Trials@uspto.gov
`571-272-7822
`
`Paper13
`Date: July 28, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`Vv.
`
`SEVEN NETWORKS, LLC,
`Patent Owner.
`
`IPR2020-00254
`Patent 9,516,127 B2
`
`Before THU A. DANG, KARL D. EASTHOM,and JONI Y. CHANG,
`Administrative Patent Judges.
`
`CHANG,Administrative Patent Judge.
`
`DECISION
`Denying Institution ofJnter Partes Review
`35 U S.C. $314
`
`
`571-272-7822
`
`Paper13
`Date: July 28, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`Vv.
`
`SEVEN NETWORKS, LLC,
`Patent Owner.
`
`IPR2020-00254
`Patent 9,516,127 B2
`
`Before THU A. DANG, KARL D. EASTHOM,and JONI Y. CHANG,
`Administrative Patent Judges.
`
`CHANG,Administrative Patent Judge.
`
`DECISION
`Denying Institution ofJnter Partes Review
`35 U S.C. $314
`
`
`
`IPR2020-00254
`Patent 9,516,127 B2
`
`I.
`
`INTRODUCTION
`
`Apple Inc. (“Petitioner”) filed a Petition requesting an interpartes
`review (“IPR”) ofclaims 1-50 (“the challenged claims”) of U.S. Patent
`
`No. 9,516,127 B2 (Ex. 1001, “the ’127 patent”). Paper3 (“Pet.”), 1.
`
`Petitioner also filed anotherPetition (“the ’255 IPR Petition”) in IPR2020-
`
`00255, challenging the same claims of the same patent. IPR2020-00255,
`Paper 3. Ineach IPR proceeding, Petitioner filed a Notice ranking the
`Petitions in the order that Petitioner wishes the Boardto consider the
`
`merits—namely, ranking the ’255 IPR Petition first and the instant Petition
`second. Paper2 (“Notice”). SevenNetworks, LLC (“Patent Owner”) filed a
`Preliminary Response,arguing that the instant Petition should be denied as
`an improperparallel petition. Paper 9 (“Prelim. Resp.”), 37-52.
`For the reasonsstated below, we exercise our discretion under
`
`§ 314(a) and denyinstitution of interpartes review in the instant proceeding,
`
`A. Related Matter
`
`Theparties indicate that the ’127 patent is involved in Seven
`Networks, LLC v. Apple Inc., Case No. 2:19-cv-115 (E.D. Tex.). Pet. 74-75;
`Paper 6, 1. The ’127 patent also wasinvolvedin the following IPR
`
`proceedings:
`
`Google LLC v. SEVENNetworks, LLC, IPR2018-01051,
`Paper 33 (PTAB Feb.14, 2019) (terminatedafterinstitution);
`Google LLC v. SEVENNetworks, LLC, IPR2018-01052, Paper
`33 (PTAB Feb.14, 2019) (terminated after institution);
`Samsung Elecs. Co., Ltd. v. SEVENNetworks, LLC,
`IPR2018-01106, Paper 29 (PTAB Jan. 11, 2019) (terminated
`after institution);
`
`2
`
`
`
`IPR2020-00254
`Patent 9,516,127 B2
`
`Samsung Elecs. Co., Ltd. v. SEVENNetworks, LLC, IPR2018-
`01108, Paper 30 (PTAB Jan. 11, 2019) (terminated after
`institution);
`ZTE USA, Inc. v. SEVENNetworks, LLC, IPR2019-00460,
`Paper 18 (PTAB June6, 2019)(terminated beforeinstitution);
`Samsung Elecs. Co., Ltd. v. SEVENNetworks, LLC, IPR2019-
`00457, Paper 11 (PTAB Jan. 29, 2019) (terminated before
`institution);
`Samsung Elecs. Co., Ltd. v. SEVENNetworks, LLC, 1PR2019-
`00458, Paper 9 (PTAB Jan. 29, 2019) (terminated before
`institution). Paper 6, 1—2.
`
`B. The ’127patent
`
`The ’127 patent claimspriority to U.S. Provisional Application
`
`No. 61/805,070 (the “’070 application”), which wasfiled on
`
`March 25, 2013. Ex. 1001, codes (54), (60). The ’127 patent discloses a
`
`system and method“for tracking resources used bytriggers suchas alarms
`and timers that are used by mobile applications to schedule tasks and
`
`intelligently manipulating the timing ofthetriggers to optimize usage of
`
`resources.” Jd. at code (57).
`
`
`
`IPR2020-00254
`Patent 9,516,127 B2
`
`Figure 1A-1 of the °127 patent is reproduced below.
`
`
`Set A1 tor
`
`
`Set Actual
`Time
`
`C+ 18)
`seconds
`
`ee+§)saconds
`
`
`
`
`
`Resource
`Uptizaticjon
`
`FIG. 1A-1
`
`Figure 1A-1 of the ’127 patentillustrates an example resource
`
`utilization tracking and intelligent alarm managementoftriggers across
`
`multiple applications on a mobile device. Jd. at 5:15-20. In particular,
`
`Figure 1A-1 showsintelligent alarm manipulator and resource tracker
`module 114 havingintelligent alarm manger 115 and resourceutilization
`tracker 116. Id. Applications 101, 105, and 107 are exemplary applications
`of a mobile device, which can set alarmsfor different times to perform
`
`different tasks. Jd. at5:24—26. Alarms Al, A2, and A3 are intercepted
`
`and/or tracked byintelligent 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, or tasks triggered by the alarms. /d. at 5:33-36.
`
`For example, assuming that alarm Al wakes up the mobile device from the
`
`4
`
`
`
`IPR2020-00254
`Patent 9,516,127 B2
`
`sleep mode, whenalarm AIis triggered, the mobile device’s battery/power
`
`resource and CPU resource can be utilized. Jd. at 5:36-39.
`
`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 25-32 depend from
`
`claim 24; claims 34—41 depend from claim 33; and claims 43-50 depend
`
`from claim 42. Claim 1 isillustrative:
`
`1. A method for 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 is sensed.
`
`for multiple
`
`Ex. 1001, 23:60—24:5.
`
`
`
`IPR2020-00254
`Patent 9,516,127 B2
`
`D. Prior Art Relied Upon
`
`Petitioner relies upon the referenceslisted below (Pet. 2):
`
`
`
`
`
`
`
`
`
`
`
`
`
`Giaretta, US 2012/0185577 Al July 19,2012|1004
`
`
`Backholm, US 2012/0023236 Al Jan. 26, 2012|1005
`
`Pathak, “Whatis keeping myphone awake?
`
`Characterizing andDetecting No-Sleep Energy June 25, 2012|1006
`
`
`Bugs in Smartphone Apps,” ACM (2012).
`
`Aleksic, US 2008/0057894 Al Mar. 6, 2008|1007
`
`
`
`
`Hackborn, US 8,280,456 B2 Oct. 2, 2012|1008
`
`
`Kim, US 2012/0315960 Al Dec. 13, 2012|1016
`
`
`
`
`
`
`
`E. Asserted Grounds ofUnpatentability
`
`Petitioner asserts the following grounds of unpatentability (Pet. 1):
`
`
`
`
`
`
`
`ee
`
`
`
`
`
`
`
`6
`
`
`
`IPR2020-00254
`Patent 9,516,127 B2
`
`Tl. ANALYSIS
`
`Discretionary Denial Under 35 U.S.C. § 314(a)
`
`Petitioner argues that institution is warranted in both the instant IPR
`proceeding and the ’255 IPR proceeding, which challenge the same claims
`of the ’127 patent. Pet. 2—4; Notice, 1-4. PatentOwner countersthat the
`
`instant Petition should be denied for improperparallel petitioning. Prelim.
`
`Resp. 37-52.
`Institution of an interpartes reviewis discretionary. Section 314(a)
`oftitle 35 of the United States Code providesthat “[t]he Director may not
`
`authorize an inter partes review to be instituted unless the Director
`
`determinesthat the information presentedin thepetition .. . and any
`
`. showsthat there is a reasonable likelihood that the petitioner
`response. .
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” The Supreme Court ofthe United States (“the Supreme Court”)
`
`has explained that, because § 314 includes no mandateto institute review,
`
`“the agency’s decision to denya petition is a matter committed to the Patent
`
`Office’s discretion.” Cuozzo Speed Techs., LLC v. Lee, 1368. Ct. 2131,
`
`2140 (2016); see also Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356,
`
`1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is
`permitted, but never compelled, to institute an IPR proceeding”). The
`
`Director has delegated his authority under § 314(a) to the Board. 37 C.F.R.
`
`§ 42.4(a) (“The Board institutes the trial on behalf of the Director.”’).
`
`
`
`IPR2020-00254
`Patent 9,516,127 B2
`
`In deciding whetherto institute interpartes review, we considerthe
`guidance in the Consolidated Trial Practice Guide (“CTPG”)', which sets
`
`forth the following:
`
`Parallel Petitions Challenging the Same Patent. Based on the
`Board’s experience, one petition should be sufficient
`to
`challenge the claims of a patent in mostsituations. Two or more
`petitionsfiled against the same patent at or about the sametime
`(e.g., before the first preliminary response by the patent owner)
`mayplace a substantial and unnecessary burden on the Board and
`the patent ownerand could raise fairness, timing, and efficiency
`concerns. See 35 U.S.C. §316(b). In addition, multiple petitions
`by a petitionerare not necessary in the vast majority ofcases. To
`date, a substantial majority of patents have been challenged with
`a single petition.
`CTPG, 59. Nonetheless, “more than onepetition may be necessary,
`including for example, when the patent ownerhasasserted a large numberof
`claimsin litigation or when thereis a dispute aboutpriority date requiring
`
`arguments under multiple prior art references.” Jd. Toaid the Board, a
`petitioner whofiles two or morepetitions challenging the samepatent
`should “identify: (1) a ranking of the petitions in the order in which it wishes
`the Board to consider the merits .
`.
`.
`, and (2) a succinct explanation of the
`
`differences betweenthe petitions... ..” Jd. at 59-60.
`
`Here,Petitionerfiled a Notice explaining the differences among the
`
`Petitions and rankingthe Petitions in the order that Petitioner wishes the
`
`Board to consider the merits. Notice, 1-4. In particular, Petitioner requests
`
`that we first consider the ’255 IPR Petition.
`
`/d. at1. For the reasons
`
`' Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`8
`
`
`
`IPR2020-00254
`Patent 9,516,127 B2
`
`providedin our Decision on Institution in IPR2020-00255, we concludethat
`Petitioner has established a reasonablelikelihood ofprevailing in showing
`
`that the challenged claims of the ’127 patent are unpatentable. Therefore,
`
`weinstitute a review onall of the challenged claims in IPR2020-00255.
`
`Petitioner asserts that both proceedings are necessary, advancing three
`
`arguments. Notice, 1-4. First, Petitioner argues that the present
`circumstanceis consistent with the example in the Trial Practice Guide
`
`becausethere is a dispute aboutpriority date requiring arguments under
`
`/d. at 1-2. However, Patent Ownerstipulates
`multiple prior art references.
`that it will not attempt to antedate Chuehor Srinivasan. Prelim. Resp. 46
`
`(stating that “if the Board declinesto institute the -254 petition under
`
`§ 314(a), Patent Ownerstipulatesthat it will not challenge Chueh’s status as
`prior art in the -255 IPR”); Ex. 3001 (“Patent Owner confirmsthatits
`stipulation includes Srinivasan.”). Therefore, the possibility of Patent
`Ownerantedating the asserted references here does not warrantinstituting
`
`multiple IPR proceedings that challenge the same claim of the ’127 patent.
`
`Second,Petitioner arguesthat “[g]iven the large numberof claims
`
`being asserted [by Patent Ownerin therelatedlitigation], Petitioner is not
`able to fit all of its grounds against the asserted claimsinto a single petition, -
`but rather needs twopetitions to challenge the asserted claims.” Notice2.
`
`However, as Patent Ownerpoints out, the same claimsare challenged
`
`in both IPR proceedings. Prelim. Resp. 46-52 (arguing that the concern
`
`addressed in the CTPG isthat a petitioner could not challenge all claims
`within a single petition). Petitioner was able to addressall 50 claims ofthe
`
`’127 patent in eachofits Petitions. As discussed above, weinstitute onall
`
`9
`
`
`
`IPR2020-00254
`Patent 9,516,127 B2
`
`of the challenged claims andall asserted grounds in IPR2020-00255.
`
`Therefore, none ofthe claims of the ’127 patent goes unchallenged.
`
`Finally, Petitioner argues that the Board previously instituted similar
`
`petitions in IPR2018-01 106 and IPR2018-01108. Notice 3. However, as
`
`Patent Ownerpoints out (Prelim. Resp. 52), those IPR proceedings were
`
`instituted prior to the guidanceforparallel petitions challenging the same
`patentsets forth in the July 2019 Trial Practice Guide Update? and the
`Consolidated Trial Practice Guide (Nov. 21, 2019). See IPR2018-01 106,
`
`Papers 21, 30 (Institution Decision); IPR2018-01108, Papers 22, 31
`
`(Institution Decision).
`
`Hence,in accordance with Petitioner’s ranking, we first considered
`
`the Petition and Patent Owner’s Preliminary Response in IPR2020-00255,
`
`andinstituted on all of the challenged claims and groundsset forth in the
`
`’255 Petition. The instant Petition does not contain sufficiently material
`
`differences to support instituting an additional interpartes review of the
`127 patent. Accordingly, we exercise our discretion under § 314(a) to deny
`
`institution of review in the instant proceeding.
`
`Il. CONCLUSION
`
`For the foregoing reasons, based on a balanced assessmentofthe
`
`circumstancesofthis case, we exercise our discretion under § 314(a) and
`
`* See pages 26-28 ofthe July 2019 Trial Practice Guide Update, whichis
`available at https://www.uspto. gov/sites/default/files/documents/trial-
`practice-guide-update3.pdf.
`
`10
`
`
`
`IPR2020-00254
`Patent 9,516,127 B2
`
`deny the instant Petition requesting institution of interpartes review of the
`
`”127 patent.
`
`For the foregoing reasons,it is hereby
`
`IV. ORDER
`
`ORDEREDthatthe Petition is denied asto all challenged claims and
`
`notrial is instituted.
`
`11
`
`
`
`IPR2020-00254
`Patent 9,516,127 B2
`
`PETITIONER:
`
`W. Karl Renner
`Jeremy Monaldo
`Kim Leung
`Fish & Richardson P.C.
`axf-ptab@fr.com
`jjm@fr.com
`leung@fr.com
`
`PATENT OWNER:
`
`Kenneth Weatherwax
`Bridget Smith
`Flavio Rose
`Edward Hsieh
`Parham Hendifar
`Patrick Maloney
`Jason C. Linger
`Lowenstein & Weatherwax LLP
`weatherwax@lowensteinweatherwax.com
`smith@lowensteinweatherwax.com
`rose@lowensteinweatherwax.com
`hsieh@lowensteinweatherwax.com
`hendifar@lowensteinweatherwax.com
`maloney@lowensteinweatherwax.com
`linger@lowensteinweatherwax.com
`
`12
`
`
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