Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper 10
`Date: September 9, 2020
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ERICSSON INC.,
`Petitioner,
`v.
`UNILOC 2017, LLC,
`Patent Owner.
`
`IPR2020-00420
`Patent 6,868,079 B1
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`Before JAMESON LEE, SALLY C. MEDLEY, and JASON M. REPKO,
`Administrative Patent Judges.
`LEE, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
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`IPR2020-00420
`Patent 6,868,079 B1
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`INTRODUCTION
`I.
`On July 14, 2020, Petitioner filed a Request for Rehearing (Paper 8,
`“Reh’g Req.”) under 37 C.F.R. § 42.71(d) to seek modification of the
`Board’s Decision Denying Institution of Inter Partes Review (Paper 7,
`“Decision” or “Dec.”) of claims 1–5, 7, and 17 of U.S. Patent No. 6,868,679
`B1 (“the ’079 patent”). The Request is denied.
`
`STANDARD OF REVIEW
`II.
`When rehearing a decision on institution, we do not review the merits
`of the decision de novo, but instead review the decision for an abuse of
`discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a
`“decision was based on an erroneous conclusion of law or clearly erroneous
`factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v.
`Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988)
`(citations omitted). The party requesting rehearing has the burden to show
`that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally,
`the request for rehearing “must specifically identify all matters the party
`believes the Board misapprehended or overlooked, and the place where each
`matter was previously addressed in a motion, an opposition, or a reply.” Id.
`
` III. ANALYSIS
`Institution of review was discretionarily denied under 35 U.S.C.
`§ 314(a), after consideration of various factors regarding the filing of
`multiple petitions against the same patent, including the factors set forth and
`discussed in General Plastic Co. v. Canon Kabushiki Kaisha, IPR2016-
`01357, Paper 19 at 9–10 (PTAB Sept. 6, 2017) (precedential as to Section
`II.B.4.i). Decision 16.
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`IPR2020-00420
`Patent 6,868,079 B1
`A. Which Claims were Asserted against Petitioner
`Petitioner argued that claims 1–5 and 7 were not previously
`challenged in any petition and Patent Owner asserted claims 1–5 and 7
`against Petitioner’s products. Pet. 71 n.2. Petitioner, however, submitted
`nothing to show that Patent Owner asserted claims 1–5 and 7 against
`Petitioner. We looked outside of the record to the docket sheet in the record
`of the related litigation between Patent Owner and Petitioner, obtained a
`copy of the Complaint, and noted that only claim 17 was identified in the
`Complaint and that there is no amended Complaint. Decision 15. We
`determined that “claims 1–5 and 7 have not been shown [by Petitioner] to be
`involved in a district court litigation.” Decision 15.
`In the Request for Rehearing, Petitioner argues that “public
`documents on the district court Docket Report confirm Petitioner’s original
`statement (see Pet. at 71, n. 2) that claims 1–5 and 7 (and claim 17) are
`asserted against its products in district court litigation,” citing a Stay Order
`which includes the statement: “The asserted claims of the ’079 patent are
`claims 1, 2, 3, 4, 5, 7, and 17.” Reh’g Req. 3. Petitioner argues in the
`Request for Rehearing that the Board reviewed “select district court
`pleadings and arrived at the incorrect conclusion that claims 1–5 and 7 are
`not asserted.” Id. at 1. These arguments are misplaced.
`First, the Board could not be faulted for not searching and reviewing
`every single document in the related litigation. It was incumbent upon
`Petitioner to submit and identify material to support its assertions. Although
`we were willing to inspect the Complaint and any Amended Complaint, we
`were not willing to go further. It matters not whether a plaintiff asserting
`patent infringement is required to identify all asserted claims in the
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`IPR2020-00420
`Patent 6,868,079 B1
`Complaint. The bottom line is that Petitioner submitted nothing to support
`its assertion, and we need not even have looked in the Complaint.
`Second, we did not find, as Petitioner asserts in the Rehearing
`Request, that claims 1–5 and 7 “are not asserted” by Patent Owner. Reh’g
`Req. 1. Instead, we determined that “claims 1–5 and 7 have not been shown
`[by Petitioner] to be involved in a district court litigation.” Decision 15.
`The two concepts are entirely different. That Petitioner failed to show what
`was alleged is not an incorrect conclusion, no matter what Petitioner now
`can demonstrate. The focus is on what Petitioner had shown, not what is
`demonstrated now in a Request for Rehearing. 1
`Third, Petitioner states: “Patent Owner did not contest Petitioner’s
`statement identifying the asserted claims in its Patent Owner Preliminary
`Response.” Reh’g Req. 5. Petitioner further states: “Petitioner had no
`reason to believe these undisputed facts would be questioned or that
`additional evidence would be necessary to prove up Petitioner’s
`unchallenged representations.” Id. at 5–6. These arguments are misplaced.
`The effect of Patent Owner not disputing an assertion in the Petition is
`that if the Board were to agree with the assertion, Patent Owner could not
`complain that the assertion is not true. It does not require the Board to agree
`with the assertion. As we noted in the Decision, there was another factual
`
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`1 Petitioner requests entry of the district court’s Stay Order into the official
`record as Exhibit 1042. Reh’g Req. 12–14. That paper was not before the
`Board when the Decision was rendered on June 18, 2020. A Request for
`Rehearing is not time to submit new evidence for consideration. Given that
`we did not find that Patent Owner did not assert claims 1–5 and 7, but only
`that Petitioner failed to show that Patent Owner asserted claims 1–5 and 7,
`we see no good cause for entering the paper into the record now.
`Accordingly, the request is denied.
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`IPR2020-00420
`Patent 6,868,079 B1
`assertion by Petitioner, undisputed by Patent Owner, which is untrue.
`Specifically, we noted: “Petitioner erroneously states that it does not
`challenge any of the same claims challenged in IPR510. Pet. 72 n.3. The
`Petition in IPR510 challenges claim 17 and 18 of the ’079 patent. IPR2019-
`00510, Paper 2, 1.” Decision 14 n.11. Thus, there was reason not to assume
`every assertion by Petition was true, even in the absence of an affirmative
`dispute by Patent Owner. In thinking that it had no reason to believe certain
`factual assertions would be questioned, Petitioner took a calculated risk in
`not providing sufficient evidentiary support. By choosing which assertions
`to support with evidence and which not, Petitioner is responsible for its own
`miscalculation. If there was not another factual misstatement, we might not
`have questioned the factual assertion here. But there was, and we did. The
`lack of evidentiary support cannot be cured in Request for Rehearing. Also,
`Petitioner’s assertions about the claims were not the sole basis for
`discretionary denial. Rather, it was “treated as an additional factor weighing
`against institution, aside from the General Plastic factors discussed above.”
`Decision 16 (emphasis added).
`Accounting for a 10 Month Period
`B.
`In the Decision, in discussing General Plastic factor 5, we stated that
`“Petitioner’s accounting must begin from when it first learned that Patent
`Owner had filed suit accusing products designed and manufactured by
`Petitioner of infringing claims of the ’079 patent.” Decision 12. Rather than
`accounting for the entire 10 month period from March 26, 2019 to
`January 17, 2020, the Petition only addressed 4 months. Pet. 73. Now, in
`the Request for Rehearing, Petitioner provides for consideration an
`explanation that purportedly covers the entire 10 month period. Reh’g Req.
`7–10. The discussion and change of focus from 4 months to 10 months
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`IPR2020-00420
`Patent 6,868,079 B1
`comes too late. A rehearing request is not an opportunity to present new
`arguments after the original arguments are rejected. Accordingly, we
`decline to consider the new explanation that purportedly accounts for the full
`10 month period.
`Recently Discovered References
`C.
`In discussing General Plastic factors 2 and 4, we additionally
`considered whether Petitioner knew of prior art which disclosed the same
`material as what the allegedly recently discovered references disclose.
`Decision 10–11. The additional consideration was prompted by the
`Petition’s characterization of Alamouti as merely disclosing an
`“implementation detail” omitted by the Merakos and Kay. Pet. 28–29.
`Petitioner argues that the additional consideration of the criticality of
`the disclosure contained in the allegedly recently discovered prior art applies
`a new standard that is inconsistent with General Plastic. Reh’g Req. 11.
`We disagree. First, there is no inconsistency because General Plastic does
`not prohibit the consideration. Second, the consideration is not a new
`standard, because, in our view, it already is implicit in General Plastic.
`Typically, there is nothing to trigger it and an assumption is usually made
`that absence of the recently discovered reference is what kept Petitioner
`from filing the petition earlier. Here, the circumstance is different, because
`Alamouti, and Ling evidently as well, are used by Petitioner only to provide
`relatively less significant implementation details compared to what Merakos
`and Kay disclose. Third, Petitioner does not point to anything in General
`Plastic which approves a hypothetical petitioner’s possibly substituting a
`reference it has known for a long time with a recently obtained reference that
`discloses the same, to justify a delay in filing a petition. Thus, it is not
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`IPR2020-00420
`Patent 6,868,079 B1
`inconsistent with General Plastic to additionally consider the criticality or
`significance of allegedly recently discovered references.
`IV. CONCLUSION
`Petitioner does not persuade us that we overlooked or misapprehended
`any matter, or sufficiently show that not instituting an inter partes review of
`claims 1–5, 7, and 17 of the ’079 patent was an abuse of discretion.
`
`V. ORDER
`
`It is
`ORDERED that Petitioner’s Request for Rehearing is denied.
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`IPR2020-00420
`Patent 6,868,079 B1
`FOR PETITIONER:
`
`J. Andrew Lowes
`Clint Wilkins
`Samuel Drezdzon
`HAYNES AND BOONE, LLP
`andrew.lowes@haynesboone.com
`clint.wilkins.ipr@haynesboone.com
`samuel.drezdzon@haynesboone.com
`
`
`FOR PATENT OWNER:
`
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Brian Koide
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`brian@etheridgelaw.com
`jeff@etheridgelaw.com
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