Paper 14
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: January 28, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., SAMSUNG TELECOMMUNICATIONS AMERICA,
`LLC, and SAMSUNG AUSTIN SEMICONDUCTOR, LLC,
`
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`Patent Owner.
`____________
`
`Case IPR2015-00114
`Patent 8,023,580 B2
`____________
`
`Before JAMESON LEE, HOWARD B. BLANKENSHIP, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`DECISION
`Denial of Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Denial of Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`

`

`IPR2015-00114
`Patent 8,023,580 B2
`
`
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`I. BACKGROUND
`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc.,
`
`Samsung Telecommunications America, LLC, and Samsung Austin
`Semiconductor, LLC (collectively, “Petitioner”) filed a petition requesting
`inter partes review of claims 2, 19, 49, 52, 53, and 59 of U.S. Patent No.
`8,023,580 B2 (“the ’580 patent”) (Ex. 1201) under 35 U.S.C. §§ 311–319.
`See Paper 1 (Petition, or “Pet.”). With the Petition, Petitioner filed a motion
`for joinder (Paper 3, “Mot. Join.”), seeking to join with Samsung Electronics
`Co. v. Rembrandt Wireless Technologies, LP, Case IPR2014-00518 (“IPR
`’518”). Patent Owner Rembrandt Wireless Technologies, LP filed an
`opposition to the motion for joinder (Paper 8, “Opp.”) and a preliminary
`response (see Paper 10, “Prelim. Resp.”). Petitioner filed a reply to the
`motion for joinder. Paper 9 (“Reply”). We have jurisdiction under 35
`U.S.C. § 314.
`
`For the reasons that follow, we deny the motion for joinder and do not
`institute an inter partes review as to any of the challenged claims of the ’580
`patent.
`
`
`A. Related Proceedings
`According to Petitioner, the ’580 patent is involved in the following
`lawsuit: Rembrandt Wireless Technologies, LP v. Samsung Electronics Co.,
`No. 2:13-cv-00213 (E.D. Tex.). Pet. 1. The same parties and patent also are
`involved in Samsung Electronics Co. v. Rembrandt Wireless Technologies,
`LP, Case IPR2014-00514 (PTAB) (institution denied on Sept. 9, 2014);
`Samsung Electronics Co. v. Rembrandt Wireless Technologies, LP, Case
`IPR2014-00515 (PTAB) (institution denied on Sept. 9, 2014); Samsung
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`IPR2015-00114
`Patent 8,023,580 B2
`
`
`Electronics Co. v. Rembrandt Wireless Technologies, LP, Case IPR2014-
`00518 (PTAB) (trial instituted on Sept. 23, 2014); and Samsung Electronics
`Co. v. Rembrandt Wireless Technologies, LP, Case IPR2015-00118 (PTAB).
`
`B. The ’580 Patent
`The ’580 Patent issued from an application filed August 19, 2009,
`which claimed priority under 35 U.S.C. § 120 through a chain of intervening
`applications to an application filed December 4, 1998, and which further
`claimed priority under 35 U.S.C. § 119 to a provisional application filed
`December 5, 1997.
`The technical field of the patent relates to data communications and
`modulators/demodulators (modems), and in particular, to a data
`communications system in which modems use different types of modulation
`in a network. Ex. 1201, col. 1, ll. 19–23; col. 1, l. 56 – col. 2, l. 20.
`
`
`C. Illustrative Claim
`Claim 49, the sole independent claim that is challenged, is reproduced
`below.
`
`49. A computer-readable storage medium having
`computer executable instructions stored therein that when
`executed by a processor control a master transceiver, said
`computer executable instructions, comprising:
`first logic configured to transmit first information in a
`first modulation method for communication;
`second logic configured to transmit a first sequence to
`notify of a change from said first modulation method to a
`second modulation method;
`third logic configured to transmit second information in
`said second modulation method; and
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`IPR2015-00114
`Patent 8,023,580 B2
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`fourth logic configured to transmit a second sequence
`after the second information is transmitted, wherein the second
`sequence is transmitted in the first modulation method and
`indicates that communication has reverted to the first
`modulation method.
`
`D. Prior Art
`Boer
`US 5,706,428
`
`
`Jan. 6, 1998
`
`(Ex. 1204)
`
`E. Asserted Ground of Unpatentability
`Petitioner asserts the following ground of unpatentability as to claims
`2, 19, 49, 52, 53, and 59 (Pet. 3): obviousness under 35 U.S.C. § 103(a) over
`Admitted Prior Art (“APA”)1 and Boer.
`
`
`II. ANALYSIS
`
`A. Background
`In IPR ’518, Petitioner asserted that claims 2, 19, 49, 52, 53, and 59
`of the ’580 patent were unpatentable over APA and Boer. IPR ’518, Paper 4
`at 24– 25, 27, 33–34, 36–44, 48–49, and 56–57. We did not institute an
`inter partes review of claims 2, 49, 52, 53, and 59 based on that ground in
`IPR ’518, and explained as follows:
`Petitioner has not provided sufficient evidence or
`explanation in support of why the fact that Boer’s SIGNAL and
`SERVICE fields are always transmitted using DBPSK (the
`“first” modulation method) might demonstrate obviousness of
`the subject matter of claim 2. Petitioner has failed to show, in
`particular, how the SIGNAL and SERVICE fields might be
`
`
`1 In this proceeding and in IPR ’518, Petitioner asserts that Patent Owner
`made admissions in the ’580 patent disclosure and in the prosecution history
`of a parent application regarding prior art. Pet. 6–8; IPR ’518, Paper 4 at 5–
`7.
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`IPR2015-00114
`Patent 8,023,580 B2
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`deemed, as alleged, to “indicate” that communication from the
`master to the slave has reverted to the first modulation method,
`as recited in claim 2.
`Independent claim 49, from which challenged claims 52
`and 53 depend, recites a similar limitation with respect to how a
`sequence “indicates” that communication has reverted to the
`first modulation method. Petitioner relies, again, on Boer’s
`description of header 218 being always transmitted using the
`“first” modulation method. Petitioner’s asserted ground of
`obviousness with respect to claim 49, thus, fails for the same
`reasons as that of claim 2.
`Claim 59, which depends from independent claim 58,
`also recites a third sequence that is transmitted in the first
`modulation method that “indicates” communication from the
`master to the slave has reverted to the first modulation method.
`Petitioner submits, correctly, that Boer teaches that the
`SIGNAL and SERVICE fields in the header “indicate which
`modulation method is used to transmit DATA field 218.”
`“When Boer is combined with the APA, it could therefore
`indicate that communication from the master to the slave has
`reverted to the first modulation method.” Mr. Goodman repeats
`that “it could therefore indicate” that communication has
`reverted to the first modulation method and concludes,
`“[t]herefore, it is my opinion that claim 59 is obvious in view of
`the prior art.” Although it appears that Petitioner attempts to
`provide more explanation in its challenge of dependent claim
`59, as compared with that of claim 2 or 49, we are not
`persuaded there is a reasonable likelihood that Petitioner would
`prevail in its challenge of any of claims 2, 49, and 59.
`
`IPR ’518, slip op. at 14–15 (PTAB Sept. 23, 2014) (Paper16) (citations to
`record omitted). Nor did we institute an inter partes review of claim 19 on
`the obviousness ground over APA and Boer because Petitioner’s allegation
`that station 18 (Ex. 1204, col. 2, ll. 19–27; Fig. 1) can receive a “first”
`(DBPSK) modulation method transmission failed to demonstrate the
`obviousness of the transceiver which, according to claim 1, sends
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`IPR2015-00114
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`transmissions using at least two types of modulation methods, further being
`configured to receive data in the first modulation method in accordance with
`the requirements of claim 19. IPR ’518, slip op. at 16–17 (PTAB Sept. 23,
`2014) (Paper 16).
`We do not reach the merits of Petitioner’s additional reasoning in the
`instant Petition as to why Petitioner asserts that the subject matter of claims
`2, 19, 49, 52, 53, and 59 would have been obvious over the combination of
`APA and Boer. Instead, for the reasons discussed below, we exercise our
`discretion under 35 U.S.C. § 325(d) to deny institution of inter partes review
`in this proceeding.
`
`B. Principles of Law
`A petitioner is not entitled to multiple challenges against a patent:
`In determining whether to institute or order a proceeding under
`. . . chapter 31, the Director may take into account whether, and
`reject the petition or request because, the same or substantially
`the same prior art or arguments previously were presented to
`the Office.
`
`35 U.S.C. § 325(d) (titled: “MULTIPLE PROCEEDINGS”). Further, in
`construing our authority to institute inter partes review under 37 C.F.R.
`§ 42.108, we are mindful of the guidance provided in § 42.1(b): “[37 C.F.R.
`§ 42] shall be construed to secure the just, speedy, and inexpensive
`resolution of every proceeding.”
`
`
`C. Discussion
`On its face, it is more efficient for the parties and the Board to address
`a matter once rather than twice. The sole difference between what Petitioner
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`presents in this proceeding and what Petitioner presented in IPR ’518 with
`respect to the challenge of claims 2, 19, 49, 52, 53, and 59 of the ’580 patent
`is that Petitioner now provides further reasoning in support of the same
`combination of prior art. Pet. 3; Mot. Join. 2–3; Opp. 1. Therefore, the
`“same prior art” was “previously presented” to the Board, with respect to the
`same claims. See 35 U.S.C. § 325(d).
`Petitioner is requesting, essentially, a second chance to challenge the
`claims. We, however, are not persuaded that a second chance would help
`“secure the just, speedy, and inexpensive resolution of every proceeding.”
`37 C.F.R. § 42.1(b). Permitting second chances in cases like this one ties up
`the Board’s limited resources; we must be mindful not only of this
`proceeding, but of “every proceeding.” Id.; see also ZTE Corp. v.
`ContentGuard Holdings, Inc., Case IPR2013-00454, slip op. at 5–6 (PTAB
`Sept. 25, 2013) (Paper 12) (“The Board is concerned about encouraging,
`unnecessarily, the filing of petitions which are partially inadequate.”); cf.
`Ariosa Diagnostics v. Isis Innovation, Ltd., Case IPR2013-00250, slip op. at
`2, 4 (PTAB Sept. 8, 2013) (Paper 25) (granting joinder when a new product
`was launched, leading to a threat of new assertions of infringement);
`Microsoft Corp. v. Proxyconn, Inc., Case IPR2013-00109, slip op. at 3
`(PTAB Feb. 25, 2014) (Paper 15) (granting joinder when additional claims
`had been asserted against petitioner in concurrent district court litigation).
`In this proceeding, however, we are not apprised of a reason that
`merits a second chance. Petitioner simply presents arguments now that it
`could have made in IPR ’518, had it merely chosen to do so. In view of the
`foregoing, and especially in light of the fact that, barring joinder, this
`petition is time-barred under 35 U.S.C. § 315(b), we exercise our discretion
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`under 35 U.S.C. § 325(d) to deny the Petition, because it presents merely
`“the same or substantially the same prior art or arguments” presented to us in
`IPR ’518. As a consequence, Petitioner’s motion for joinder is dismissed as
`moot.
`
`
`
`
`
`III. ORDER
`In view of the foregoing, it is
`ORDERED that Petitioner’s motion for joinder is dismissed; and
`FURTHER ORDERED that no trial is instituted.
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`IPR2015-00114
`Patent 8,023,580 B2
`
`PETITIONER:
`
`Jeffrey A. Miller
`Daniel G. Cardy
`DICKSTEIN SHAPIRO LLP
`millerj@dicksteinshapiro.com
`cardyd@dicksteinshapiro.com
`
`PATENT OWNER:
`
`Thomas Engellenner
`Reza Mollaaghababa
`Lana Gladstein
`PEPPER HAMILTON LLP
`engellennert@pepperlaw.com
`mollaaghababar@pepperlaw.com
`gladsteinl@pepperlaw.com
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