Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 11
`Entered: January 31, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-01511
`Patent 8,902,760 B2
`_______________
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 315(a)(1)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 11
`Entered: January 31, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-01511
`Patent 8,902,760 B2
`_______________
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 315(a)(1)
`
`
`
`
`
`
`
`IPR2018-01511
`Patent 8,902,760 B2
`
`
`INTRODUCTION
`I.
`Cisco Systems, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting an inter partes review of claims 73, 106, 112, 134, 142, 145, and
`146 (“challenged claims”) of U.S. Patent No. 8,902,760 B2 (Ex. 1004, “the
`’760 patent”). Chrimar Systems, Inc. (“Patent Owner”) filed a Preliminary
`Response (Paper 7, “Prelim. Resp.”) to the Petition. Also, as authorized,
`Petitioner filed a Reply (Paper 8, “Reply”) to the Preliminary Response, and
`Patent Owner filed a Sur-reply (Paper 9, “Sur-reply”) to the Reply.
`An inter partes review “may not be instituted if, before the date on
`which the petition for such review is filed, the petitioner or real party in
`interest filed a civil action challenging the validity of a claim of the patent.”
`35 U.S.C. § 315(a)(1). The information presented shows that Petitioner filed
`a civil action challenging the validity of a claim of the ’760 patent before the
`date on which the Petition was filed. Therefore, the Petition is denied, and
`no trial is instituted.
`A.
`Related Proceedings
`The parties indicate that the ’760 patent is the subject of several cases
`in the United States District Court for the Eastern District of Michigan, the
`United States District Court for the Eastern District of Texas, and the United
`States District Court for the Northern District of California. Pet. 1–5;
`Paper 5, 1–2. The parties also indicate that the ’760 patent was the subject
`of Reexamination No. 90/013,802, and the subject of petitions for inter
`partes review in IPR2016-00574, IPR2016-01399, IPR2016-01759, and
`IPR2017-00719. Pet. 2–3; Paper 5, 2.
`
`2
`
`
`
`IPR2018-01511
`Patent 8,902,760 B2
`
`
`B.
`The ’760 Patent
`The ’760 patent relates to a system for managing, tracking, and
`identifying remotely located electronic equipment. Ex. 1004, 1:27–30.
`According to the ’760 patent, one of the difficulties in managing a
`computerized office environment is keeping track of a company’s electronic
`assets. Id. at 1:32–57. Previous systems for tracking electronic assets
`suffered from several deficiencies. Id. at 1:62–65. For example, previous
`systems could not determine the connection status or physical location of an
`asset and could only track assets that were powered-up. Id. at 1:65–2:2.
`To address these deficiencies, the ’760 patent describes a system for
`tracking an electronic asset. Id. at 2:3–6, 3:23–27. In one embodiment
`described in the ’760 patent, the system includes a central module and a
`remote module. Id. at 3:27–30. The remote module attaches to the
`electronic asset and transmits a low frequency signal. Id. A receiver in the
`central module monitors the signal transmitted by the remote module and
`determines if the status or location of the electronic asset changes. Id. at
`3:30–32, 3:34–40.
`C.
`Illustrative Claim
`Of the challenged claims, claims 73 and 146 are independent.
`
`Claim 73, as amended during reexamination, is reproduced below.
`73. A BaseT Ethernet system comprising:
`Ethernet cabling having at least first and second
`individual pairs of conductors used to carry BaseT Ethernet
`communication signals, the at least first and second individual
`pairs of conductors physically connect between a piece of
`BaseT Ethernet terminal equipment and a piece of central
`network equipment,
`
`3
`
`
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`IPR2018-01511
`Patent 8,902,760 B2
`
`
`4
`
`the piece of central network equipment is a BaseT
`Ethernet hub;
`the piece of central network equipment having at least
`one DC supply,
`the piece of BaseT Ethernet terminal equipment having at
`least one path to draw different magnitudes of current flow via
`the at least one DC supply through a loop formed over at least
`one of the conductors of the first pair of conductors and at least
`one of the conductors of the second pair of conductors,
`the piece of central network equipment to detect at least
`two different magnitudes of current flow through the loop.
`Ex. 1004, 21:37–52; Ex. 1035, 1:23–2:4.
`D.
`Evidence of Record
`Petitioner submits the following references and declaration (Pet. 11):
`Reference or Declaration
`Exhibit No.
`Ex. 1001
`Declaration of George Zimmerman (“Zimmerman
`Declaration”)
`The Institute of Electrical and Electronics Engineers, Inc.,
`IEEE Standard 802.3u-1995 (1995) (“IEEE 802.3-1995”)
`The Institute of Electrical and Electronics Engineers, Inc.,
`IEEE Standard 802.3-1993 (1993) (“IEEE 802.3-1993”)
`Bloch et al., U.S. Patent No. 4,173,714 (issued Nov. 6,
`1979) (“Bloch”)
`Nelson, U.S. Patent No. 4,823,070 (issued Apr. 18, 1989)
`(“Nelson”)
`Bulan et al., U.S. Patent No. 5,089,927 (issued Feb. 18,
`1992) (“Bulan”)
`Hunter et al., PCT Publication No. WO 96/23377
`(published Aug. 1, 1996) (“Hunter”)
`Peguiron, Swiss Patent No. CH 643 095 A5 (issued May
`15, 1984) (“Peguiron”)
`E.
`Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds (Pet. 11):
`
`Ex. 1021
`
`Ex. 1022
`
`Ex. 1025
`
`Ex. 1026
`
`Ex. 1027
`
`Ex. 1033
`
`Ex. 1034
`
`
`
`IPR2018-01511
`Patent 8,902,760 B2
`
`
`Claim(s)
`73, 106, 112, 134,
`142, and 145
`146
`146
`
`Basis
`35 U.S.C. § 103
`
`References
`Hunter and Bulan
`
`35 U.S.C. § 103
`35 U.S.C. § 103
`
`Hunter, Bulan, and Nelson
`Bloch, IEEE 802.3-1993, IEEE
`802.3-1995, and Peguiron
`II. ANALYSIS
`An inter partes review “may not be instituted if, before the date on
`which the petition for such review is filed, the petitioner or real party in
`interest filed a civil action challenging the validity of a claim of the patent.”
`35 U.S.C. § 315(a)(1). Petitioner previously filed a civil action challenging
`the validity of a claim of the ’760 patent. Pet. 7; Prelim. Resp. 1; Ex. 2001
`¶¶ 3, 4, 76–81. Petitioner argues, though, that § 315(a)(1) does not bar
`institution of an inter partes review because Petitioner voluntarily dismissed
`its previous civil action without prejudice. Pet. 7 (citing Emerson Elec. Co.
`v. SIPCO, LLC, Case IPR2015-01579, slip op. at 2−3 (PTAB Jan. 14, 2016)
`(Paper 7)).1
`Section 315(a)(1), titled “Inter Partes Review Barred by Civil
`Action,” bars institution of an inter partes review when a petitioner filed a
`civil action challenging the validity of a claim of a patent before the date on
`
`
`1 In Emerson, a panel of the Board held in a non-precedential decision that
`the § 315(a)(1) bar does not apply when a petitioner dismissed its previous
`civil action without prejudice because “[f]ederal courts treat a civil action
`that is dismissed without prejudice as ‘something that de jure never
`existed.’” Emerson, Case IPR2015-01579, slip op. at 2−3 (Paper 7).
`Subsequently, in Click-to-Call Technologies, LP v. Ingenio, Inc., 899 F.3d
`1321, 1328 n.3 (Fed. Cir. 2018) (en banc), the Federal Circuit held that the
`§ 315(b) time bar applies even when a previous civil action was dismissed
`voluntarily without prejudice. This Decision addresses the § 315(a)(1) bar
`in light of the Federal Circuit’s discussion of the § 315(b) time bar.
`5
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`IPR2018-01511
`Patent 8,902,760 B2
`
`which that petitioner filed a petition requesting an inter partes review of that
`patent. 35 U.S.C. § 315(a)(1). Section 315(a)(1) does not include an
`exception for a civil action that was dismissed without prejudice. Id.; see
`Click-to-Call, 899 F.3d at 1330. And Congress demonstrated that it knew
`how to provide an exception to a statutory bar by including an exception to
`the § 315(b) time bar for a joinder request. 35 U.S.C. § 315(b); see Click-to-
`Call, 899 F.3d at 1331. Thus, Congress could have included an exception to
`the § 315(a)(1) bar for a civil action that was dismissed without prejudice,
`but did not. 35 U.S.C. § 315(a)(1); see Click-to-Call, 899 F.3d at 1331.
`Further, the ordinary meanings of the terms “file” and “civil action”
`show that the phrase “filed a civil action” in § 315(a)(1) applies to a civil
`action that was dismissed without prejudice. Black’s Law Dictionary
`defines “file” as “[t]o commence a lawsuit,” and defines “civil action” as
`“[a]n action brought to enforce, redress, or protect a private or civil right; a
`noncriminal litigation.” BLACK’S LAW DICTIONARY (10th ed. 2014). These
`definitions indicate that the § 315(a)(1) bar is implicated once a party
`commences a noncriminal litigation, irrespective of subsequent events. Id.;
`see Click-to-Call, 899 F.3d at 1330.
`Petitioner argues that the term “civil action” in § 315(a)(1) requires
`substantive litigation, i.e., “the pendency of a litigation where the petitioner
`actually had a bite at the apple.” Reply 4–6. Petitioner’s argument is not
`persuasive. Petitioner addresses the term “civil action” apart from the
`complete phrase “filed a civil action” in § 315(a)(1). As discussed, the
`ordinary meaning of the phrase “filed a civil action” only requires that a
`party commenced a noncriminal litigation, not that the party engaged in any
`substantive litigation. BLACK’S LAW DICTIONARY (10th ed. 2014).
`
`6
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`IPR2018-01511
`Patent 8,902,760 B2
`
`
`Petitioner argues that the legislative history indicates that “the clear
`purpose of [§ 315(a)(1)] is coordination of IPR with litigation, and more
`specifically to prevent a challenger from getting two bites at the invalidity
`apple, one in a district court ‘civil action’ and a second before the Board.”
`Reply 5–6. Petitioner, therefore, contends that the legislative history shows
`that § 315(a)(1) requires a petitioner to substantively litigate a civil action.
`Id. at 6. Petitioner’s argument is not persuasive. The portion of the
`legislative history cited by Petitioner states that
`[t]he 2009 Minority Report also recommended that the bill
`restrict serial administrative challenges to patents and require
`coordination of these proceedings with litigation. . . . The
`present bill does coordinate inter partes and post-grant review
`with litigation, barring use of these proceedings if the
`challenger seeks a declaratory judgment that a patent is invalid,
`and setting a time limit for seeking inter partes review if the
`petitioner or related parties is sued for infringement of the
`patent.
`157 Cong. Rec. S1041 (daily ed. Mar. 1, 2011) (statement of Sen. Kyl)
`(emphasis added). Thus, the comments relied on by Petitioner indicate that
`§ 315(a)(1) only requires a petitioner to “seek[]” a declaratory judgment, not
`to substantively litigate the civil action.2 Id.
`Petitioner argues that § 315(a)(1) uses the term “filed,” and that “it is
`well-settled that the voluntary dismissal of a complaint without prejudice
`nullifies the act of filing.” Reply 6. Petitioner’s argument is not persuasive.
`“A voluntary dismissal without prejudice only leaves the dismissed action
`without legal effect for some purposes; for many other purposes, the
`
`
`2 Also, the Supreme Court has cautioned against relying on the comments of
`one Member of Congress. Garcia v. United States, 469 U.S. 70, 76 (1984).
`
`7
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`
`
`IPR2018-01511
`Patent 8,902,760 B2
`
`dismissed action continues to have legal effect.” Click-to-Call, 899 F.3d at
`1335. Because the background legal principle relied on by Petitioner is
`“anything but equivocal,” it does not “transform[] the ordinary meaning of
`the phrase [‘filed a civil action’] into something else.” Id.
`Petitioner argues that the purpose of a dismissal without prejudice “is
`to preserve, rather than eliminate, the ability of the plaintiff to sue the
`defendant again on the same claim.” Reply 6–7. Petitioner contends that
`“although Click-To-Call found that this anti-preclusion principle had no
`application to § 315(b), which is essentially a statute of limitations, it is
`certainly applicable to § 315(a)(1), which is a preclusion statute.” Id. at 7.
`Petitioner’s argument is not persuasive. Petitioner does not explain
`specifically why its characterization of § 315(a)(1) as “a preclusion statute”
`warrants a departure from the ordinary meaning of the statutory language
`discussed above. See id. at 6–7. Further, this Decision does not hold that
`§ 315(a)(1) bars Petitioner from filing another civil action challenging the
`validity of a claim of the ’760 patent.
`For these reasons, § 315(a)(1) bars institution of an inter partes
`review even though Petitioner voluntarily dismissed its earlier civil action
`challenging the validity of a claim of the ’760 patent without prejudice.
`III. CONCLUSION
`The information presented shows that Petitioner filed a civil action
`challenging the validity of a claim of the ’760 patent before the date on
`which Petitioner filed the Petition. Therefore, the Petition is denied under
`§ 315(a)(1).
`
`8
`
`
`
`IPR2018-01511
`Patent 8,902,760 B2
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that the Petition is denied, and no trial is instituted.
`
`
`
`9
`
`
`
`IPR2018-01511
`Patent 8,902,760 B2
`
`PETITIONER:
`
`James E. Marina
`Robert Kang
`Eugene Goryunov
`KIRKLAND & ELLIS LLP
`james.marina@kirkland.com
`robert.kang@kirkland.com
`eugene.goryunov@kirkland.com
`
`
`PATENT OWNER:
`
`Frank A. Angileri
`Thomas A. Lewry
`Marc Lorelli
`Christopher C. Smith
`BROOKS KUSHMAN P.C.
`fangileri@brookskushman.com
`tlewry@brookskushman.com
`mlorelli@brookskushman.com
`csmith@brookskushman.com
`
`10
`
`
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