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`Trials@uspto.gov
`571-272-7822
`
`Paper 22
`Entered: November28, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CoO., LTD.and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`Vv.
`
`SEVEN NETWORKS, LLC,
`Patent Owner.
`
`Case IPR2018-01108
`Patent 9,516,127 B2
`
`Before THU A. DANG, JONI Y. CHANG,and
`JACQUELINET. HARLOW,Administrative Patent Judges.
`
`CHANG,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Paper 22
`Entered: November28, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CoO., LTD.and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`Vv.
`
`SEVEN NETWORKS, LLC,
`Patent Owner.
`
`Case IPR2018-01108
`Patent 9,516,127 B2
`
`Before THU A. DANG, JONI Y. CHANG,and
`JACQUELINET. HARLOW,Administrative Patent Judges.
`
`CHANG,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
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`NON-PUBLIC VERSION — PROTECTIVE ORDER MATERIAL
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`IPR2018-01108
`Patent 9,516,127 B2
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`I.
`
`INTRODUCTION
`
`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`
`(collectively, “Petitioner” or “Samsung’’)filed a Petition requesting an inter
`partes review of claims 1—30, 32-38, 40-48, and 50 (“the challenged
`claims”) of U.S. Patent No. 9,516,127 B2 (Ex. 1001, “the °127 patent”).
`
`Paper 2 (“Pet.”). The SEVEN Networks, LLC and CF SVN LLC
`
`(collectively, “Patent Owner”) filed a Prelimimary Response. Paper 11
`
`(Prelim. Resp.”). Pursuant to our prior authorization, Petitioner filed a
`
`Reply (Papers 15, 16, ‘““Reply’”) to the Patent Owner Preliminary Responseas
`
`to the issue of whetherPetitioner had namedall ofthe real parties in interest,
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`and Patent Ownerfiled a Sur-Reply (Papers 19, 20, “Sur-Reply”).! The
`
`parties also filed Motions to Seal (Papers 17, 18, 21) the nonpublic versions
`of their papers (Papers 16, 19) and certain exhibits and have agreedto the
`Revised Protective Order (Paper 17, Attachments A, B; Paper18,
`AttachmentA).
`Under 35 U.S.C. § 314(a), an interpartes review maynotbe instituted
`
`unless the information presentedin the petition “showsthat thereis a
`
`reasonablelikelihood that the petitioner would prevail with respectto at
`least 1 of the claims challenged in the petition.” For the reasonsstated
`below, we determinethat there is a reasonablelikelihood that Petitioner
`would prevail with respect to at least one challenged claim. We hereby
`
`' Bothparties filed public and nonpublic versionsof their papers. Our
`citations correspond to the nonpublic version of each paper.
`2
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`IPR2018-01108
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`institute interpartes review ofall the challenged claims onall the grounds of
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`unpatentability asserted in the Petition.
`
`A. Related Matters
`
`Thepartiesindicate that the ’127 patent is involved mn SEVEN
`
`Networks, LLC v. Samsung Electronics Co., Ltd. ,Case No. 2:17-cv-00441
`
`(E.D. Tex.). Pet. 78; Paper 3, 2. Theparties also list other related
`
`proceedings. Paper 3, 1-2.
`
`B. The ’127 Patent
`
`‘he ’127 patentclaimspriority to U.S. Provisional Application No.
`
`61/805,070 (the “070 application’’), which wasfiled on March 25, 2013.
`Ex. 1001, at [54], [60]. The 127 patent discloses a system and method “for
`tracking resourcesusedbytriggers such as alarmsandtimers that are used
`by mobile applications to schedule tasks and intelligently manipulating the
`liming ofthe triggers to optimize usage of resources.” Jd. at Abstract.
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`Figure 1A-1 of the ’127 patent is reproduced below.
`
`
`
`Gat Actunt
`Time
`
`
`
`
`
`Aescurce
`Unhizatiors
`Tracker
`
`FIG. 1A-T
`
`Figure 1A-1 of the ’127 patent illustrates an example resource
`utilization tracking andintelligent alarm managementoftriggers across
`multiple applications on a mobile device. Id. at 5:15—20. In particular,
`
`Figure 1 A-1 showsintelligent alarm manipulator and resource tracker
`module 114 havingintelligent alarm manger 115 and resourceutilization
`tracker 116. Jd. Applications 101, 105, and 107 are exemplary applications
`of a mobile device, which canset alarmsfor different times to perform
`
`ditterent tasks.
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`/d. at5:24—-26. Alarms Al, AZ, and A3 are intercepted
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`and/ortrackedbyintelligent alarm manger 115, and they use resources 102,
`including battery 109, network 111, and CPU 113. Jd. at 5:29—-33. Resource
`utilization tracker 116 tracks or monitors the usage of various resources by
`alarms Al, A2, and A3, ortaskstriggered by the alarms. Jd. at 5:33—-36.
`For example, assuming that alarm Al wakes up the mobile device from the
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`4
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`sleep mode, when alarm A1is triggered, the mobile device’s battery/power
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`resource and CPU resource can beutilized. Jd. at 5:36-39.
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`C. Illustrative Claim
`
`Ofthe challenged claims,claims 1, 10, 17, 24, 33 and 42 are
`independent. Claims 2—9 depend from claim 1; claims 11—16 depend from
`claim 10; claims 18—23 depend from claim 17; claims 25-30 and 32 depend
`
`from claim 24; claims 34-38, 40, and 41 depend from claim 33; and claims
`
`43—48 and 50 depend from claim 42. Claim 1 1s illustrative:
`
`1. A method tor managing resources on a mobile device,
`comprising:
`entering a power save mode based on a backlight status and
`sensed motion of a mobile device;
`delaying a timing of one or more triggers
`applications on the mobile device,
`wherein the timing is delayed such that the triggers execute
`within a window oftime,
`wherein at least a subset of the triggers are associated with
`wakelocks; and
`exiting the power save mode whenthe backlight of the mobile
`device turns on or motion of the mobile device 13 sensed.
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`for multiple
`
`Ex. 1001, 23:60—24:5.
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`D. Prior Art Relied Upon
`
`Petitioner relies upon the referenceslisted below (Pet. 4-6).
` Reference
`
`US 2014/0195839 Al, published Jul. 10, 2014,filed Sep.6,
`2013, claiming priority to US Provisional Application No.
`61/750,359,filed Jan. 9, 2013
`
`Chueh
`
`1004
`
`
`
`
`Backholm|US 2012/0023236 Al, published Jan. 26, 2012 1005
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`
`
`Hackhorn|US 8,280,456 B2,issued Oct. 2, 2012 |
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`Kim
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`US 2012/0315960 A1, published Dec. 13, 2012
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`
`
`
`
`
`
`
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`US 2014/0038674 Al, published Feb. 6, 2014,filed May
`Srinivasan| 24, 2013, claiming priority to US Provisional Application
`No. 61/678,481, filed Aug. 1, 2012
`
`
`
`1006
`
`
`
`
`
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`
`
`
`
`
`
`
`
`
`
`ee
`1-23
`§ 103
`Chueh, Backholm,and
`
`
`24-26, 28, 29, 32-34,36,
`37, 40-44, 46, 47, and 50
`
`§ 103
`
`;
`;
`Chueh, Jiang, and Kim
`
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`E. Asserted Grounds ofUnpatentability
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`Petitioner asserts the following groundsof unpatentability (Pet. 3):?
`
`Srinivasan
`
`27, 35, and 45
`
`30, 38, and 48 ©
`
`
`
`§ 103
`
`§ 103
`
`
`
`Chueh,Jiang, Kim, and
`Hackborn
`
`Chueh, Jiang, Kim, and
`Backholm
`
`Il. ANALYSIS.
`
`A. Whether the Petition is Time-Burred under $ 315(b)
`
`Petitioner asserts thatits Petition was filed timely on May 21, 2018,
`becauseit was served on May 19, 2017, with a complaint alleging
`infringement of the 127 patent, and May 19, 2018 was a Saturday. Pet. 2.
`
`2 The relevant post-grant review provisions of the America Invents Act
`(“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), took effect on March 16,
`2013. 125 Stat. at 293,311. The earliest possible effective filing date of the
`°127 patent is March 25, 2U13. ‘Iherefore, our citations to Title 35 are to its
`post AIA version. Section 4(c) of the AIA re-designated 35 U.S.C.
`§§ 112(1), (2) as 35 U.S.C. §§ 112 (a), (b), respectively, effective September
`16, 2012. 125 Stat. at 296-297.
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`Petitioner indicates that it is the sole real party in interest (“RPI”). Jd. at 78.
`
`Patent Ownerarguesthat the Petition is time-barred under § 315(b).
`
`Prelim. Resp. 1. According to Patent Owner, Google LLC (“Google”) is
`also an RPI to this proceeding, and a privy of Petitioner. Jd. Patent Owner
`
`aversthat the Petition was filed more thanayear after Google was served
`
`with a complaint. Jd. (citing Ex. 2003, 2).
`
`1. Principles of Law
`Section 315(b) of Title 35 of the United States Code provides:
`
`(b) PATENT OWNER’S ACTION.—An inter partes review
`maynotbeinstitutedif the petition requesting the proceedingis
`filed more than 1 year after the date on whichthe petitioner, real
`party in interest, or privy of the petitioner is served with a
`complaint alleging
`infringement of the patent. The time
`limitation set forth in the preceding sentenceshall not apply toa
`request for joinder undersubsection(c).
`“Whether a party who is not a namedparticipant in a given
`procccding nonctheless constitutes a ‘real party-in-interest’ .
`.
`. to that
`proceedingis a highly fact-dependent question”with no “brightline test,”
`and is assessed “ona case-by-case basis.”” Office Patent Trial Practice Guide
`(“TPG”), 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (citing Taylorv.
`Sturgell, 553 U.S. 880, 893-95 (2008); 18A Charles Alan Wright, ArthurR.
`Miller & Edward H. Cooper, Federal Practice & Procedure §§ 4449, 4451).
`“To decide whethera party other thanthe petitioneris the real party in
`interest, the Board seeks to determine whether someparty other than the
`petitioneris the ‘party or parties at whose behestthepetition has been
`filed.’” Wi-Fi One, LLC v. Broadcom Corp. , 887 F.3d 1329, 1336 (Fed. Cir.
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`2018) (“Wi-Fi Remand’”’)(emphasis added). “Aparty that funds and directs
`and controls an IPR orpost-grant review proceeding constitutes a ‘real
`party-in-interest,’ even if that party is not a ‘privy’ ofthe petitioner.” Id.
`Also, several relevant factors for determining whethera party is an RPI
`includethe party’s relationship with the petitioner, the party’s relationship to
`the petition, and the nature ofthe entity filing the petition. Applications in
`Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed. Cir. 2018)
`
`(“AIT”).
`The conceptof“privity” is more expansive and encompassesparties
`that do not necessarily need to beidentified in the petition as RPIs. TPG, 77
`Fed. Reg. at 48,759. Thelegislative history endorsed the expression of
`
`“privy” as follows:
`The word “privy” has acquired an expanded meaning. The
`courts,
`in the interest of justice and to prevent expensive
`litigation, are siriving to give effect lu judgments by exlteudiy
`“privies” beyond the classical description. The emphasis is not
`on the concept of identity of parties, but on the practical
`situation. Privity is essentially a shorthand statement that
`collateral estoppelis to be applied in a given case; there is no
`universally applicable definition of privity. The conceptrefers
`io a reluiiunship between the party lo be esivpped und the
`unsuccessful party in the prior litigation which is sufficiently
`close so as to justify application of the doctrine of collateral
`estoppel.
`154 Conc.REC. $9987(daily ed. Sept. 27, 2008) (statement of Sen. Kyl)
`
`(emphasis added); 157 CoNG. REC. $1376 (daily ed. Mar. 8, 2011)
`(incorporating prior 2008 statement). “[T]Jhe standardsforthe privity
`inquiry mustbe groundedin due process.” WesternGecoLLC v. ION
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`Geophysical Corp., 889 F.3d 1308, 1318-19 (Fed. Cir. 2018). “[T]he
`privity inquiry in this context naturally focuses on the relationship between
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`the namedIPR petitioner and the party in theprior lawsuit. For example,it
`
`is important to determine whetherthe petitioner and the prior htigant’s
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`relationship—asit relates to the lawsuit—is sufficiently close that it can be
`fairly said that the petitioner hada full and fair opportunity to litigate the
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`validity of the patent in that lawsuit.” . /d. (emphases added).
`In Taylor, the United States Supreme Court identified a
`non-exhaustivelist of six categories under which nonparty preclusion based
`
`onaprivity relationship may be found: (1) an agreement betweentheparties
`to be bound;(2) pre-existing substantive legal relationships between the
`
`parties; (3) adequate representation by the namedparty; (4) the nonparty’s
`controlofthe priorlitigation; (5) where the nonpartyacts as a proxy for the
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`namedparty to re-litigate the same issues; and (6) wherespecial statutory
`
`schemesforeclose successivelitigation by the nonparty (e.g., bankruptcy or
`probate). Taylor, 553 U.S. at 893-95, 893 n.6. The Supreme Court noted
`thatthis list of the six “established grounds for nonparty preclusion”is
`“meantonly to provide a framework... , not to establish a definitive
`
`taxonomy.” Jd. at 893 n.6. Each groundaloneis sufficient to establish
`privity between a nonparty and a namedparty in the priorlitigation.
`/
`
`WesternGeco, 889 F.3d at 1319-20.
`Petitioner“bearsthe ultimate burdenofpersuasion to showthatits
`petitions are not time-barred under § 315(b) based on a complaint served on
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`an alleged real party in interest more than a year earlier.” Worlds Inc.v.
`
`Bungie, Inc.,903 F.3d 1237, 1242 (Fed. Cir. 2018).
`
`2. Whether Google is a Real Party in Interest
`Patent Ownercontends that Google is an RPI because (1) Google and
`Samsung havea preexisting, established relationship that includes
`indemnification obligations; (2) Google and Samsung are cooperating in the
`
`related district court case, including by submitting joint invalidity
`
`contentions that rely on some of samepriorart usedin the Petition;
`
`(3) Samsungwill benefit from the Petition; and (4) Google and Samsung
`each filed severalpetitions tor interpartes review ofPatent Owner’s patents
`within a few days of one another. Prelim. Resp. 1-9; Sur-Reply 1-6.
`Samsung contendsthat Google is not indemnifying Samsungandthat
`Google is not involved in this proceeding. Reply. 1-10.
`Onthis record, Samsungshowssufficiently that Google is not an RPI.
`First, the customer-supplier relationship between Samsung and Google does
`
`not indicate that Google is an RPI. Google is not indemnifying Samsung or
`otherwise funding or controlling Samsung’s defensein the related district
`court case. Ex. 10309 22; Ex. 1047. Thus, the evidence showsthat
`Samsung and Google have a standard customer-supplier relationship, which
`by itself does not make Google anRPI. See WesternGeco, 889 F.3d at 1321
`(“ION and PGShadacontractualandfairly standard customer-manufacturer
`relationship regarding the accused product,” which “does not necessarily
`suggest that the relationship is sufficiently close .
`.
`. that the parties were
`litigating ... the IPRs as proxies for the other.”).
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`Second,the relationship between Google andthe Petition does not
`indicate that Google is an RPI. Samsung independently prepared andfiled
`the Petition without any involvement from Google. Ex. 1035 {J 3-5.
`Indeed, Google filed its own petitions. See, e.g., IPR2018-01051, Paper 2;
`IPR2018-01052, Paper2. A member ofGoogle’s PatentLitigation Legal
`team, Joseph Shear,testifies that Google and Samsungfiled their petitions
`within a few daysof one another becausetheir respective deadlines under35
`U.S.C. § 315(b) were a few days apart. Ex. 1030921. Thus, even if
`Google’s and Samsung’s interests, as co-defendants in the district court
`litigation, generally are aligned in that they have been charged with
`infringing the samepatents (as would normally betrue forall
`co-defendants), the evidence showsthat the parties acted independently, and
`Samsungdid notfile the Petition at the behest or on behalf of Google. See
`Wi-Fi Remand, 887 F.3d at 1340-41 (“‘Wi-Fi’s evidence showedthat
`Broadcom’s interests as to the issue ofinfringement were generally aligned
`with thoseofits customers,”but“there is no evidentiary support for Wi-Fi’s
`theory that Broadcom wasacting at the behest or on behalf of the D-Link
`defendants.’’).
`
`Third, the nature ofthe relationship between Google and Samsungas
`parties charged with infringing the samepatents doesnotindicate that
`Google is an RPI. Google and Samsung are independent companiesthat
`Patent Ownerseparately accusedofpatent infringement. Exs. 2022, 2029.
`Patent Owner’s cases against Google and Samsung were consolidated for
`pretrial purposes (Ex. 2023), and, thus, as would normally be expected in
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`suchsituations, Google and Samsung cooperatedto file joint proposed claim
`
`constructions andjoint invalidity contentions (Ex. 2020; Ex. 2024, 4). But,
`
`as discussed, the evidenceestablishes that Google is not funding or
`
`controlling Samsung’s defense, and that Samsungpreparedandfiled the
`Petition independently, without any involvement from Google. Ex. 1035
`{1 3-5; Ex. 1030 9f 20, 22; Ex. 1047. Thus, the evidence doesnotindicate
`anything aboutthe nature of Google or Samsung’s cooperationin litigation
`
`with Patent Owner that would make Google anRPI. Cf AIT, 897 F.3d at
`
`1351 (“The evidenceof record reveals that RPX,unlike a traditional trade
`association,is a for-profit company whoseclients pay forits portfolio of
`
`‘patent risk solutions.’”’).
`Therefore, based on thetotality ofthe circumstancesatthis time, we
`
`determine that Samsung has shownthat Google is not an RPI.
`
`3. Whether Google is a Privy of Petitioner
`Patent Ownerargues that Googleis a privy of Petitioner. Prelim.
`Resp. 1-13. According to Patent Owner, Google had the opportunity to
`control Samsung’s challenges to the ’127 patent because Samsunghas
`tendered controlofits defense to Google. Sur-Reply 1-6. Patent Owner
`further contendsthat Google is a privy of Petitioner under each ofthe six
`
`Taylor considerations. Id.at 6.
`The evidenceof record indicates that Google is not a privy of
`Petitioner. As explained in A/T,“a ‘privity’ is a party that has a direct
`relationship to the petitioner with respectto the allegedly infringingproduct
`or service.” AIT, 897 F.3d at 1350 (emphasis added). Here, Patent Owner
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`improperlyrelies uponprior indemnification agreements unrelatedto the
`productsalleged to infringe the °127 patent. See, e.g., Prelim. Resp. 6-7, 11
`(citing Ex. 2028 (a copy of a 20/1 Mobile Application Distribution
`Agreementsetting forth the conditions under which Google will incur
`indemnification obligations, but not identifying or accepting anyparticular
`indemnity tender)); id. at 1-13 (arguing that“the parties have a history of
`mutual indemnity obligations for such products dating back to 2011 and
`
`Google has accepted Samsung requests for indemnification in priorpatent
`infringement actions” (emphasis added)). Similarly, the 2014 articles cited
`by Patent Ownerare not related to the products alleged to infringe the *127
`
`patent. Exs. 2041, 2042, 2050.
`Patent Owner’s argumentthat Google had the opportunity to control
`the related infringementaction against Samsungis not supported by the
`evidence of record. Sur-Reply 1-6. This record showsthat there is no
`indemnification agreement between Google and Samsungasto the products
`accused ofinfringing the ’127 patent. Ex. 1047, 3.
`In fact, the evidence
`indicates that the indemnification provisions in the 2017 Mobile Application
`Distribution Agreement (Ex. 1051, “the 2017 MADA”) are directed to other
`products. Ex. 1047; Ex. 10304 22.
`Wealso are not convinced by Patent Owner’s contention that
`Samsung hastenderedcontrolofits defense to Google. Sur-Reply 1-6.
`That contention rests mainly on the emails sent by Mr. Cheolwoo Ahnfrom
`Samsung’s Licensing Team. Exs. 1031-1033. However,asstated in the
`response letter from Google’s DirectorofLitigation, Mr. Renny Hwang, to
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`Mr. Ahn, noneof the products alleged to be infringing the ’127 patentin the
`lawsuit asserted against Samsung are “Google Applications as defined by
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`the 2017 MADA.” Ex. 1047, 3. Nothing in this record showsPatent
`Owner’s infringement contentions are directed to the products covered by
`the 2017 MADA,or any other indemnification agreement between Google
`and Samsung. Therefore, Patent Owner’s contention that Google had an
`opportunity to control Samsung’s defensein the related infringement action
`is not supported by the evidenceof record.
`Basedon the evidencein this record, we also do not agree with Patent
`Owner’s arguments that Google is a privy ofPetitioner under eachofthe six
`Taylor grounds. Sur-Reply 1-6.
`As to the first and second Taylor grounds, Patent Ownerarguesthat
`Samsung and Google have“an agreement betweentheparties to be bound”
`and a “pre-existing substantive legal relationship.” /d. at 6. In Patent
`Owner’s view,they are “long-time business partners, MADAco-parties,
`indemnitors/ indemnitees as to Android phone products and common-
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`interest parties as to the patents themselves.” Jd.
`As discussed above, however, the evidenceofrecordindicates that the
`
`prior indemnification agreements and the 2017 MADApertain to other
`products, not those alleged to infringe the ’127 patentin the lawsuit asserted
`against Samsung. Exs. 1047, 1051, 2028. As Petitioner explains, this record
`showsthere is no indemnificalion apreement that binds Samsung and
`Google together with respect to the accused products. Reply 4-6.
`Therefore, Samsung and Google merely have a standard customer-supplier
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`rclationship as to the accused product, whichbyitself “does not necessarily
`suggestthat the relationship is sufficiently close that both should be bound
`by the trial outcome and related estoppels, nor does it suggest, without more,
`that the parties werelitigating either the district court action or the IPRs as
`proxies for the other.” See WesternGcco, 889 F.3d at 1321.
`In addition, the CommonInterest Agreements makeclear that the
`
`parties’ agreementsrelated to the infringementlitigation do not apply to
`pctitions for interpartes review. Ex. 1034, 1; Ex. 1048, 1. Similarly,
`Mr. Hwang’s letter indicates that “any assistance Google mayprovide does
`not extend to any petitions. .
`. filed or prepared by Samsung.” Ex. 1047,4.
`The evidence showsthat Samsungacted independently asto the filing ofthis
`Petition. Ex. 103599] 3-4. Also, Samsung and Google are named in
`separate infringementactions, which have been consolidatedfor pre-trial
`proceedings (e.g., case schedule and claim construction). Reply 5-6. Even
`under the CommonInterest Agreements, each party maintainstherightto
`controlthelitigation of its own case and each casewill betried separately.
`Ex. 1047, 4. Significantly, “a common desire among multiple parties to see
`a patentinvalidated, without more, doesnot establish privity.” See
`
`WesternGeco, 889 F.3dat 1321.
`Accordingly, at this time, Petitioner has established sufficiently that
`“there exists no agreement betweenthe parties subjugating Samsungto
`Google in cithcr thelitigation or the IPRs.” Reply 4-6. And the evidence of
`record supportsPetitioner’s assertion that there is no substantive legal
`relationship between Google and Samsungwith respect to the accused
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`products. Jd. at 6. In short, Petitioner has established onthis recordthat
`Google is nota privy ofPetitioner underthe first and second Taylor
`grounds.
`|
`As to the third and fourth Taylor grounds, Patent Ownerargues that
`Samsung’s “tender of full control to Google under the MADAclearly
`satisfies the adequate representation and assumptionofcontrolfactors.”
`Sur-Reply 6. However, as discussed above, the evidenceof recordindicates
`that the indemnification provisions in the 2017 MADAdonot applyto the
`accused products, andthereis insufficient evidence to show that Google had
`an opportunity to control the co-pending lawsuit against Samsung,
`Ex. 1047, 3-4. Google is not indemnifying Samsungor otherwise funding
`or controlling Samsung’s defense. Jd.; Ex. 1030 {J 19-22. As Petitioner
`notes, Samsung and Google are namedin separate and distinct cases, and
`each party hasretained its own counseland maintains control overits own
`case. Reply 5-7. Samsungalone has controlled and fundedthis Petition
`and proceeding. Ex. 1035 §§ 3-5; Ex. 1047, 4. On this record,Petitioner
`has established at this time that Googleis nota privy of Petitioner under the
`
`third and fourth Taylor grounds.
`As to the fifth Taylor ground, Patent Ownerargues that Google has
`acted as a proxy for Samsungbyvirtueofthe parties’ “joint preparation of
`invalidity contentions raising most of the combination references asserted in
`the IPRs and thcir discussions of the IPRsprivr to filing.” Sur-Reply6.
`However,as discussed above, Samsung independently prepared andfiled
`this Petition without any involvement from Google. Ex. 1035 J 3-5.
`17
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`Indeed, Google filed its own petitions. See, e.g., IPR2018-01051, Paper2;
`IPR2018-01052,Paper2. Mr. Sheartestifies that Google and Samsungfiled
`their petitions within a few days of one another because their respective
`deadlines under § 315(b) were a few days apart. Ex. 1030921. Moreover,
`the parties’ agreementswith regard to the ongoinglitigation do not apply to
`IPR proceedings. Ex. 1034, 1; Ex. 1047, 4; Ex. 1048, 1. Based on the
`evidencein this record, we agree with Petitioner that Google did not act as a
`proxy for Samsung. Reply 10.
`In sum,Petitioner has establishedatthis
`time that Google is not a privy of Petitioner underthefifth Taylor ground.
`As to the sixth Zaylor ground, Patent Ownerargues that § 315(b) is a
`special statutory schemeasidentified in Taylor becauseit serves “to prevent
`successive challenges to a patent.” Sur-Reply 6. Patent Owner’s argument
`is misplaced. As noted above, § 315(b) provides Petitioner a one-yeartime
`period to file a petition. The legislative history indicates that § 315(b) was
`intendedto set a “deadline for allowing an accused infringer to seek inter
`partes review after he has been sued for infringement.” 157 CONG. REC.
`$5429 (daily ed. Sept. 8, 2011) (statementof Sen. Kyl). The deadline helps
`to ensure that interpartes review is notused asa tool for harassment by
`“repeatedlitigation and administrative attacks.” H.R. Rep. No. 112-98 at 48
`(2011), as reprinted in 2011 U.S.C.C.A.N. 67, 78. “(T]he rationale behind
`§ 315(b)’s preclusion provision is to prevent successive challenges to a
`patent by thosc whopreviously have had the opportunity to make such
`challenges in priorlitigation.” WesternGeco, 889 F.3d at 1319.
`
`18
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`Llere, as discussed above, Samsungtimely filed its Petition within one
`year after it was served with a complaintalleging infringementof the ’127
`patentin accordance with § 315(b). Nothing in this record showsthat
`Samsungusesthis Petition as a tool for harassmentby repeatedlitigation
`and administrative attacks. In sum,Petitioner has established on this record
`that Google is nota privy of Petitioner under the sixth Taylor ground.
`
`4. Conclusion as to the § 315(b) Issue
`For the foregoing reasons, we determinethat Petitioner has shown
`adequately that Google is neither an RPI nora privy of Petitioner. We,
`therefore, conclude that Petitioner has demonstrated sufficiently at this time
`that its Petition is not time-barred under § 315(b).
`
`B. Discretionary Denial Under 35 U.S.C. § 325(d)
`
`In determining whetherto institute an inter partes review,“the
`Director may take into account whether, andrejectthe petition or request
`because, the sameor substantially the sameprior art or arguments previously
`werepresentedto the Office.” 35 U.S.C. § 325(d). We have consideredthe
`factors set forth in Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`Case IPR2017-01586,slip op. at 17-18 (Paper 8) (PTAB Dec.15, 2017)
`(informative), and determinedthe factors do not weigh in favorofexercising
`
`discretion under § 325(d).
`Patent Ownerarguesthat the Office already considered the question
`whetherthe challenged claims are supported by subject matter materially
`identical to that appearing in the 070 application. Prelim. Resp. 41-42. As
`
`19
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`support, Patent Owneravers that, during the prosecution of the ’127 patent,
`Patent Owner amendedthe claims and emailed a claim chart to the
`Examiner, showing where the newly addedlimitations were supported in the
`Specification of the ’127 patent. Jd. (citing Ex. 2046).
`However, Patent Ownerproffers no creditable cvidenccthat the
`subject matter appeared in the ’070 application had been discussed
`substantively by the Examiner during the prosecution of the ’127 patent.
`
`Moreover, the Federal Circuit has rejected the approachthat “would create a
`presumption that a patentis entitled to the benefit of the filing dateofits
`provisional precursor”as “unsound”and “because the PTO does not
`examine provisional applications as a matter of course; such a presumption
`is therefore notjustified.” Dynamic Drinkware, LLC v. National Graphics,
`Inc., 800 F.3d 1375, 1380 (Fed. Cir. 2015). “[B]ecause the PTO does not
`
`examinepriority claims unless necessary, the Board hasnobasis to presume
`that a. .. patent is necessarily entitled to the filing date ofits provisional
`application.” Id.; see also PowerOasis, Inc. v. T-Mobile USA, Inc. ,522 F.3d
`1299, 1305 (Fed. Cir. 2008) (“Whenneither the PTO northe Board has
`previously consideredpriority, there is simply no reason to presumethat
`claims in a [continuation-in-part] application areentitled to the effective
`filing date ofanearlier filed application. Since the PTO did not make a
`determination regardingpriority, there is no findingforthedistrict court to
`defer to.”). For these reasons, we decline to exercise our discretion under
`
`§ 325(d) to deny the Petition.
`
`20
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`C. Pulent Owner's Procedural Arguments
`
`Patent Ownerarguesthat the Petition should be denied for “providing
`
`long string cites of paragraphs,figures, and other citations without any
`quotations,parentheticals or explanations of how those variouscitations
`support its arguments.” Prelim. Resp. 15-16. According to Patent Owner,
`the Petition lacks clarity becauseit uses internal cross-references and
`citations of large volumesof evidence withoutspecifically identifying what
`the Petition is relyng upon. Id. at 16-20. Patent Owneralso arguesthat the
`Petition uses figures excessively to circumvent the word limit. Jd. at 21-22.
`Upon consideration of Patent Owner’s arguments andthePetition, we
`are not convincedthat denial of institution is warranted. The Petition asa
`
`whole provides clear anddetailed explanations as to howthepriorart
`references teachor suggest each claim limitation. See generally Pet. For
`instance, in the allegedly egregious example cited by Patent Owner (Prelim.
`Resp. 15-16), Patent Ownernarrowly focuses on one sentenceand ignores
`the detailed explanations provided immediately in the next three sentences in
`the Petition. Pet. 57-58. Petitioner’s prior art citations provide supportfor
`the explanations, showing wherethe reference discloses the subject matter
`ivlied upon. The merefact that a reference teachesthe claimed subject
`matter in multiple places, and that the Petition comprehensively directs our
`attentionto all of the locations where the subject matter is being discussedor
`disclosed, does not warrant a denial ofthe Petition. Furthermore, there is no
`prohibition against referencing back andrelying uponthe detailed
`explanations of a similar limitation or an independentclaim,especially here
`21
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`where the involved patent hasatotal of 50 claims with overlapping claimed
`
`subject matters.
`In addition, the use ofthe figures in the Petition seems reasonable,as
`they provide further support for the detailed explanations. See generally Pet.
`The only figure that contains excessivetext is Chueh’s Figure 3, which
`depicts a flow chart for performing wake-up event management. Jd. at21.
`Petitioner providesthis figure to show how Chuehteachesthe preambleof
`claims 1, 10, and 17—.g., “A method for managing resources on a mobile
`device.” Jd. at 19-21. Even if we wereto consider the explanations alone
`
`without the texts on Chueh’s Figure 3, Petitioner’s analysis is clear as to
`how Chuehteachesthe subject matter in the preamble of these claims, as
`
`discussed below in our obviousnessanalysis. Id.
`| Uponreview ofthe Petition as a whole, we are not convinced that
`denial of institution is warranted.
`
`D. Claim Construction
`
`Theinstant Petition was filed May 21, 2018, prior to the effective date
`of the rule change that replaces the broadest reasonableinterpretation
`(“BRI”) standard. See Changesto the Claim Construction Standf
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