Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Entered: May 4, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`
`
`IPR2023-00131
`Patent 7,916,781 B2
`
`
`Before KEN B. BARRETT, JOHN A. HUDALLA, and AMBER L. HAGY,
`Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`Samsung Electronics Co., Ltd. (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting an inter partes review of claims 3–18 and 22 (“the
`challenged claims”) of U.S. Patent No. 7,916,781 B2 (Ex. 1001, “the
`’781 patent”). Petitioner filed a Declaration of Matthew C. Valenti, Ph.D.
`
`

`

`IPR2023-00131
`Patent 7,916,781 B2
`(Ex. 1002) with its Petition. California Institute of Technology (“Patent
`Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”). With our
`authorization, Petitioner filed a Preliminary Reply (Paper 8, “Pet. Reply”)
`and Patent Owner filed a Preliminary Sur-reply (Paper 9, “PO Sur-reply”)
`directed to the issue of discretionary denial under 35 U.S.C. § 314.
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under
`35 U.S.C. § 314(a), we may not authorize an inter partes review unless the
`information in the petition and the 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.” For the reasons that follow,
`we do not institute an inter partes review.
`
`
`
`A.
`
`I. BACKGROUND
`Real Parties-in-Interest
`Petitioner identifies Samsung Electronics Co., Ltd., Samsung
`Electronics America, Inc., as the real parties-in-interest. Pet. 1. Patent
`Owner identifies California Institute of Technology as the real party-in-
`interest. Paper 5, 1.
`
`Related Matters
`As required by 37 C.F.R. § 42.8(b)(2), the parties identify the
`following related matters (Pet. 1–2; Paper 5, 1–2):
`Cal. Inst. of Tech. v. Samsung Elecs. Co., No. 2-21-cv-00446 (E.D.
`Tex. filed Dec. 3, 2021) (“the underlying litigation”);
`
`B.
`
`2
`
`

`

`IPR2023-00131
`Patent 7,916,781 B2
`Cal. Inst. of Tech. v. Microsoft Corp., No. 6-21-cv-00276 (W.D. Tex.
`filed Mar. 19, 2021);
`Cal. Inst. of Tech. v. HP Inc. f/k/a/ Hewlett-Packard Co., No. 6-20-cv-
`01041 (W.D. Tex. filed Nov. 11, 2020);
`Cal. Inst. of Tech. v. Dell Techs. Inc., No. 6-20-cv-01042 (W.D. Tex.
`filed Nov. 11, 2020);
`Cal. Inst. of Tech. v. Broadcom Ltd., No. 2:16-cv-03714 (C.D. Cal.
`filed May 26, 2016);
`Cal. Inst. of Tech. v. Hughes Commc’ns, Inc., No. 2:15-cv-01108
`(C.D. Cal. filed Feb. 17, 2015); and
`Cal. Inst. of Tech. v. Hughes Commc’ns, Inc., 2:13-cv-07245 (C.D.
`Cal. filed Oct. 1, 2013).
`The ’781 patent was previously the subject of three inter partes
`reviews identified by the parties (Pet. 2; Paper 5, 2–3): IPR2015-00059
`(“059 IPR”), IPR2017-00297 (“297 IPR”), and IPR2017-00423 (“423 IPR”).
`In the Final Written Decision from the 059 IPR, the Board determined that
`claims 1 and 2 of the ’781 patent are unpatentable as anticipated by a
`reference known as “Divsalar.” In the consolidated Final Written Decision
`for the 297 IPR and the 423 IPR, the Board determined that claims 19–21 of
`the ’781 patent are unpatentable as anticipated by a reference known as
`“Ping.” The Board also determined that claims 13–15, 18, and 22 of the
`’781 patent were not shown to be unpatentable over “Ping” and a reference
`known as “MacKay.” The Board additionally determined that claim 16 of
`the ’781 patent was not shown to be unpatentable over “Ping,” “MacKay,”
`and another reference known as “Coombes.” None of those references are at
`issue in this proceeding.
`
`3
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`

`IPR2023-00131
`Patent 7,916,781 B2
`Patent Owner also identifies the following prior inter partes review
`proceedings for patents related to the ’781 patent (Paper 5, 2–3): IPR2015-
`00060, IPR2015-00061, IPR2015-00067, IPR2015-00068, IPR2015-00081,
`IPR2017-00210, IPR2017-00211, IPR2017-00219, IPR2017-00700,
`IPR2017-00701, IPR2017-00702, IPR2017-00703, and IPR2017-00728.
`We additionally identify the following co-pending inter partes review
`proceedings between the parties: IPR2023-00130, IPR2023-00133, and
`IPR2023-00137.
`
`The ’781 Patent
`The ’781 patent describes the serial concatenation of interleaved
`convolutional codes forming turbo-like codes. Ex. 1001, code (54). It
`explains some of the prior art with reference to its Figure 1, reproduced
`below.
`
`C.
`
`Figure 1 is a schematic diagram of a prior “turbo code” system. Id. at 2:20–
`21. The ’781 patent specification describes Figure 1 as follows:
`
`
`
`4
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`

`IPR2023-00131
`Patent 7,916,781 B2
`A block of k information bits is input directly to a first
`coder 102. A k bit interleaver 106 also receives the k bits and
`interleaves them prior to applying them to a second coder 104.
`The second coder produces an output that has more bits than its
`input, that is, it is a coder with rate that is less than 1. The
`coders 102, 104 are typically recursive convolutional coders.
`
`Three different items are sent over the channel 150: the
`original k bits, first encoded bits 110, and second encoded
`bits 112. At the decoding end, two decoders are used: a first
`constituent decoder 160 and a second constituent decoder 162.
`Each receives both the original k bits, and one of the encoded
`portions 110, 112. Each decoder sends likelihood estimates of
`the decoded bits to the other decoders. The estimates are used
`to decode the uncoded information bits as corrupted by the
`noisy channel.
`Id. at 1:44–60.
`A coder 200, according to a first embodiment of the invention, is
`described with respect to Figure 2, reproduced below.
`
`Figure 2 of the ’781 patent is a schematic diagram of coder 200. Ex. 1001,
`2:39.
`
`
`
`The coder 200 may include an outer coder 202, an
`interleaver 204, and inner coder 206. . . . The outer coder 202
`receives the uncoded data [that] may be partitioned into blocks
`of fixed size, [e.g.] k bits. The outer coder may be an (n,k)
`binary linear block coder, where n>k. The coder accepts as
`
`5
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`

`IPR2023-00131
`Patent 7,916,781 B2
`input a block u of k data bits and produces an output block v of
`n data bits. The mathematical relationship between u and v is
`v=T0u, where T0 is an n×k matrix, and the rate[1] of the coder is
`k/n.
`
`The rate of the coder may be irregular, that is, the value of T0 is
`not constant, and may differ for sub-blocks of bits in the data
`block. In an embodiment, the outer coder 202 is a repeater that
`repeats the k bits in a block a number of times q to produce a
`block with n bits, where n=qk. Since the repeater has an
`irregular output, different bits in the block may be repeated a
`different number of times. For example, a fraction of the bits in
`the block may be repeated two times, a fraction of bits may be
`repeated three times, and the remainder of bits may be repeated
`four times. These fractions define a degree sequence or degree
`profile, of the code.
`
`The inner coder 206 may be a linear rate-1 coder, which means
`that the n-bit output block x can be written as x=TIw, where TI
`is a nonsingular n×n matrix. The inner coder 210 can have a
`rate that is close to 1, e.g., within 50%, more preferably 10%
`and perhaps even more preferably within 1% of 1.
`Id. at 2:40–3:2 (footnote added). Codes characterized by a regular repeat of
`message bits into a resulting codeword are referred to as “regular repeat,”
`whereas codes characterized by irregular repeat of message bits into a
`resulting codeword are referred to as “irregular repeat.” See id. at 2:54–60.
`The second (“inner”) encoder 206 performs an “accumulate” function. Id.
`at 3:3–5. Thus, the two-step encoding process illustrated in Figure 2,
`including a first encoding (“outer encoding”) followed by a second encoding
`(“inner encoding”), results in either a “regular repeat accumulate” (“RRA”)
`code or an “irregular repeat accumulate” (“IRA”) code, depending upon
`
`1 We understand that the “rate” of an encoder refers to the ratio of the
`number of input bits to the number of resulting encoded output bits related
`to those input bits.
`
`6
`
`

`

`IPR2023-00131
`Patent 7,916,781 B2
`whether the repetition in the first encoding is regular or irregular. See id.
`at 3:34–36, 4:46–49.
`Figure 4 of the ’781 patent is reproduced below.
`
`
`
`Figure 4 shows an alternative embodiment in which the first encoding is
`carried out by a low-density generator matrix. Ex. 1001, 3:62–64.
`Low-density generator matrix (LDGM)2 codes are a special class of low-
`density parity check codes that allow for less encoding and decoding
`complexity. LDGM codes are systematic linear codes generated by a
`“sparse” generator matrix. Id. at 3:65–66. No interleaver (as in the Figure 2
`embodiment) is required in the Figure 4 arrangement because the LDGM
`provides scrambling otherwise provided by the interleaver in the Figure 2
`embodiment. Id. at 4:1–3.
`
`Illustrative Claims
`Of the challenged claims, claim 13 is independent. Claims 3–12
`depend indirectly from non-challenged independent claim 1 via non-
`
`D.
`
`
`2 We understand that a “generator” matrix (typically referred to by “G”) is
`used to create (generate) codewords. A parity check matrix (typically
`referred to by “H”) is used to decode a received message.
`
`7
`
`

`

`IPR2023-00131
`Patent 7,916,781 B2
`challenged dependent claim 2; claims 14–18 depend directly or indirectly
`from independent claim 13; and claim 22 depends from non-challenged
`independent claim 21. Claim 3 is illustrative of the challenged claims.
`Given that claim 3 ultimately depends from claim 1 via claim 2, we
`reproduce claims 1–3 below:
`1.
`A method of encoding a signal, comprising:
`receiving a block of data in the signal to be encoded, the
`block of data including information bits;
`performing a first encoding operation on at least some of
`the information bits, the first encoding operation being a linear
`transform operation that generates L transformed bits; and
`performing a second encoding operation using the L
`transformed bits as an input, the second encoding operation
`including an accumulation operation in which the L
`transformed bits generated by the first encoding operation are
`accumulated, said second encoding operation producing at least
`a portion of a codeword, wherein L is two or more.
`
`2.
`
`The method of claim 1, further comprising:
`outputting the codeword, wherein the codeword
`comprises parity bits.
`
`The method of claim 2, wherein outputting the codeword
`3.
`comprises:
`outputting the parity bits; and
`outputting at least some of the information bits.
`Ex. 1001, 7:25–45.
`
`Prior Art
`Petitioner relies on the following prior art:
`U.S. Patent No. 6,029,264, filed Apr. 28, 1997, issued
`Feb. 22, 2000 (Ex. 1005, “Kobayashi”); and
`
`E.
`
`8
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`

`

`F.
`
`IPR2023-00131
`Patent 7,916,781 B2
`McEliece et al., “Turbo Decoding as an Instance of
`Pearl’s ‘Belief Propagation’ Algorithm,” IEEE Journal on
`Selected Areas in Communication, Vol. 16, No. 2 (Feb. 1998)
`(Ex. 1006, “McEliece”).
`
`The Asserted Grounds
`Petitioner challenges claims 3–18 and 22 of the ’781 patent based on
`the following grounds (Pet. 3):
`Claim(s) Challenged
`35 U.S.C. §
`10–14, 17, 18, 22
`102(e)3
`3–9, 15, 16, 21, 22
`103(a)
`5–9
`103(a)
`
`Reference(s)/Basis
`Kobayashi
`Kobayashi
`Kobayashi, McEliece
`
`
`
`II. ANALYSIS
`
`A.
`
`Legal Standards
`A claim is anticipated if a single prior art reference either expressly or
`inherently discloses every limitation of the claim. Orion IP, LLC v. Hyundai
`Motor Am., 605 F.3d 967, 975 (Fed. Cir. 2010). Although the elements must
`be arranged or combined in the same way as in the claim, “the reference
`need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not
`required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citing In re
`Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990)).
`
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103. Because the
`’781 patent claims priority to an application filed before March 16, 2013 (the
`effective date of the relevant amendments), the pre-AIA versions of §§ 102
`and 103 apply.
`
`9
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`

`

`IPR2023-00131
`Patent 7,916,781 B2
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`The question of obviousness is resolved on the basis of underlying factual
`determinations, including (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) where in evidence, so-called secondary
`considerations.4 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`We also recognize that prior art references must be “considered together
`with the knowledge of one of ordinary skill in the pertinent art.” In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d
`559, 562 (CCPA 1978)).
`
`Level of Ordinary Skill in the Art
`Citing testimony from Dr. Valenti, Petitioner contends a person of
`ordinary skill in the art “would have had a Ph.D. in mathematics, electrical
`or computer engineering, or computer science with an emphasis in signal
`processing, communications, or coding, or a master’s degree in the above
`areas with at least three years of work experience in the field at the time of
`the alleged invention.” Pet. 5 (citing Ex. 1002 ¶¶ 21–22). Patent Owner
`does not dispute Petitioner’s proposed level of ordinary skill in the art at this
`time.
`
`B.
`
`
`4 The present record does not include any evidence of secondary
`considerations of nonobviousness.
`
`10
`
`

`

`C.
`
`IPR2023-00131
`Patent 7,916,781 B2
`For purposes of this Decision, we adopt Petitioner’s definition of the
`level of ordinary skill in the art. On the present record, we are satisfied that
`this definition comports with the level of skill necessary to understand and
`implement the teachings of the ’781 patent and the asserted prior art.
`
`Claim Interpretation
`In an inter partes review, we construe each claim
`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), including construing the claim in accordance with
`the ordinary and customary meaning of such claim as
`understood by one of ordinary skill in the art and the
`prosecution history pertaining to the patent.
`37 C.F.R. § 42.100(b). Accordingly, our claim construction standard is the
`same as that of a district court. See id. Under the standard applied by
`district courts, claim terms are generally given their plain and ordinary
`meaning, as would have been understood by a person of ordinary skill in the
`art at the time of the invention and in the context of the entire patent
`disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)
`(en banc). “There are only two exceptions to this general rule: 1) when a
`patentee sets out a definition and acts as his own lexicographer, or 2) when
`the patentee disavows the full scope of a claim term either in the
`specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am.
`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
`Petitioner states that “no special constructions are necessary to assess
`whether the challenged claims are unpatentable over the asserted prior art.”
`Pet. 6 (citing Ex. 1002 ¶ 40). Patent Owner does not address claim
`construction in the preliminary record. For purposes of this Decision, we
`
`11
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`

`

`D.
`
`IPR2023-00131
`Patent 7,916,781 B2
`determine that no aspects of the challenged claims require explicit
`construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375
`(Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . .
`that are in controversy, and only to the extent necessary to resolve the
`controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999))).
`
`Patent Owner’s Arguments Regarding Discretionary Denial
`Our disposition of this case turns on the issue of discretionary denial.
`Patent Owner contends we should exercise our discretion to deny institution
`under 35 U.S.C. § 314(a). Prelim. Resp. 31–46; PO Sur-reply 1–3.
`Petitioner contends that we should not deny institution based on
`discretionary factors. Pet. 57–62; Pet. Reply 1–3.
`Institution of inter partes review is discretionary. SAS Inst. Inc. 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)); Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 273 (2016)
`(“[T]he agency’s decision to deny a petition is a matter committed to the
`Patent Office’s discretion.”); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d
`1356, 1367 (Fed. Cir. 2016) (“[T]he [Office] is permitted, but never
`compelled, to institute an [inter partes review] proceeding.”).
`In Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20,
`2020) (precedential) (“Fintiv”), the Board discussed potential applications of
`NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8
`(PTAB Sept. 12, 2018) (precedential) (“NHK”), as well as a number of other
`cases dealing with discretionary denial under § 314(a). Fintiv identifies a
`
`12
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`

`IPR2023-00131
`Patent 7,916,781 B2
`non-exclusive list of factors parties may consider addressing, particularly
`where there is a related, parallel district court action and whether such action
`provides any basis for discretionary denial. Fintiv, Paper 11 at 5–16. Those
`factors include:
`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.
`Id. at 5–6.
`Our analysis of the Fintiv factors is guided by the USPTO Director’s
`Memorandum issued on June 21, 2022, titled “Interim Procedure for
`Discretionary Denials in AIA Post Grant Proceedings with Parallel District
`Court Litigation” (“Interim Procedure”)5, which provides several
`clarifications to the application of the Fintiv factors when there is parallel
`litigation. Interim Procedure 2; see also CommScope Techs. LLC v. Dali
`Wireless, Inc., IPR2022-01242, Paper 23 (PTAB Feb. 27, 2023)
`(precedential) (“CommScope”) (holding that the Board should engage in the
`
`
`5 Available at https://www.uspto.gov/sites/default/files/documents/
`interim_proc_discretionary_denials_aia_parallel_district_court_litigation_
`memo_20220621_.pdf
`
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`IPR2023-00131
`Patent 7,916,781 B2
`compelling merits question only if Fintiv factors 1–5 favor discretionary
`denial).
`We now consider these factors to determine whether we should use
`our discretion to deny institution under 35 U.S.C. § 314(a). In evaluating the
`factors, we take a holistic view of whether efficiency and integrity of the
`system are best served by denying or instituting review. Fintiv, Paper 11
`at 6.
`
`
`
`Stay in the Underlying Litigation
`1.
`Under the first Fintiv factor, we consider “whether the court granted a
`stay or evidence exists that one may be granted if a proceeding is instituted.”
`Id. at 6. Patent Owner notes that Petitioner has already filed a motion for a
`stay in the underlying litigation, and the district court denied the motion.
`Prelim. Resp. 35 (citing Ex. 2002, 4–5). Petitioner argues that it is not
`precluded from filing another motion for a stay if we were to institute inter
`partes review. Pet. Reply 2.
`The district court has already denied a motion for a stay, and the
`reasoning in its decision on the motion indicates that the court is unlikely to
`grant a renewed motion. See Ex. 2002, 5–6 (finding that the advanced stage
`of the underlying litigation disfavors a stay and that a stay is unlikely to
`simplify the issues in the underlying litigation). Thus, we find that this
`factor weighs in favor of exercising authority to deny institution. See Fintiv,
`Paper 11 at 6–7.
`
`
`14
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`

`IPR2023-00131
`Patent 7,916,781 B2
`The Trial Date in the Underlying Litigation
`2.
`Under the second Fintiv factor, we consider the “proximity of the
`court’s trial date to the Board’s projected statutory deadline for a final
`written decision.” Fintiv, Paper 11 at 6. Trial in the underlying litigation is
`set to start on September 11, 2023. Pet. 59 (citing Ex. 1015, 1); Prelim.
`Resp. 36. Petitioner also notes that, under the time-to-trial statistics for the
`district in which the underlying litigation is pending, the trial would be
`expected to start on December 17, 2023. Pet. 59 (citing Ex. 1016, 35). Our
`anticipated one-year statutory deadline for issuing a final written decision in
`this case would be in May 2024.
`Regardless of whether we consider the scheduled trial date or the trial
`date expected based on time-to-trial statistics, the trial in the underlying
`litigation would commence several months before the expected date of our
`final written decision. Thus, we find that the second Fintiv factor favors
`exercising authority to deny institution.
`
`3.
`
`Investment by the Court and the Parties in the Underlying
`Litigation
`Under the third Fintiv factor, we consider the “investment in the
`parallel proceeding by the court and the parties” as of the time of the
`institution decision. Fintiv, Paper 11 at 6, 9–10. Both parties acknowledge
`that the court in the underlying litigation has already issued a claim
`construction order. Pet. Reply 1; PO Sur-reply 2; see also Ex. 1019 (order).
`In addition, Patent Owner contends that “[b]y the expected May institution
`decision date, substantial pretrial work related to validity will be complete:
`fact discovery will be closed, expert reports will be served, and all
`
`15
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`

`IPR2023-00131
`Patent 7,916,781 B2
`dispositive motions will be due within a month.” PO Sur-reply 1 (citing
`Ex. 1015, 3).
`Although Petitioner disputes the significance of claim construction to
`our consideration of this factor (see Pet. Reply 1), we find that the advanced
`stage of expert discovery is the most significant fact for our analysis. In
`particular, the scheduling order in the underlying litigation indicates that
`Petitioner should have already served its opening expert report on validity.
`Ex. 1015, 3. Given that the deadline for rebuttal expert reports is only days
`away (see id.), we also can safely assume that work pertaining to a rebuttal
`expert report on validity is well underway. We consider this work
`significant because it relates directly to the merits of the parties’ invalidity
`positions. See Sand Revolution II, LLC v. Continental Intermodal Group –
`Trucking LLC, IPR2019-01393, Paper 24 at 10–11 (PTAB June 16, 2020)
`(informative) (“Sand Revolution”).
`As part of this factor, we additionally consider whether Petitioner
`unreasonably delayed in filing the Petition in this case. See Fintiv, Paper 11
`at 11–12. Patent Owner argues that Petitioner waited approximately
`10 months after Patent Owner filed the underlying litigation before
`Petitioner filed the instant Petition.6 Prelim. Resp. 39–40. Petitioner argues
`that it filed the Petition “just seven months after being served with
`preliminary infringement contentions . . . , which identified the asserted
`
`
`6 We acknowledge that the timeliness of a petition is measured from the date
`on which a complaint alleging patent infringement is served. See 35 U.S.C.
`§ 315(b). In the underlying litigation, Petitioner waived the service
`requirement 17 days after the complaint was filed. See Underlying
`Litigation, ECF No. 9. The 17-day difference between filing and waiver of
`service does not impact our analysis.
`
`16
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`

`IPR2023-00131
`Patent 7,916,781 B2
`claims.” Pet. 60–61. Petitioner asserts this timing was reasonable given that
`Patent Owner “asserted four patents containing over 90 issued claims.” Id.
`at 61. Although Petitioner did file its Petition somewhat late in the statutory
`period and some months after receiving infringement contentions, we do not
`view this timing to be as significant as the advanced stage of case
`development in the underlying litigation regarding invalidity.
`Accordingly, on the whole, this factor weighs in favor of exercising
`our authority to deny institution.
`
`Overlap of the Issues
`4.
`Under the fourth Fintiv factor, we consider the “overlap between
`issues raised in the petition and in the parallel proceeding.” Fintiv, Paper 11
`at 6. Petitioner stipulates that, if we were to institute inter partes review, it
`would not “pursue invalidity challenges to the ’781 Patent in the parallel
`district court lawsuit that rely on any reference used in the grounds of the
`Petition (Kobayashi and McEliece).” Pet. Reply 1. Patent Owner argues
`that Petitioner can still put forth district court invalidity arguments based on
`references that are “integral to” the asserted grounds, including
`“Lin/Costello, Cheng, and MacKay.” PO Sur-reply 1; see also Prelim.
`Resp. 41–42 (similar argument).
`Petitioner’s stipulation is not as expansive as the stipulation discussed
`in Sotera Wireless Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 13
`(PTAB Dec. 1, 2020) (precedential) (“Sotera”), because Petitioner does not
`relinquish all grounds that it reasonably could have raised in this inter partes
`
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`Patent 7,916,781 B2
`review.7 Nevertheless, it is broader to some degree than the stipulation
`discussed in Sand Revolution because it precludes Petitioner from relying in
`the district court on any of the same references listed in the statement of the
`grounds in the Petition, and is not limited to only the same grounds. See
`Sand Revolution, Paper 24 at 11–12. We find that Petitioner’s stipulation
`mitigates some concerns of duplicative efforts between the district court and
`the Board. Notwithstanding, the fact that Petitioner’s grounds also rely on
`“Lin/Costello, Cheng, and MacKay,” which are not subject to Petitioner’s
`stipulation, diminishes the impact of Petitioner’s stipulation to some extent.
`Accordingly, we find that this factor weighs somewhat against
`exercising our discretion to deny institution.
`
`
`5. Whether Petitioner is Unrelated to the Defendant in the
`Underlying Litigation
`Under the fifth Fintiv factor, we consider “whether the petitioner and
`the defendant in the parallel proceeding are the same party.” Fintiv,
`Paper 11 at 6. We determine that the fifth Fintiv factor favors exercising our
`discretion to deny institution because Petitioner, Samsung Electronics Co.,
`Ltd., is a defendant in the underlying litigation. See Prelim. Resp. 42;
`Sotera, Paper 12 at 19.
`
`Summary Regarding Fintiv Factors 1–5
`6.
`In summary, factors 1–3 and 5 weigh in favor of exercising our
`discretion to deny institution and factor 4 weighs somewhat against
`
`
`7 As such, Petitioner does not qualify for the treatment described in the
`Interim Procedure for Sotera stipulations. See Interim Procedure at 7–8.
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`Patent 7,916,781 B2
`exercising our discretion to deny institution. Considering these factors as a
`whole, we determine that these factors weigh in favor of exercising our
`discretion to deny institution.
`
`Other Circumstances Including the Merits
`7.
`Under the sixth Fintiv factor, we consider “other circumstances that
`impact the Board’s exercise of discretion, including the merits.” Fintiv,
`Paper 11 at 6.
`First, we turn to the merits of the Petition. Because we conclude that
`Fintiv factors 1–5 in this proceeding favor discretionary denial, we consider
`whether the Petition presents a challenge with compelling merits. Interim
`Procedure 4–5. That is, we consider whether the challenges’ “evidence, if
`unrebutted in trial, would plainly lead to a conclusion that one or more
`claims are unpatentable by a preponderance of the evidence.” Id. at 4.
`“A challenge can only ‘plainly lead to a conclusion that one or more claims
`are unpatentable’ if it is highly likely that the petitioner would prevail with
`respect to at least one challenged claim.” OpenSky Indus., LLC v. VLSI
`Tech. LLC, IPR2021-01064, Paper 102 at 49 (PTAB Oct. 4, 2022)
`(precedential) (quoting Interim Procedure at 4). The “compelling merits”
`standard is a standard higher than that required for institution. CommScope,
`Paper 23 at 3.
`Petitioner relies upon its analysis for non-challenged independent
`claim 1 in the Kobayashi anticipation ground with respect to all challenged
`claims and grounds in this case (see, e.g., Pet. 13–17, 21–22, 27 (relying on
`the same analysis from claim 1 regarding the recited “codeword”)), so we
`now consider the merits of Petitioner’s analysis for claim 1. All of
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`Petitioner’s contentions for this claim are based on the embodiment in
`Figure 8 of Kobayashi, which is reproduced below.
`
`
`
`Figure 8 depicts transmitter and receiver sides of a system for error
`correction in a data stream. Ex. 1005, 5:17–27. On the transmitter side (i.e.,
`the top portion of Figure 8), a Hamming code is used for the outer code, and
`“the inner code is duobinary signaling with a precoder.” Id. at 7:9–11.
`Kobayashi refers to the sequence outputted from the precoder by the
`designator I4. Id. at 8:21–27.
`Petitioner relies on the operations of Kobayashi’s Hamming encoder
`and interleaver in the embodiment of Kobayashi’s Figure 8 for teaching the
`recited “first encoding operation.” Pet. 10–12 (citing Ex. 1005, 7:50–8:20,
`Fig. 8). For the recited “second encoding operation,” Petitioner relies on the
`operation of Kobayashi’s precoder in the same embodiment of Figure 8. Id.
`at 14–15 (citing Ex. 1005, 8:18–27, Fig. 8). For the “second encoding
`operation producing at least a portion of a codeword,” Petitioner cites
`Kobayashi’s precoder output I4 and contends that an ordinarily skilled
`artisan “would have understood that this encoded sequence I4 is a codeword
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`because the output of an encoder such as Kobayashi’s precoder is a
`codeword.” Id. (citing Ex. 1002 ¶ 68; Ex. 1005, 8:25–27); see also Ex. 1002
`¶ 45 (similar testimony from Dr. Valenti). Notably, Petitioner’s mapping for
`the “second encoding operation” expressly excludes a “duobinary signaling”
`operation that is depicted within the “inner encoder” of Figure 8. Petitioner
`asserts that “duobinary signaling is simply a transmission technique, and
`thus the precoder is the inner encoder component that ‘perform[s] a second
`encoding operation’ as claimed.” Pet. 14 n.6 (alteration by Petitioner)
`(citing Ex. 1002 ¶ 67 n.3; Ex. 1005, 2:21–25, 7:30–31, 7:43–45).
`Patent Owner disputes that Kobayashi teaches a “second encoding
`operation producing at least a portion of a codeword.” Prelim. Resp. 6–14.
`Patent Owner’s arguments are based on Petitioner’s contention that the
`output of an encoder is a codeword. Id. at 7 (citing Pet. 15). Patent Owner
`argues that the premise of Petitioner’s contention is based on circular
`reasoning. Id. at 7. According to Patent Owner, “Petitioner is asserting that
`the output of Kobayashi’s precoder is a codeword because the output of
`Kobayashi’s precoder is a codeword.” Id. Patent Owner argues that
`Kobayashi never describes its precoder as an encoder and never describes
`the output of