
`2011
`
`2012
`
`2013
`
`Techopedia, Serial Interface, WWW.TECHOPEDIA.COM, Nov. 4, 2014,
`https://www.techopedia.com/definition/9312/serial-interface
`[Techopedia]
`
`Excerpts from The Authoritative Dictionary of IEEE Standards
`Terms, Seventh Edition (2000) [Dictionary of IEEE Standards
`Terms]
`
`Jonathan Valvano et al., Chapter 11: Serial Interfacing, EMBEDDED
`SYSTEMS – SHAPE THE WORLD,
`https://users.ece.utexas.edu/~valvano/Volume1/E-
`Book/C11_SerialInterface.htm (last visited Oct. 20, 2022) [Valvano]
`
`Steve Goldband, Input and output for microprocessors, Behavior
`Research Methods & Instrumentation, 1978, Vol. 10, No. 2, pp.
`249-253 [Goldband]
`
`2014
`
`Ex parte Orbotech LT Solar, LLC, 2012 Pat. App. LEXIS 2784
`(BPAI May 31, 2012)
`
`2015
`
`Ex parte Evans, 2017 Pat. App. LEXIS 386 (PTAB Aug. 1, 2017)
`
`viii
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`I.
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`INTRODUCTION
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`The Petition should be denied as it fails to demonstrate a reasonable
`
`likelihood of prevailing as to at least one of the challenged claims. Indeed, the
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`Petition is largely premised on misinterpretations of the references’ clear teachings,
`
`and frequently ignores disclosures that contradict Petitioner’s interpretations of the
`
`references’ teachings. As this response will explain, the Petition’s flaws mean that
`
`it fails to show a reasonable likelihood that any of its proposed grounds would
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`succeed at a trial for several different reasons.
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`Though the Office in this proceeding, and the courts in infringement actions,
`
`follow precisely the same claim construction standard, Petitioner fails to even
`
`mention, much less apply, any of the claim constructions it currently insists apply
`
`in the parallel district court proceeding between the parties involving Petitioner’s
`
`complained-of infringement of the challenged patent. Under the rules of this IPR
`
`proceeding, the Petition must identify the Petitioner’s relied-upon claim
`
`constructions and specify where each element of the construed claim is found in
`
`the prior art of record. 37 C.F.R. §§ 42.104(b)(3)-(4). By neglecting to even
`
`mention, let alone adequately address, its district court constructions, Petitioner
`
`fails to meet its burdens under these rules. Notably, a significant purpose behind
`
`the Office’s shift to the district court claim construction standard was, and is, to
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`preclude petitioners from taking inconsistent positions in different forums. As
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`1
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`recent Board decisions have found, Petitioner’s inconsistent and unreconciled
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`positions are reason enough to deny institution. This is particularly true where, as
`
`here, the Petition does not even attempt to show that the Petitioner’s
`
`simultaneously-asserted district court constructions are met. See Section II.
`
`Even aside from those inconsistencies, the Petition further fails to show a
`
`reasonable likelihood, even on its own terms, that its combinations disclose or
`
`render obvious “multiplexed” “signals,” as required by claims 1 and 27.
`
`Petitioner’s arguments are premised on misunderstandings of both Yegoshin and
`
`Bernard’s disclosures. Petitioner fails to substantiate its proffered motivation to
`
`combine, which is premised on Yegoshin’s alleged teaching of “simultaneously”
`
`receiving calls via cellular and IP communication that is, in fact, not taught in
`
`Yegoshin. Furthermore, Petitioner also fails to demonstrate that Bernard teaches
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`“multiplex[ing]” under Petitioner’s own district court construction. And moreover,
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`Petitioner’s proposed motivations to combine Yegoshin and Bernard are self-
`
`evidently based on hindsight, which cannot form a basis for institution. See
`
`Section III.A.
`
`As for independent claim 17, the Petition also fails to show a reasonable
`
`likelihood that its proposed combinations teach “combin[ing] the data paths into a
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`single transmission interface to one or more applications” as recited by the claim.
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`Petitioner refers back to its arguments for “multiplexed” “signals” in its discussion
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`of this limitation. But Petitioner’s arguments fail for the same reasons as in
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`Section III.A as described above. See Section III.B.
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`Furthermore, Petitioner fails to show a reasonable likelihood that its
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`combinations teach “the first wireless component is accessible on a first IP address
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`and the second wireless transmit and receive component is accessible on a second
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`IP address” or that the mobile device “maintains multiple IP addresses,” as
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`required by claim 14, or “a plurality of IP enabled interfaces,” as required by claim
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`1. Petitioner fails to show that the POSITA would be motivated to add a second IP
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`address to Yegoshin’s phone. Moreover, even if, arguendo, the POSITA were
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`motivated to do such a thing, Yegoshin is clear that both IP addresses would only
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`be used to access one of Yegoshin’s alleged wireless components. Once again, the
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`combination, even as proposed, simply fails to meet the claims. See Section III.C.
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`Finally, although Petitioner relies on combinations of up to five references,
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`the Petition fails to allege a rationale to combine all the references together.
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`Instead, Petitioner only substantively alleges rationales only for sub-combinations
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`of the full combination—that individual references would be combined one by one
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`with Yegoshin, for example—never addressing any reason to make the entire five-
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`reference combination as a whole. See Section III.D.
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`In view of the legal, evidentiary, and word count restrictions upon
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`preliminary responses, Patent Owner is presenting herein only a subset of the
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`3
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`reasons the Petition’s grounds fail to show that the issued claims of the Patent are
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`obvious. These reasons, however, should be more than sufficient to show that the
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`Petition should be denied.
`
`II. THE PETITION SHOULD BE DENIED FOR PETITIONER’S
`FAILURE TO DISCLOSE OR APPLY ITS DISTRICT COURT
`CLAIM CONSTRUCTIONS (ALL CLAIMS, ALL GROUNDS).
`
`Petitioner challenges the ’653’s validity both here and in Smart Mobile
`
`Technologies LLC v. Apple Inc., No. 6:21-cv-00603 (W.D. Tex.) and Smart Mobile
`
`Technologies LLC v. Samsung Electronics Co. Ltd. et al., No. 6:21-cv-00701
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`(W.D. Tex.) (collectively, “District Court Action”). The very same claim
`
`construction standard pertains in both proceedings. 37 C.F.R. § 42.100(b). In the
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`District Court Action, Petitioner contends that multiple terms require construction.
`
`Here, however, Petitioner neither mentions nor addresses its district court
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`constructions. See Section II.A, infra.
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`Petitioner’s failure to address the inconsistency in its positions contributes to
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`its failure to meet its burdens in this proceeding. Even prior to the Office’s shift to
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`use of the same claim construction standard as in district courts, many Board
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`panels found that a petitioner could not take inconsistent positions before the
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`PTAB as compared with a district court action. The question of whether a
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`Petitioner could take conflicting claim construction positions, however, was
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`resolved by the Office in connection with the rulemaking. In its formal responses
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`4
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`to public comments, the Office made clear that the new, aligned claim construction
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`standard was intended to promote consistency and, in significant part, to prevent a
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`petitioner from taking inconsistent claim construction positions in the district court
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`and before the Board. See Section II.B, infra. By proffering inconsistent claim
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`construction positions, Petitioner has failed to comply with the Office’s rules
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`concerning claim construction and has, consequently, failed to demonstrate a
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`reasonable likelihood of success as to any of the challenged claims.
`
`A.
`
`Petitioner’s District Court And IPR Claim Construction Positions
`Are Inconsistent And Petitioner Fails To Show The Proposed
`District Court Constructions Are Met.
`
`Here, Petitioner submits that “no formal claim constructions are necessary in
`
`this proceeding” (Pet., 2) and alleges that “[f]or this petition, Petitioner applies
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`prior art in a manner consistent with Patent Owner’s allegations of infringement
`
`before the district court.” Id., 3 n.1. A month before the Petition was filed,
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`however, Petitioner proffered constructions for several terms in the District Court
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`Action that it insists are their legally correct constructions:
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`Petitioner’s Irreconcilable Claim Constructions
`Term
`IPR Position
`District Court Position
`“multiplex /
`No construction necessary
`“Plain and ordinary
`multiplexes /
`meaning, which is ‘to
`multiplexed /
`interleave or
`multiplexing”
`simultaneously transmit
`two or more messages
`on a single
`communications
`channel.’”
`“Plain and ordinary
`meaning, which is
`‘actually programmed
`to’”
`Indefinite
`
`No construction necessary
`
`“is configured to”
`
`“wherein a
`transmission interface
`is created and wherein
`said transmission
`interface uses a
`plurality of IP enabled
`interfaces on the
`mobile device which
`utilize the plurality of
`wireless transmit and
`receive components on
`the mobile device to
`enable a single
`interface comprised of
`multiplexed signals
`from the plurality of
`wireless transmit and
`receive components”
`
`No construction necessary
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`No construction necessary
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`Indefinite
`
`“wherein the first
`wireless transmit and
`receive component is
`enabled to
`communicate using one
`or more antennas
`simultaneously/
`wherein the first
`wireless transmit and
`receive unit is enabled
`to communicate using
`one or more antennas
`simultaneously”
`“ports”
`
`No construction necessary
`
`“application”
`
`No construction necessary
`
`“interface”
`
`No construction necessary
`
`“Plain and ordinary
`meaning, which is a jack
`or socket that a cable
`connector plugs into”
`“Plain and ordinary
`meaning, which is a
`software program
`designed to assist in the
`performance of a
`specific task”
`“Plain and ordinary
`meaning, which is ‘a
`shared electrical or
`mechanical boundary
`between two hardware
`devices.’”
`
`
`
`Compare Pet., 2 with Ex. 2003 [Defendants’ Opening Claim Construction Brief] 7,
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`10, 13, 17, 23, 33, 37. The Petition neither mentions these constructions, nor
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`attempts to justify its inconsistency with them.
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`To be sure, mustering such a justification would appear to be impossible.
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`The same claim construction standard applies in both forums. 37 C.F.R.
`
`§ 42.100(b) (“In an inter partes review proceeding, a claim ... shall be construed
`
`using the same claim construction standard that would be used to construe the
`
`claim in a civil action under 35 U.S.C. 282(b) ...”). However, no matter how much
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`Petitioner may wish to enjoy the benefit of one construction for purposes of
`
`infringement and another, different construction for validity, that approach is
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`inconsistent with the rules, and even the most rudimentary claim construction
`
`principles. Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1324 (Fed. Cir. 2006)
`
`(“The same claim construction governs for validity determinations as for
`
`infringement determinations.”).
`
`Petitioner’s omission of its claim construction positions also demonstrates a
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`failure of proof on the Petition’s part. Nothing suggests that Petitioner’s district
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`court constructions are met by the proposed grounds in this case, and the Petition
`
`offers no reason to believe that they are met. For example, as further explained
`
`below, Petitioner argues that its combinations render obvious “multiplexed”
`
`signals because Bernard teaches “multiplexing features.” Petitioner, however, fails
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`to show how its combination discloses or renders obvious this limitation under its
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`district court construction which requires signals to be “interleave[d] or
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`simultaneously transmit[ted].” Ex. 2003 [Defendants’ Opening Claim
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`8
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`Construction Brief] 37. Bernard’s “multiplexor” is a data selector, which neither
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`interleaves nor simultaneously transmits signals, and clearly does not meet the
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`“multiplexed” features of the claimed invention. See Section III.A.2, infra.
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`Significantly, in the District Court Action, Petitioner contends that limitation
`
`1[j]1 is indefinite. In fact, Petitioner devoted four pages of its claim construction
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`brief to this point, asserting four “points of ambiguity” that purportedly render the
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`limitation indefinite. Ex. 2003 [Defendants’ Opening Claim Construction Brief]
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`10-13. It also submitted an expert declaration, which expands on this argument
`
`and asserts categorically that “a POSITA would not be reasonably certain of the
`
`scope of claims containing the identified limitation.” Ex. 2004 [Defendants’
`
`Opening Claim Construction Brief – Exhibit 1] ¶ 80. Yet here, Petitioner flip-
`
`flops—and asserts “no formal claim constructions are necessary in this
`
`proceeding.” Pet., 2. And Petitioner’s expert in this IPR proceeding recites the
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`“ordinary and customary meaning” standard, but fails to offer any claim
`
`
`1 “wherein a transmission interface is created and wherein said transmission
`
`interface uses a plurality of IP enabled interfaces on the mobile device which
`
`utilize the plurality of wireless transmit and receive components on the mobile
`
`device to enable a single interface comprised of multiplexed signals from the
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`plurality of wireless transmit and receive components”
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`construction position. Ex. 1003 [Jensen Decl.] ¶¶ 30. This is particularly
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`significant given that Petitioner’s only argument here that this limitation is met
`
`requires the POSITA to combine four references in order to purportedly render
`
`limitation 1[j] obvious—an argument spanning over thirteen convoluted pages of
`
`the Petition. Pet., 30-45. Similarly, Petitioner similarly contends in District Court
`
`that limitation 14[h]2 is indefinite, yet here, conversely, Petitioner argues that the
`
`limitation is taught by Yegoshin. Id., 16. In other words, Petitioner presents
`
`arguments and testimony here that these limitations are allegedly, for complicated
`
`reasons, obvious, yet presents arguments and testimony in the District Court
`
`Action that they are indefinite. And it fails to even attempt to address the
`
`inconsistency.
`
`B.
`
`37 C.F.R. § 42.100(b) Was Intended To Preclude A Petitioner
`From Taking Inconsistent Claim Constructions.
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`The Board’s rules require Petitioner to set forth in the Petition “how the
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`challenged claim is to be construed” and “how the construed claim is
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`unpatentable.” 37 C.F.R. § 42.104 (b)(3)-(4). Even prior to the Office’s
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`rulemaking in connection with 37 C.F.R. § 42.100(b), many IPR decisions found
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`2 “wherein the first wireless transmit and receive component is enabled to
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`communicate using one or more antennas simultaneously”.
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`that a petitioner must provide the constructions it believes “[are] the correct
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`construction[s] under applicable law” and “take ownership” of those constructions.
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`Toyota Motor Corp. v. Blitzsafe Tex., LLC, IPR2016-00422, Paper 12, 26 (July 6,
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`2016) (“[t]he ‘construction’ referred to by 37 C.F.R. § 42.104(b)(3) is the
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`construction proposed by the Petitioner, one that Petitioner believes is the correct
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`construction under applicable law and should apply in the involved
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`proceeding.…Petitioner does not take ownership of the district court’s
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`constructions by indicating, in some way, that it agrees with, proposes, or adopts
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`the construction of this district court.”) (denying petition); see also Carefusion
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`Corp. v. Baxter Int’l, Inc., IPR2016-01456, Paper 9, 7 (Feb. 6, 2017) (“Petitioner
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`states that it relies on constructions advanced by Patent Owner in the related
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`litigation; remarkably, however, Petitioner also states that it does not agree that
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`those constructions are in fact correct.”) (denying petition); Hologic, Inc., v. Enzo
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`Life Sciences, Inc., IPR2018-00019, Paper 17, 9 (Apr. 18, 2018) (“… Petitioner
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`was free to advocate unpatentability under a claim construction it considered to
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`be correct. It did not do so. … petitioners should bring petitions for inter partes
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`review asserting unpatentability based on constructions that their petitions seek.”)
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`(denying petition).3
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`3 All emphasis added unless otherwise noted.
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`The legal requirement that claims should have the same construction in court
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`and in IPR is now expressly set forth in the rules. On October 11, 2018, after a
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`five month notice and comment rulemaking process, the Office issued a final rule
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`(i.e., § 42.100(b)) that aligned the claim construction standard for PTAB post-grant
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`proceedings, including IPRs, with the standard employed by district courts. The
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`Preamble to the final rule, was published in the Federal Register and set forth the
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`Office’s rationale for the new rule and how it should be interpreted. The rule’s
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`purpose was and is clear; to ensure fairness, consistency, and predictability in the
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`patent system. Significantly for our purposes, the Preamble repeatedly made clear
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`that the rule was intended to prevent petitioners from taking inconsistent positions
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`on claim construction.
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`The Preamble4 discusses the rationale for and effect of the new claim
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`construction rule. By applying the district court claim construction standard in
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`4 The Federal rules require that an “agency submitting a proposed or final
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`rule document for publication shall prepare a preamble which will inform the
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`reader, who is not an expert in the subject area, of the basis and purpose for the
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`rule or proposal.” 1 C.F.R. § 18.12(a). This preamble shall contain
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`“supplementary information” which may include “a discussion of the background
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`IPRs, the Office explained that its “goal is to implement a balanced approach,
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`providing greater predictability and certainty in the patent system.” 83 Fed. Reg.
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`51,342-51,343 (Oct. 11, 2018) (“Final Rulemaking”). Importantly, the Preamble
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`repeatedly confirms that a petitioner may not assert inconsistent claim construction
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`positions. In a comment and response section of the preamble entitled “fairness,”
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`the Office explained it “agrees with [] comments” that “harmonizing the claim
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`construction standards would prevent parties from taking inconsistent [claim
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`construction] positions.” Id., 51,345, 51,350. Furthermore, a patent challenger
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`“will [] be required to choose a single claim construction that best captures the true
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`meaning of the claim.” Id., 51,350. Similarly, in a section titled “consistency,” the
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`Office stated it agreed with comments that the rule change would “prevent[]
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`parties from taking inconsistent positions, such as a patent challenger arguing
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`for a broad scope in a PTAB proceeding (under BRI) and a narrow scope (under
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`Phillips) in district court to avoid a finding of infringement.” Id., 51,347-51,348.
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`Further driving home this point, the Office warned that “the possibility of differing
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`constructions for the same claim term is troubling, especially when claim
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`and major issues involved” and “a response to substantive public comments
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`received.” 1 C.F.R. § 18.12(b)-(c).
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`construction takes place at the same time in parallel district court proceedings and
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`USPTO proceedings.” Id., 51,342.
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`The Office’s contemporaneous guidance with the rule change, as part of the
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`deliberative notice and comment process, should be followed. The Office’s
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`Preamble in the rulemaking, for example, is the “most important form of guidance
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`about the meaning and application of regulations” and such preambles “have
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`undeniable importance to law and governance in the United States.” Ex. 2005
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`[Stack] 1255-1256. Preambles are entitled to considerable deference. Id., 1284
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`(“As a class, preambles provide the agency’s most detailed explanation and
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`reasoning in the exercise of its expertise and political judgment. … [A]s the
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`agency’s most carefully considered and vetted statements, preamble guidance is
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`entitled to greater deference or weight than other forms of guidance.”); Fid. Fed.
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`Sav. & Loan Ass’n v. de la Cuesta, 458 U.S. 141, 158 n.13 (1982) (“[W]e look to
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`the preamble . . . for the administrative construction of the regulation, to which
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`‘deference is . . . clearly in order.’”); Halo v. Yale Health Plan, 819 F.3d 42, 53
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`(2nd Cir. 2016) (“We conclude that the Department’s interpretation of its own
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`regulation as contained in the regulation’s preamble is entitled to substantial
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`deference …”).
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`In accord and significantly for our purposes, the Office has deferred to the
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`Preamble and precluded a petitioner from taking inconsistent claim constructions
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`in AIA proceedings and district court:
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`If we were to adopt Petitioner’s claim construction as presented in the
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`Petition, and if the district court were to adopt Petitioner’s claim
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`constructions as proposed there, the subsequent decisions issued in
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`reliance on
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`these
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`inconsistent claim constructions may
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`lack
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`‘uniformity’ between us and the district court and may undermine the
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`‘predictability’ of the…patent’s claim scope and the ‘integrity of the
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`patent system’ overall. Changes to the Claim Construction Standard
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`for Interpreting Claims in Trial Proceedings Before the Patent Trial and
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`Appeal Board, 83 Fed. Reg. at 51,342. Petitioner has not provided us
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`with any arguments as to why such problems are not present here, much
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`less provided any reason behind its inconsistent claim constructions in
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`general.
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`KioSoft Tech. LLC v. PayRange Inc., CBM2020-00026, Paper 11, 17 (Mar. 22,
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`2
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