Trials@uspto.gov
`571-272-7822
`
`Paper 14
`Entered: July 19, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`QUALCOMM INCORPORATED,
`Petitioner,
`
`V.
`
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`
`IPR2021-00375
`Patent 8,265,096 B2
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS,and
`CHARLESJ. BOUDREAU,Administrative Patent Judges.
`
`DROESCH,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 US.C. § 314
`
`Dismissing Motion for Joinder
`35 US.C. § 315(c); 37 CFR. 42.122(b)
`
`
`571-272-7822
`
`Paper 14
`Entered: July 19, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`QUALCOMM INCORPORATED,
`Petitioner,
`
`V.
`
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`
`IPR2021-00375
`Patent 8,265,096 B2
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS,and
`CHARLESJ. BOUDREAU,Administrative Patent Judges.
`
`DROESCH,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 US.C. § 314
`
`Dismissing Motion for Joinder
`35 US.C. § 315(c); 37 CFR. 42.122(b)
`
`
`
`IPR2021-00375
`Patent 8,265,096 B2
`
`I. INTRODUCTION
`
`A. Background
`
`Qualcomm Incorporated (“Petitioner”) filed a Petition requesting an
`
`inter partes review of claims 1-4 and 6-8 (“challenged claims”) of U.S.
`
`Patent No. 8,265,096 B2 (Ex. 1001, “’096 Patent”). Paper 1 (“Pet.”).
`
`Petitioner filed a Declaration of Sumit Roy, Ph.D. (Ex. 1002) with its
`
`Petition. Petitioner concurrently filed a Motion for Joinder seeking to join as
`
`a Petitioner in Intel Corp. v. UNM Rainforest Innovations, IPR2020-01576.
`
`(Paper3, “Motion for Joinder’”). UNM Rainforest Innovations (“Patent
`
`Owner”) filed a Preliminary Response. Paper 8 (“‘Prelim. Resp.”). Patent
`
`Ownerfiled a Declaration of Branimir Vojcic, D.Sc. (Ex. 2001) withits
`
`Preliminary Response. Pursuantto our authorization,Petitionerfiled a
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`Reply to the Preliminary Response (Paper 10, “Reply to Prelim. Resp.”) to
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`address discretionary denial under 35 U.S.C. § 314(a), to which Patent
`
`Ownerfiled a Sur-reply (Paper 12, “Sur-reply to Prelim. Resp.”’).
`
`Wehave authority to determine whetherto institute review under
`
`35 U.S.C. § 314 and 37 C.F.R. § 42.4.
`
`Forthe reasons provided below, we determine, based on the record
`
`before us, there is a reasonable likelihood Petitioner would prevail in
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`showingat least one of the challenged claims is unpatentable.
`
`B. Real Parties in-Interest
`
`Petitioner states that Qualcomm Incorporated is the real party in-
`
`interest and further identifies its customers Dell TechnologiesInc., Dell Inc.,
`
`and EMCCorporation(collectively, “Dell”) as additional real parties in-
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`interest. See Pet. 2.
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`
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`TPR2021-00375
`Patent 8,265,096 B2
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`Patent Ownerstates that the University of New Mexico Board of
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`Regents is an additional real party in-interest. See Paper6, 2.
`
`C. Related Matters
`
`Theparties indicate the following matters may affect or be affected by
`
`a decision in this proceeding: UNM Rainforest Innovationsv. Industrial
`
`Technology Research Institute, No. D-202-CV-2021-02803 (N.M.2d.
`
`Judicial District Court May 4, 2021); UNMRainforest Innovationsv.
`
`ASUSTek Computer, Inc., No. 6:20-cv-00142-ADA (W.D. Tex.); UNM
`
`Rainforest Innovations v. Dell Technologies, Inc., No. 6:20-cv-00468-ADA
`
`(W.D. Tex.); UNM Rainforest Innovations v. D-Link Corp., No. 6:20-cv-
`
`00143-ADA (W.D. Tex.); UNM Rainforest Innovations v. TP-Link
`
`Technologies Co., No. 6:19-cv-00428-ADA (W.D.Tex.); UNMRainforest
`
`Innovations v. ZyXEL Communications Corp., No. 6:20-cv-00522-ADA
`
`(W.D. Tex.); ZyXEL Communications Corp. v. UNM Rainforest Innovations,
`
`IPR2021-00734. See Pet. 2-3; Paper 6, 2; Paper 11, 1.
`
`Claims 1~4 and 6-8 werealso the subject of a petition filed in Intel
`
`Corp. v. UNM Rainforest Innovations, IPR2020-01576, which was
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`terminated upon granting a joint motion to terminate. See IPR2020-01576,
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`Papers2, 9.
`
`D. The ’096 Patent (Ex. 1001)
`
`The ’096 Patent relates to methods for constructing frame structures
`
`for orthogonal frequency-division multiple access (OFDMA)systems. See
`
`Ex. 1001, 1:16-19.
`
`
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`IPR2021-00375
`Patent 8,265,096 B2
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`Figure 6A of the ’096 Patent is reproduced below:
`
`95-1 66-1
`
`67-1 505]
`DL-MAP2 52-1
`
`Ranging Subchanne
`
`69-2) 69-3
`
`ence?
`DATA
`
`Zone 3
`DATA
`
`Dibuayl
`
`DL-MAP1
`
`& 3 zio
`
`D : E&
`
`66-2
`66-4
`ttty
`16-4
`17
`18-4
`19
`
`Figure 6A illustrates an OFDMA framestructure supporting high mobility
`
`and having a scalable bandwidth. See Ex. 1001, 4:1-3, 6:66—7:2. The frame
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`structure includes downlink (DL) sub-frame 16-4 and uplink (UL)
`
`sub-frame 18-4. See id. at 7:5—7. The frame structure includes added
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`regions related to zones 3 for high-mobility environments. See id. at 7:2—-5.
`
`In DL sub-frame 16-4, a first added region includes preamble 68, a sub-
`
`MAP 67-2 and DATA66-4. See id. at 7:5—-7. In UL sub-frame 18-4, a
`4
`
`
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`IPR2021-00375
`Patent 8,265,096 B2
`
`second added region includes DATA 69-3 and 69-6 (zones 3). Seeid.
`
`at 7:7-8. DATA 66-4, 69-3, and 69-6 may be allocated for the extended
`
`OFDMA system under high mobility. See id. at 7:8-10. DL sub-frame 16-4
`
`is divided according to mapping information in DL-MAP 1, DL-MAP 2, and
`
`DL-MAP 3, and UL sub-frame 18-4 is divided according to the map
`
`information in UL-MAPsin DL burst #1 65-1 and/or 65-2. See id. at 7:10—
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`14. A portion of the guard band that overlaps data zones 69-1 and 69-2 in
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`UL sub-frame 18-4 may be used to transmit data in the extended system.
`
`See id. at 7:14-17. “As comparedto the zones in the data region of the DL
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`sub-frame 16-4 or the UL sub-frame 18-4 of the old/legacy system or the
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`new/extended system, the placements of the pilot symbols may be denser,
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`[and] the OFDMA symbolperiods may beshorter. .
`
`. in zones 3 of UL
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`sub-frame 18-4 or DL sub-frame 16-4 for the extended system underhigh
`
`mobility.” Jd. at 7:21-27.
`
`E. Illustrative Claims
`
`Claims 1 and 8 are independentand claims 2-4, 6, and 7 depend
`
`ultimately from claim 1. Claims 1 and8areillustrative and reproduced
`
`below:
`
`1. A method of constructing a framestructure for data
`transmission, the method comprising:
`generatingafirst section comprising data configured in a
`first format compatible with a first communication
`system using symbols;
`generating a secondsection following thefirst section, the
`second section comprising data configured in a second
`format compatible with a second communication system
`using symbols, wherein the first communication system’s
`symbols and the second communication system’s
`
`
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`IPR2021-00375
`Patent 8,265,096 B2
`
`symbols co-exist in one transmission scheme and
`wherein:
`the second format is compatible with the second
`communication system configured to support higher
`mobility than the first communication system, wherein
`each symbolin the second communication system has a
`shorter symbolperiod than thatin the first
`communication system;
`generating at least one non-data section containing
`information describing an aspect of data in at least one of
`the first section and the secondsection; and
`combiningthefirst section, the second section andthe at
`least one non-data section to form the framestructure.
`
`8. A method of constructing a frame structure for data
`transmission, the method comprising:
`generating a first section comprising data configured inafirst
`format compatible with a first communication system using
`symbols;
`generating a second section followingthe first section, the second
`section comprising data configured in a second format
`compatible with a second communication system using
`symbols, wherein thefirst communication system's symbols
`and the second communication system’s symbols co-exist in
`one transmission scheme and wherein the second
`communication system has pilot symbols that are denser than
`those in the first communication system;
`generating at least one non-data section containing information
`describing an aspect of data in at least one ofthe first section
`and the second section; and combiningthefirst section, the
`second section and the at least one non-data section to form the
`framestructure.
`
`Ex. 1001, 8:32—54, 9:6-25.
`
`
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`IPR2021-00375
`Patent 8,265,096 B2
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`F. Asserted Challenges to Patentability and Asserted Prior Art
`
`Petitioner asserts the following challenges to the patentability of
`
`claims 1-4 and 6-8:
`
`
`
`Reference(s)/Basis
`35 U.S.C. §!
`Claim(s) Challenged
`Talukdar,? Li?
`1-4, 6,7
`
`
`esee103 Talukdar, Nystrom‘
`
`Il. ANALYSIS
`
`A. Discretion under 35 U.S.C. § 314(a)
`
`Patent Owner argues that we should exercise our discretion and deny
`
`institution based on the parallel proceeding in UNM Rainforest Innovations
`
`v. Dell Techs., Inc., Dell Inc., and EMC Corp., No. 6:20-cv-00468-ADA
`
`(W.D.Tex.) (“parallel District Court proceeding”). See Prelim. Resp. 3-13;
`
`Sur-reply to Prelim. Resp. 1-4.
`
`Under § 314(a), the Director has discretion to deny institution of an
`
`inter partes review,andthat discretion has been delegated to the Board. See
`
`37 C.F.R. § 42.4(a) (“The Boardinstitutes the trial on behalf of the
`
`Director.”); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016)
`
`(“[T]he agency’s decision to deny a petition is a matter committed to the
`
`Patent Office’s discretion.”’); SAS Inst. v. lancu, 138 S. Ct. 1348, 1356
`
`(2018) (“[Section] 314(a) invests the Director with discretion on the
`
`question whetherto institute review ... .” (emphasis omitted)); Harmonic
`
`' Petitioner challenges patentability under pre-AIA 35 U.S.C. § 103. Pet. 23,
`28, 30.
`* Ex. 1012, US 2009/0067377 A1, published Mar. 12, 2009 (“Talukdar’).
`3 Ex. 1001, US 2007/0155387 A1, published July 5, 2007 (“Li”).
`* Ex. 1017, US 2007/0104174 A1, published May 10, 2007 (“Nystrom”).
`7
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`
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`IPR2021-00375
`Patent 8,265,096 B2
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`Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
`
`permitted, but never compelled, to institute an IPR proceeding.”’).
`
`In NHKSpring Co. v. Intri-Plex Technologies, Inc., the Board denied
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`institution relying in part on § 314(a) becausethe parallel district court
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`proceeding was scheduledto finish before the Board reacheda final
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`decision. IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential).
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`Following NHK,the Boardarticulated the following factors for
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`consideration when determining whetherto exercise discretion to deny
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`institution in view ofa parallel proceeding:
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`Lo
`
`— . whether the court granted a stay or evidence exists that one
`may be granted if a proceedingis instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`. investmentin the parallel proceeding by the court and the
`parties;
`4. overlap between issuesraised in the petition and in the
`parallel proceeding;
`. whetherthe petitioner and the defendant in the parallel
`proceeding are the sameparty; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`
`GN
`
`Apple Inc. v. Fintiv, Inc., TPR2020-00019, Paper 11 at 5-6 (PTAB
`
`Mar. 20, 2020) (precedential) (“Fintiv’”). “These factors relate to whether
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`efficiency, fairness, and the merits support the exercise of authority to deny
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`institution in view of an earliertrial date in the parallel proceeding.” Jd. at 6.
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`In evaluating these factors, we take “a holistic view of whetherefficiency
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`and integrity of the system are best served by denyingorinstituting review.”
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`Id. (citing Patent Trial and Appeal Board Consolidated Trial Practice Guide
`
`November 2019, 58). We address each of these factors in turn below.
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`
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`IPR2021-00375
`Patent 8,265,096 B2
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`1. Analysis ofFintiv Factors
`
`a. Whether the court granted a stay and proximity oftrial date
`(first and secondfactors)
`Althoughthe parties stated previously that neither party has requested
`
`a stay in the parallel District Court proceeding (see Pet. 6-7; Prelim.
`Resp. 5), Petitioner recently informed the Board that“thedistrict court has
`stayed the Dell
`.
`.
`. litigation[] and removedthe previously scheduled
`Nov.8, 2021 trial date from its calendar.” Paper 13, 1 (citing June 22, 2021
`
`Order in UNM Rainforest Innovations v. Dell TechnologiesInc.et al., No.
`6:20-cv-00468-ADA(“District Court Order’”)). The court “grant[ed] the
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`motion to stay the [parallel District Court proceeding] ‘pending resolution of
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`patent ownership issues in UNMRainforest Innovations v. Industrial
`Technology Research Institute, et al., case number D-202-CV-2021-02803 in
`the Second Judicial District Court of Bernalillo County, New Mexico.’” Jd.
`
`(quoting District Court Order).
`
`The granting of a stay pending inter partes review allays concerns
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`about inefficiency and duplication of efforts and has weighed strongly
`
`against exercising discretion to deny institution. See Snap, Inc. v. SRK Tech.
`LLC, IPR2020-00820, Paper 15 at 9 (PTAB Oct. 21, 2020) (precedential as
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`to § I1.A); see Fintiv, Paper 11 at 6. Althoughthe parallel District Court
`proceeding has been stayed andthetrial date was removed from the calendar
`for reasons unrelated to Petitioner’s request for inter partes review, the
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`currentstay of the parallel District Court proceeding nonetheless allays some
`concerns aboutinefficiency and duplication of efforts. Accordingly, we find
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`that the considerationsofthe first Fintiv factor weigh against discretionary
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`denial.
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`
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`IPR2021-00375
`Patent 8,265,096 B2
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`According to Fintiv, “[i]f the court’s trial date is earlier than the
`
`projected statutory deadline, the Board generally has weighedthis fact in
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`favor of exercising authority to deny institution under NHK.” Fintiv,
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`Paper 11 at 9. Because the trial date has been removed from the calendarin
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`the parallel District Court proceeding, the considerations of the second
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`Fintiv factor weigh against discretionary denial. See Snap, Paper 15 at 9.
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`b. Investmentin the parallel proceeding by the court and the parties
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`Patent Ownerasserts that this factor strongly favors denial because the
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`parallel District Court proceeding has already seen substantial activity
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`relevant to patent validity. See Prelim. Resp. 7. Patent Owner contendsthat
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`the parties submitted a Joint Claim Construction Statement and have
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`exchangedfinal infringement and invalidity contentions. See id. (citing
`
`Ex. 2006). Patent Ownerasserts that by the time this decision issues, fact
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`discovery will be closed. See id. (citing Ex. 2006). According to Patent
`
`Owner,“the pretrial litigation processes will be roughly 50% complete
`
`before an institution decision is issued.” Jd. at 8. Patent Owner further
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`contends that (1) the parties are already actively taking merits-based
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`discovery, and (2) Patent Ownerhas served, and Petitioner has respondedto,
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`a subpoena for documents, source code, and other information pertaining to
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`Qualcomm Wi-Fi chips incorporated into Dell’s accused products. See id.
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`Petitioner does not dispute these facts. See generally Reply to Prelim. Resp.
`
`Fintiv provides the following guidance: “This investment factoris
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`related to the trial date factor, in that more work completed bythe parties
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`and court in the parallel proceeding tends to support the arguments that the
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`parallel proceeding is more advanced, a stay maybeless likely, and
`
`10
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`IPR2021-00375
`Patent 8,265,096 B2
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`instituting would lead to duplicative costs.” Fintiv, Paper 11 at 10. In the
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`circumstancesbefore us, the anticipated remaining investment of time and
`
`effort to bring the parallel District Court proceeding to trial appears to be
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`about equal to that which has already been invested andis not insignificant,
`
`and, therefore, the investment to date by the parties and the court weighs
`
`slightly in favor of discretionary denial.
`
`The third Fintiv factor also provides that a petitioner’s diligence or
`
`delay in filing a petition may be relevant. See Fintiv, Paper 11 at 11-12. If
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`the evidence showsthat a petitionerfiled its petition expeditiously, such as
`
`promptly after becoming aware ofthe claims being asserted, this fact has
`
`weighed against denying institution. See id. at 11 (citing Intel Corp. v. VLSI
`
`Tech. LLC, IPR2019-01192, Paper 15 at 12-13 (PTAB Jan. 9, 2020);
`
`Illumina Inc. v. Natera, Inc., IPR2019-01201, Paper 19 at 8 (PTAB
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`Dec. 18, 2019)). If, however, the evidence showsthe petitioner did notfile
`
`its petition expeditiously, such facts have favored denial. See id. at 11-12
`
`(citing Next Caller, Inc. v TRUSTID,Inc., IPR2019-00961, Paper 10 at 16
`
`(PTAB Oct. 16, 2019)).
`
`Petitioner contendsthat it acted expeditiously by filing this Petition
`
`shortly after its customer was sued. See Pet. 8 (citing Fintiv, Paper 11 at 11).
`
`Petitioner, however, does not specifically address the elapsed time between
`
`service of the complaint in the parallel District Court proceeding and the
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`December28, 2020, Petition filing date (Paper 5). Nor does Petitioner
`
`address when it became awareofthe claims being asserted in the parallel
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`District Court proceeding. Because Petitioner’s assertion is unsupported, we
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`are unable to assess whetherthe Petition wasfiled expeditiously.
`
`il
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`IPR2021-00375
`Patent 8,265,096 B2
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`The investment of time and effort to date by the parties and the court
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`evidencedbythe record relative to the anticipated investment remaining to
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`bring the parallel District Court proceedingto trial weighsslightly in favor
`
`of exercising discretion to deny institution. Petitioner’s unsupported
`
`assertion that the Petition was filed expeditiously does not mitigate our
`
`determination that the investment in the parallel District Court proceeding to
`
`date by the parties and the court weighsslightly in favor of discretionary
`
`denial. In sum, the considerations of the third Fintiv factor weigh slightly in
`
`favor of discretionary denial.
`
`c. Overlap between the issues raised in the petition and
`in the parallel proceeding
`
`Petitioner asserts that “the invalidity grounds, arguments, and
`
`evidence presentedin this Petition will be different than those presented in
`
`the litigations.” Pet. 8. Petitioner further contendsthat “[t]his Petition
`
`challenges [two] claims . .. , which are not asserted in any of the
`
`litigations.” Jd. Here, Petitioner appears to be referring to all of the
`
`numerousproceedingsin the District Court, not just the parallel District
`
`Court proceeding. Petitioner also asserts that “Dell has indicatedit will
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`stipulate in the [parallel District Court proceeding], prior to anytrial in
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`which Dell products that incorporate Petitioner’s Wi-Fi components are
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`accused ofinfringement, that if the Board institutes IPR of the challenged
`
`claimsin this Petition, Dell will not pursue invalidity of the challenged
`
`claims on the same grounds or even the samereferencesat issue in this
`
`Petition.” Jd. (citing IPR2020-01576, Paper 2 at 8). Petitioner contends that
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`the stipulation would mitigate concerns of duplicated efforts and conflicting
`
`decisions, and therefore this factor weighs against discretionary denial. See
`
`12
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`
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`IPR2021-00375
`Patent 8,265,096 B2
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`id. at 8-9 (citing VMWare, Inc. v. Intellectual Ventures I LLC, IPR2020-
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`00470, Paper 13 at 20 (PTAB Aug. 18, 2020)).
`
`Patent Ownerasserts that this factor favors denial of institution
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`because there is substantial overlap between the issues of invalidity
`
`presentedin the Petition and the parallel District Court proceeding and
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`becausethe narrowstipulation is insufficient. See Prelim. Resp.8.
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`According to Patent Owner, Petitioner “deceptively argues that the issues
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`‘will be different’ because here Petitioner ‘challenges claims ... which are
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`not asserted’”in the parallel District Court proceeding. Jd. (citing Pet. 9)
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`(alteration in original). Patent Owner contendsthat Petitioner is challenging
`
`all the claimsasserted in the parallel District Court proceeding in the
`
`Petition, and thus, there is a 100% overlap with the district court
`
`independent claims. See id. Patent Ownerasserts that the narrow stipulation
`
`does not eliminate the possibility that substantially similar art and arguments
`
`will be raised in the parallel District Court proceeding. See id. at 8—9 (citing
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`Philip Morris Prods., S.A. v. RAI Strategic Holdings, Inc., IPR2020-00921,
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`Paper 9 at 19 (PTAB Nov. 16, 2020)).
`
`Accordingto Fintiv, “if the petition includes the same or substantially
`
`the same claims, grounds, arguments, and evidenceas presented in the
`
`parallel proceeding,this fact has favored denial” because “concerns of
`
`inefficiency andthe possibility of conflicting decisions [are] particularly
`
`strong.” Fintiv, Paper 11 at 12. Based on the arguments and evidence
`
`presented, we are unable to determineif there is significant overlap in the
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`grounds, arguments, and evidence presentedin the parallel District Court
`
`proceeding andthe challenges presented in the Petition. On the other hand,
`
`the Petition challenges the same claimsas the parallel District Court
`13
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`IPR2021-00375
`Patent 8,265,096 B2
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`proceeding, and includes challenges to two additional dependentclaims.
`
`Although Dell’s proposedstipulation mitigates to some degree the concerns
`of duplicative efforts between the parallel District Court proceeding andthis
`proceeding, as well as concernsofpotentially conflicting decisions, we find
`that the proposedstipulation does not fully allay such concerns. In other
`
`words, the proposedstipulation alleviates to some degree concerns of
`
`duplicative efforts and potentially conflicting decisions, but it does not
`
`eliminate them. See Sand Revolution, Paper 24 at 12. Accordingly, the
`
`considerations of the fourth Fintiv factor weigh slightly against discretionary
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`denial.
`
`d. Whetherthe petitioner and defendantin the
`parallel proceeding are the same party
`Petitioner asserts that this factor weighs against discretionary denial
`
`because “Petitioner is not a defendant in any ofthe litigations nor the same
`
`party as any defendant.” Pet. 9 (citing Fintiv, Paper 11 at 11 n.20, 13); see
`id. at 6; see also Reply to Prelim. Resp. 3 (“Qualcomm,notDell, has filed
`
`this IPR.”). According to Petitioner,
`
`Qualcomm has indemnity obligations to Dell and has
`coordinated with Dell and its subsidiary EMC in defense in the
`Dell litigation andas it relates to the Petition, including on the
`submission of a Sand Revolution-style stipulation that mitigates
`the risk of duplicative efforts between the district court and the
`Board (Petition at 8-9). Qualcomm thusidentified Dell and
`EMCas RPIsout of an abundanceof caution.
`
`Reply to Prelim. Resp. 2.
`
`Patent Ownerarguesthat this factor favors denying institution
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`because “Qualcommis representing and acting as an agent for Dell’s and
`
`EMC’s interests in this [proceeding] and it is indemnifying Dell in the
`
`14
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`TPR2021-00375
`Patent 8,265,096 B2
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`District Court.” Prelim. Resp. 9. Patent Owner contends Dell and EMC,
`
`Qualcomm’s customers,are real parties in-interest to this proceeding and
`
`have agreed to be boundbytheresults ofthis proceeding. See id. (citing
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`Pet. 2, 9). Patent Ownerasserts that Qualcomm is indemnifying Dell
`
`because Dell’s position is that all of the remaining chips in theparallel
`
`District Court proceeding are Qualcomm chips and Qualcomm is using the
`
`same counselin this proceedingas in the District Court and in regard to
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`Patent Owner’s subpoena to Qualcomm.Seeid.
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`“If a petitioner is unrelated to a defendant in an earlier court
`
`proceeding, the Board has weighedthis fact against exercising discretion.”
`Fintiv, Paper 11 at 13-14. Giventhat there is overlap betweenthereal
`parties in-interest namedin this proceeding and the defendants in theparallel
`District Court proceeding, we determinethat this factor, on balance, weighs
`
`slightly in favor of discretionary denial.
`
`e. Other circumstances, including the merits
`
`Petitioner contends the merits of the Petition “favor institution,
`
`because the groundsraised are particularly strong: the prior art demonstrates
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`unpatentability based on references not considered by the Examinerthat
`would have been combinedbyskilled artisans as asserted.” Pet. 9. Patent
`
`Ownerasserts that Petitioner’s groundsare not particularly strong on the
`
`merits for reasons detailed in the Preliminary Response. See Prelim.
`
`Resp. 9. More specifically, Patent Owner contendsthat Talukdar, relied
`upon in the Petition, does notpredate the priority date of the ’096 Patent and
`Patent Owner “has offered uncontroverted expert testimonythat the
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`15
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`challenged claims of the ’096 patentare fully supported byits provisional
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`application.” /d. at 9-10.
`
`Whenconsidering whetherto exercise discretion to deny a petition,
`
`we undertake a balanced assessmentof all relevant circumstancesin the
`
`case, including the merits. Fintiv, Paper 11 at 14. Although we need not
`
`undertakea full merits analysis, we consider the strengths and weaknesses of
`
`the merits, where stronger merits may favorinstitution. See id. at 15-16.
`
`Onthe other hand, if the merits of the grounds presented in the petition are a
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`closercall, then this fact has favored denying institution when other factors
`
`favoring denial are present. See id. at 15.
`
`Wehavereviewed Petitioner’s patentability challenges and Patent
`
`Owner’s Preliminary Response, as well as the parties’ additionalbriefing.
`
`As explainedin the detailed analysis below, based on the record before, the
`
`merits of Petitioner’s patentability challenges appear to be sufficient to show
`
`a reasonablelikelihood of prevailing at this stage of the proceeding with
`
`respect to at least one asserted ground. See infra Section II.F. Therefore,
`
`consideration of the merits is neutral.
`
`Petitioner also arguesthat it “has no legal recourse for this patent
`
`outside of IPR.” Pet. 9; see id. at 6. Petitioner, however, does not explain
`
`whythis is the case. See id. Accordingly,Petitioner’s contention does not
`
`weighin favorofinstitution.
`
`As other circumstances, Patent Owneralso arguesthatinstitution
`
`should be denied because Petitioner failed to disclose all real parties in-
`
`interest as required by 35 U.S.C. § 312(a). See Prelim. Resp. 10. Patent
`
`Ownerasserts that Petitioner admits that Dell and EMCarereal parties in-
`
`interest because they are customers namedas defendants in the parallel
`16
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`District Court proceeding. See id. (citing Pet. 3). Patent Owner contends
`
`that ASUSTekis also a customer that has been namedas a defendantin a
`
`related District Court proceeding. Seeid. (citing Pet. 3; Exs. 2004, 2012).
`
`Onthis basis, Patent Owner contendsthat Petitioner failed to disclose
`
`ASUSTekasareal party in-interest. See id. at 10-11. According to Patent
`
`Owner, “the ’096 patent has [also] been asserted against its customer LG,to
`
`which, on information and belief, Qualcommis also an RPI and/or privy and
`
`owes indemnity.” Jd. at 11 (citing Indus. Tech. Research Inst. v. LG Elecs.,
`
`Inc., No. 2:15-cv-00552, Dkt. No. 1 (E.D. Tex. April 24, 2015)).
`
`Petitioner disputes Patent Owner’s contentions regarding unnamed
`
`real parties in-interest. See Reply to Prelim. Resp. 1-2. Petitioner asserts
`
`that Patent Owner“has not presented any evidence to ‘reasonably bring[]
`
`into question the accuracy ofpetitioner’s identification of the real parties in
`
`interest.’” Jd. at 1 (quoting Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242
`
`(Fed. Cir. 2018)) (alteration in original). According to Petitioner, “[nJeither
`
`being a customernor a co-defendantin a related litigation elevates a third
`
`party to an RPI.” /d. at 2 (citing Wi-Fi One, LLC v. Broadcom Corp., 887
`F.3d 1329, 1337-40 (Fed. Cir. 2018)). Petitioner further contendsthat
`
`theoretical and incorrect allegations of indemnity obligations also are
`
`insufficient. See id. (citing WesternGeco LLC v. ION Geophysical Corp.,
`
`889 F.3d 1308, 1321 (Fed. Cir 2018)). Finally, Petitioner contends that
`
`neither ASUSTeknor LG exercised or could have exercised control over
`
`Qualcomm’s petition, was involved in drafting the petition, or provided any
`
`funding. See id. (citing Puzhen Life USA, LLC v. ESIP Series 2, LLC,
`
`IPR2017-02197, Paper 24 at 10 (PTAB Feb. 27, 2019)).
`
`17
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`Patent 8,265,096 B2
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`In response, Patent Ownercontendsthat Petitioner does not deny that
`
`its customer agreements with ASUSTek and LGcontain indemnity
`
`provisions similar to its agreements with Dell and EMC. See Sur-reply to
`
`Prelim. Resp. 4. According to Patent Owner, “[a]t a minimum, Qualcomm
`
`should provide its indemnity agreements with ASUSTek and LG to
`
`substantiate its argument that ASUSTek and LG arenotsimilarly situated as
`
`Dell and EMC.” Jd. Patent Owner further contendsthat “Fintiv factor 6
`
`requires corroboration of Qualcomm’s say-so by review of its ASUSTek and
`
`LG indemnity agreements.” Jd.
`
`Weagree that Patent Ownerpresents insufficient evidence to
`
`demonstrate that Petitioner’s statement regarding the real parties in-interest
`
`is inaccurate. Patent Owneralso presents no persuasive authority to support
`its contention that Petitioner should produce indemnity agreements to refute
`
`Patent Owner’s unsupported assertions that ASUSTek and LGarereal
`
`parties in-interest. For these reasons, Patent Owner’s contention that
`
`Petitioner does not nameall real parties in-interest does not weigh in favor
`
`of discretionary denial.
`
`After performing a balanced assessmentof the merits of the Petition
`
`and the other circumstancesraised by the parties, the considerations ofthis
`
`Fintiv factor are neutral.
`
`2. Conclusion
`
`Wehave considered the circumstances and facts before us in view of
`
`the Fintiv factors. Because ouranalysis is fact-driven and wetake a holistic
`
`view of the factors, no single factor is determinative of whether we exercise
`
`discretion to deny institution under § 314(a). Based on the record before us,
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`18
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`the considerations underlying the Fintiv factors when viewedholistically
`
`lead us to determine that the efficiency and integrity of the system are best
`
`served by not exercising discretion to deny institution of inter partes review.
`
`B. Claim Construction
`
`The Board applies the same claim construction standard as applied in
`
`federal courts in a civil action under 35 U.S.C. § 282(b), which is generally
`
`referred to as the Phillips standard. See 37 C.F.R. § 42.100(b) (2020);
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under the
`
`Phillips standard, words of a claim are generally given their ordinary and
`
`customary meaning. Phillips, 415 F.3d at 1312.
`
`Petitioner identifies the following claim constructions, entered by the
`
`court in UNM Rainforest Innovations v. Apple Inc., No. 1:20-cv-00351
`
`(W.D.Tex.) (Ex. 1011)? as consistent with the positions advanced in the
`
`Petition:
`
`
`
`
`Construction
`Claim Term or Phrase
`“a single structure comprising one or
`“frame structure”
`
`more frames, wherein each frame may
`
`have one or more subframes”
`
`
`
`
`
`“[p]lain-and-ordinary meaning, where the
`plain-and-ordinary meaningis ‘a
`combination of hardware and software
`
`that transmits and receives data according
`to one or more communication
`
`standards’”
`
`
`“communication system”
`
`
`
`
`
`> Patent Ownerpreviously asserted the 096 Patent in UNMRainforest
`Innovations v. Apple Inc., No. 1:20-cv-00351 (W.D. Tex.), which was
`ultimately dismissed. See Pet. 3 n.1.
`19
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`
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`IPR2021-00375
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`“[p]lain-and-ordinary meaning, wherein
`the plain-and-ordinary meaning means‘a
`transmissible unit of information’”
`“[p]lain-and-ordinary meaning[,] where
`“wherein the first
`the plain-and ordinary
`communication system’s
`meaning is ‘wherein symbolsofthefirst
`symbols and the second
`communication system and symbols of
`communication system’s
`the second communication system exist
`symbols co-exist in on
`together in one transmission scheme’”
`transmission scheme”
`“support higher mobility than”|“support higherrelative velocity
`between a transmitter and a receiver than”
`“the time it takes to transmit one symbol”
`“symbolperiod”
`“at least one of [...] and[...]| “{...] and/or[...]”
`“pilot symbols that are denser|“more pilot symbols per unit time than,
`than”
`wherein a unit time is the symbol period
`
`of the first communication system”
`
`See Pet. 22-23 (alterations in original). Patent Owneridentifies the same
`
`claim termsor phrases construed by the court. See Prelim. Resp. 18-19.
`
`Patent Ownerfurther points out that the court construed the preambles of the
`
`claims as limiting. See id. at 18.
`
`As demonstrated in the analysis below, for the purpose ofinstitution,
`
`weneednot construe any claim term or phrase. See Nidec Motor Corp.v.
`
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`
`(“[W]e need only construe terms ‘that are in controversy, and only to the
`
`extent necessary to resolve the controversy.
`
`(quoting Vivid Techs., Inc.v.
`
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
`C. Principles ofLaw
`
`A claim is unpatentable under 35 U.S.C. § 103 if the differences
`
`between the claimed subject matter and the prior art are such that the subject
`
`matter, as a whole, would have been obviousat the time the invention was
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`madeto a person having ordinary skill in the art to which the subject matter
`
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
`question of obviousnessis 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 a
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