Paper 12
`Trials@uspto.gov
` 571-272-7822 Entered: October 6, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
`_____________
`
`IPR2020-00717
`Patent 7,957,450 B2
`____________
`
`
`
`Before BRYAN F. MOORE, MELISSA A. HAAPALA, and
`SCOTT E. BAIN, Administrative Patent Judges.
`
`Opinion of the Board filed by Administrative Patent Judge BAIN
`
`Opinion Dissenting filed by Administrative Patent Judge MOORE.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`

`

`IPR2020-00717
`Patent 7,957,450 B2
`
`I. INTRODUCTION
`
`Samsung Electronics Co., Ltd. (“Petitioner”) filed a petition for inter
`
`partes review of claims 1–3 and 11–13 of U.S. Patent No. 7,957,450 B2
`
`(Ex. 1001, “the ’450 patent”). Paper 1 (“Pet.”). Bell Northern Research,
`
`LLC (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim.
`
`Resp.”). Subsequently, we granted Petitioner’s request for further briefing
`
`regarding Patent Owner’s argument for discretionary denial (Prelim. Resp.
`
`5–16). Pursuant to our authorization, Petitioner filed a Preliminary Reply
`
`(“Prelim. Reply,” Paper 8) and Patent Owner filed a Preliminary Sur-Reply
`
`(“Prelim. Sur-Reply,” Paper 10).
`
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`
`unless “there is a reasonable likelihood that [P]etitioner would prevail with
`
`respect to at least 1 of the claims challenged in the petition.” We have
`
`considered the briefs and accompanying exhibits submitted by the parties.
`
`For the reasons set forth herein, we decline to institute inter partes review.
`
`A. Related Matters
`
`The parties disclose that the ’450 patent is at issue in the following
`
`proceedings: Bell Northern Research, LLC v. Samsung Electronics
`
`Company, Ltd., et al., No. 2:19-cv-00286 (E.D. Tex. Aug. 22, 2019); and
`
`Samsung Electronics Company, Ltd. v. Bell Northern Research, LLC,
`
`IPR2020-00718 (PTAB Mar. 18, 2020). Pet. 1–2; Paper 5, 1. In addition,
`
`Petitioner discloses that the ’450 patent was at issue in other matters that
`
`have been terminated or dismissed. Pet. 1–2.
`
`In an email to the Board on September 28, 2020, the parties confirmed
`
`that they have filed a notice of settlement and motion to stay all deadlines in
`
`the Bell Northern v. Samsung district court litigation. Ex. 3001. Regarding
`
`2
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`

`

`IPR2020-00717
`Patent 7,957,450 B2
`
`the possible effect on this pending petition for inter partes review, however,
`
`the parties informed the Board that they “continue to negotiate the terms of
`
`the settlement and at this time . . . do not have a date certain when that may
`
`be completed.” Id. Thus, the parties “cannot state at this time with certainty
`
`that they will be in a position to move to terminate these proceedings” before
`
`the Board’s October 7, 2020 statutory deadline for determining whether to
`
`institute inter partes review. Id. We, therefore, issue our Decision as set
`
`forth herein.
`
`B. Real Parties in Interest
`
`Petitioner identifies Samsung Electronics Co., Ltd., and Samsung
`
`Electronics America, Inc. as the real parties in interest. Pet. 1. Patent
`
`Owner identifies that it is a wholly owned subsidiary of Hilco Patent
`
`Acquisition 56, LLC, which is owned by both Hilco IP Merchant Capital,
`
`LLC, and Hilco, Inc. Paper 5, 1.
`
`C. The ’450 Patent
`
`The ’450 Patent, entitled “Method and System for Frame Formats for
`
`MIMO Channel Measurement Exchange,” relates to wireless
`
`communications using beamforming. Ex. 1001 [54], 1:35–42.
`
`Beamforming is the process of optimizing signals in a specific direction in
`
`order to improve signal transmission and reception. Id. at 1:35–42. The
`
`’450 patent explains:
`
`[s]mart antenna systems combine multiple antenna elements
`with a signal processing capability to optimize the pattern of
`transmitted signal radiation and/or reception in response to the
`communications medium environment. The process of
`optimizing the pattern of radiation[,] ‘beamforming,’ . . . may
`utilize linear array mathematical operations to increase the
`average signal to noise ratio (SNR) by focusing energy in
`desired directions.
`
`3
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`

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`IPR2020-00717
`Patent 7,957,450 B2
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`
`
`Id.
`
`According to the ’450 patent, in conventional smart antenna
`
`systems only the transmitter or only the receiver may be equipped
`
`with more than one antenna. Id. at 1:42–48. Such smart antenna
`
`systems typically would be located in the base transceiver station, not
`
`the mobile terminal (such as a mobile phone), due to cost and space
`
`constraints. Id. Following advances in digital signal processing
`
`capability in integrated circuits, however, “multiple antenna multiple
`
`output (MIMO) systems have emerged in which mobile terminals
`
`incorporate smart antenna systems comprising multiple transmit
`
`antenna and multiple receive antenna.” Id. at 1:54–58. A MIMO
`
`system can use beamforming, for example, to increase WiFi signal
`
`strength from a home router by focusing signals to the location of a
`
`wireless device, such as a cellular phone or tablet. See id.; Prelim.
`
`Resp. 1–2.
`
`The ’450 patent explains, however, that beamforming is
`
`challenging because focusing the transmission of wireless signals
`
`must be adjusted as the relative positions of the transmitting and
`
`receiving wireless devices change (such as when a mobile device user
`
`moves about the house, changing position relative to the home router).
`
`Ex. 1001, 2:33–56. Information about the RF channel used to
`
`transmit information must be adapted, therefore, to avoid “information
`
`loss between the transmitting mobile terminal and the receiving
`
`mobile terminal.” Id. at 4:22–24.
`
`The ’450 patent describes “feedback mechanisms by which a
`
`receiving mobile terminal may feed[] information [back] to a
`
`4
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`

`

`IPR2020-00717
`Patent 7,957,450 B2
`
`transmitting mobile terminal to assist the transmitting mobile terminal
`
`in adapting signals which are sent to the receiving mobile terminal.”
`
`Id. at 1:30–34. According to Patent Owner, the feedback mechanisms
`
`described in the ’450 patent reduce network resources required for
`
`beamforming operations, thereby freeing up bandwidth for other
`
`network traffic, such as data. Prelim. Resp. 2–3.
`
`The ’450 patent further discloses utilizing Singular Value
`
`Decomposition (“SVD”), a mathematical matrix decomposition
`
`technique for reducing a matrix to its constituent parts in order to
`
`make certain subsequent matrix calculations easier. Ex. 1001, 8:45–
`
`55. According to Patent Owner, by using SVD, wireless devices
`
`decrease the quantity of information transmitted to other parts of the
`
`system, such as a base station, which conserves bandwidth and make
`
`the beamforming process more efficient. Prelim. Resp. 3.
`
`D. Illustrative Claim
`
`Challenged claims 1 and 11 are independent. Claim 1 is illustrative of
`
`the subject matter of the challenged claims and reads as follows:
`
`1. A method for communication, the method comprising:
`
`computing a plurality of channel estimate matrices based
`on signals received by a mobile terminal from a base station,
`via one or more downlink RF channels,
`
`wherein said plurality of channel estimate matrices
`comprise coefficients derived from performing a singular value
`matrix decomposition (SVD) on said received signals; and
`
`transmitting said coefficients as feedback information to
`said base station, via one or more uplink RF channels.
`
`Id. at 19:13–22.
`
`5
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`IPR2020-00717
`Patent 7,957,450 B2
`
`E. Asserted Grounds of Unpatentability
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`Petitioner asserts that claims 1–3 and 11–13 of the ’450 patent are
`
`unpatentable based on the following grounds (Pet. 3, 10–73):
`
`Claims Challenged
`
`35 U.S.C. §
`
`References
`
`1–3
`
`11–13
`
`102
`
`103(a)
`
`Walton1
`
`Walton
`
`In its analysis, Petitioner relies on the declaration testimony of Dr.
`
`Leonard J. Cimini (Ex. 1003). Pet. 10–73.
`
`II. DISCUSSION
`
`Relying in part on the testimony of Dr. Cimini, Petitioner explains
`
`how Walton allegedly discloses each limitation of challenged claims 1–3,
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`and teaches or suggests each limitation of challenged claims 11–13. Pet.
`
`10–73. Petitioner also explains the alleged reasons for modifying the
`
`teachings of Walton as to claims 11–13. Id.; Ex. 1010 ¶¶ 155–156.
`
`Patent Owner does not present any evidence or argument disputing
`
`Petitioner’s unpatentability contentions in its Preliminary Response. Prelim.
`
`Resp. 1–20. Patent Owner, however, argues that the Board should exercise
`
`its discretion to deny institution pursuant to 35 U.S.C. § 314(a) because the
`
`Bell Northern v. Samsung district court has set a trial date of March 1, 2021,
`
`which is approximately seven months prior to the statutory deadline for a
`
`final written decision in this proceeding (if instituted). Id. at 9.2 Patent
`
`
`
`1 WO 2004/038984 A2, filed October 24, 2003 and published May 6, 2004
`(Ex. 1010).
`2 Patent Owner also argues that the Board should exercise its discretion to
`deny institution because Petitioner has improperly filed multiple petitions
`against the ’450 patent. Prelim. Resp. 16-20 (citing Petitioner’s concurrently
`filed petition in IPR2020-00718). We need not reach this argument.
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`6
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`IPR2020-00717
`Patent 7,957,450 B2
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`Owner further argues that inter partes review would substantially duplicate
`
`the efforts already expended by the parties and the court in the district court
`
`litigation. Id. at 5–17.
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`For the reasons discussed below, we determine Patent Owner’s
`
`discretionary denial argument is dispositive.
`
`A. Discretionary Denial Under 35 U.S.C. § 314(a)
`
`The Director has discretion to institute an inter partes review under
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`35 U.S.C. § 314(a). Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha,
`
`IPR2016-01357, Paper 19 at 15 (PTAB Sept. 6, 2017) (precedential) (citing
`
`35 U.S.C. § 314(a)). The advanced state of a related district court case may
`
`“weigh[] in favor of denying [a] Petition under § 314(a).” NHK Spring Co.
`
`v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12,
`
`2018) (precedential). We must, however, conduct a “balanced assessment of
`
`all relevant circumstances of the case, including the merits.” Patent Trial
`
`and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), available
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`at https://www.uspto.gov/TrialPracticeGuideConsolidated (emphasis added).
`
`Specifically, in evaluating a Section 314(a) argument, we assess the
`
`following factors: (1) whether the district court granted a stay or evidence
`
`exists that one may be granted if this proceeding is instituted; (2) proximity
`
`of the district court’s trial date to the Board’s projected statutory deadline for
`
`a final written decision; (3) investment in the parallel proceeding by the
`
`court and the parties; (4) overlap between issues raised in the petition and in
`
`the parallel proceeding; (5) whether the petitioner and the defendant in the
`
`parallel proceeding are the same party; and (6) other circumstances that
`
`impact the Board’s exercise of discretion, including the merits. Apple Inc. v.
`
`Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (Mar. 20, 2020) (precedential).
`
`7
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`IPR2020-00717
`Patent 7,957,450 B2
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`B. Discussion of 314(a) Factors
`
`Petitioner argues that we should not exercise our discretion to deny
`
`institution, because although the district court trial currently is scheduled to
`
`precede our final written decision, “it is far from certain” the trial will
`
`proceed as planned, and the Eastern District of Texas court has “routinely
`
`granted stays” for inter partes review. Prelim. Reply 1–2. Petitioner asserts
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`that it “diligently sought review more than five months before the statutory
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`[deadline],” and we recently granted institution in a similar case (IPR2020-
`
`00318) involving the same patent and similar timeframe.3 Id. at 2.
`
`Petitioner further asserts that “the most burdensome parts of the [district
`
`court] case . . . all lie in the future,” and that, although the parties are the
`
`same, overlap of issues is minimal because Petitioner has “stipulated that it
`
`will not pursue, in district court, invalidity based on any reference in any
`
`instituted IPR ground.” Id. at 2–3. Finally, Petitioner asserts that the strong
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`merits of the Petition, Patent Owner’s “litigious behavior,” and the fact that
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`other petitions involving the ’450 patent were terminated following
`
`settlement, all favor institution. Id. at 3.
`
`Patent Owner responds that the trial date is set, and it would be pure
`
`“speculation” to presume that the presiding judge (a different judge than in
`
`the case cited by Petitioner) would stay the case following institution.
`
`Prelim. Reply 6–9; Prelim. Sur-reply 1. Patent Owner further argues that all
`
`expert discovery and dispositive motions would be completed well before a
`
`final written decision, and Petitioner’s “stipulation” has not been submitted
`
`to the court. Prelim. Sur-reply 2–3. Finally, Patent Owner argues that the
`
`
`
`3 As noted by Petitioner, IPR2020-00318 has been terminated. Prelim.
`Reply 2 (citing IPR2020-00318, Paper 16 (July 31, 2020)).
`
`8
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`IPR2020-00717
`Patent 7,957,450 B2
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`district court case involves the same parties, and that Patent Owner’s
`
`enforcement of its rights against other parties (since dismissed) should have
`
`no bearing in this matter. Id. at 3.
`
`Weighing the foregoing arguments and evidence, we determine that
`
`the factors set forth in Apple v. Fintiv, on balance, warrant exercising our
`
`discretion to deny institution under Section 314(a). Specifically, factors (2),
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`(3), and (5) favor denying institution, factor (4) weighs slightly in favor of
`
`not exercising discretion to deny institution, and factor (1) is neutral. Even
`
`presuming factor (6) favors institution (crediting Petitioner’s unopposed
`
`unpatentability contentions), along with the slight weight we give to factor
`
`(4), is not enough to overcome the other factors on balance.
`
`Factor (1) does not favor institution because, as Patent Owner argues,
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`a stay following institution of inter partes review would be “pure
`
`speculation.”4 Unlike other proceedings involving parallel litigation of the
`
`’450 patent, in which the presiding judge indicated a stay would likely
`
`follow the Board’s decision to institute inter partes review (see, e.g., LG
`
`Electronics, Inc. v. Northern Bell Research, LLC, IPR2020-00318, Paper 11
`
`(PTAB June 22, 2020)), in this case there is no indication how the court
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`would rule on any such motion. Prelim. Sur-reply 1. Similarly, although
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`Petitioner argues that the district court granted a stay following institution in
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`Cywee Grp. Ltd. v. Samsung Elecs. Co., 2019 U.S. Dist. LEXIS 144149
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`(E.D. Tex. Feb. 14, 2019), we agree with Patent Owner that the case was
`
`before a different judge and does not indicate how the court would rule on a
`
`
`
`4 As discussed above, the parties filed a joint motion to stay the district court
`deadlines in light of their notice of settlement, which the court granted for a
`limited timeframe for the parties to finalize settlement. This stay is
`temporary and solely based upon apparent settlement.
`
`9
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`IPR2020-00717
`Patent 7,957,450 B2
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`future stay motion in this case. See Prelim. Sur-reply 1. Having no
`
`indication regarding the likelihood of a stay following institution, we
`
`determine that factor (1) is neutral.
`
`We determine factor (2) favors discretionary denial. As Patent Owner
`
`argues, the trial date is set for March 2021, which is seven months before the
`
`final written decision would issue in an inter partes review (October 2021).
`
`Petitioner argues that there is a “chance” trial could be delayed (for example,
`
`due to COVID-19 pandemic), but presents no support for this argument,
`
`only speculation. As Patent Owner notes, the same district court judge
`
`recently conducted a jury trial notwithstanding the pandemic, and even if the
`
`district court trial in this matter were to be delayed several months, it would
`
`still precede our final written decision. See, e.g., Apple Inc. v. Maxell, Ltd.,
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`IPR2020-00204, Paper 11 at 14 (PTAB June 19, 2020) (holding that despite
`
`the “possibility” of a delay due to COVID-19, “we agree with Patent Owner
`
`that even a delayed trial might precede a final written decision,” thus this
`
`factor favors discretionary denial).
`
`We also determine that factor (3) favors discretionary denial. The
`
`parties have already completed (according to the district court schedule) fact
`
`discovery and claim construction briefing, and expert discovery is well
`
`underway and would be completed many months prior to a final written
`
`decision in this proceeding. Ex. 2002, 2004. Thus, we agree with Patent
`
`Owner’s argument that “it is all but certain that the parties [would] incur
`
`duplicate expenses, and the district court will invest significant time and
`
`resources into claim construction.” Prelim. Resp. 12.
`
`As to factor (4), the Petition relies on the same art and arguments as in
`
`the district court litigation, so there is overlap in issues. Ex. 2005; Prelim.
`
`Resp. 14–15. Petitioner, however, has stipulated to counsel for Patent
`
`10
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`IPR2020-00717
`Patent 7,957,450 B2
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`Owner that Petitioner “will not pursue, in district court, invalidity based on
`
`any reference in any instituted IPR ground.” See Ex. 1034, 1–2. Petitioner’s
`
`stipulation mitigates to some degree the concerns of duplicative efforts
`
`between the district court and the Board, as well as concerns of potentially
`
`conflicting decisions. See Sand Revolution II, LLC v. Continental
`
`Intermodal Group-Trucking, LLC, IPR2019-01393, Paper 24 at 12
`
`(Informative). Thus, we determine factor (4) weighs slightly in favor of not
`
`exercising our discretion to deny institution.
`
`Factor (5) also favors discretionary denial, as Petitioner does not
`
`dispute, because this proceeding involves the same parties as the district
`
`court case.
`
` Finally, as to factor (6), Patent Owner does not contest the merits of
`
`Petitioner’s invalidity arguments at this stage of the proceeding. Prelim.
`
`Resp. 5–20. Patent Owner also does not dispute Petitioner’s argument that
`
`its challenges to the ’450 patent are the only ones remaining (as other inter
`
`partes reviews of the same patent have been terminated). Prelim. Reply 3.
`
`For purposes of this Section 314(a) analysis, we credit Petitioner’s
`
`unopposed arguments and evidence regarding the substantive invalidity
`
`contentions in the Petition, and, therefore, we determine that factor (6)
`
`favors institution.
`
`In summary, we determine that the factors and circumstances, on
`
`balance, weigh in favor of discretionary denial in this proceeding. The
`
`weight we give to factors (4) and (6) does not outweigh the considerations
`
`against institution discussed above, such as the lengthy amount of time
`
`between the district court trial date and the date that a final written decision
`
`would be due in this proceeding. Accordingly, we exercise our discretion to
`
`deny institution under 35 U.S.C. § 314(a).
`
`11
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`IPR2020-00717
`Patent 7,957,450 B2
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`For the foregoing reasons, it is
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`III. ORDER
`
`ORDERED that the Petition is denied as to all challenged claims, and
`
`
`
`
`
`no trial is instituted.
`
`
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`IPR2020-00717
`Patent 7,957,450 B2
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
`_____________
`
`IPR2020-00717
`Patent 7,957,450 B2
`____________
`
`
`
`Before BRYAN F. MOORE, MELISSA A. HAAPALA, and
`SCOTT E. BAIN, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge, Dissenting.
`
`
`I recognize that the application of 35 U.S.C. § 314(a) to deny
`
`institution of inter partes review is discretionary, and appreciate the
`
`majority’s thoughtful reasoning in exercising that discretion. In my view,
`
`however, Fintiv factors 4 and 6 weigh against using discretion to deny
`
`institution, and, accordingly, my holistic review of the Fintiv factors leads
`
`me to conclude not to use discretion. I agree with the majority’s analysis of
`
`factor 4. Thus, I discuss factor 6 below.
`
`As to factor 6, I would consider the fact that there is nothing in the
`
`record regarding deficiencies in Petitioner’s case as to the merits. Petitioner
`
`asserts it has met its burden of demonstrating a reasonable likelihood that it
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`IPR2020-00717
`Patent 7,957,450 B2
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`would prevail in showing that claims of the ’450 patent are unpatentable. At
`
`this preliminary stage of the proceeding and on the record before us, there is
`
`no substantive argument Petitioner’s case is not strong on the challenged
`
`claims. Fintiv, Paper 11 at 14–15 (“[I]f the merits of a ground raised in the
`
`petition seem particularly strong on the preliminary record, this fact has
`
`favored institution.”). For example, as to the strength of the claims of the
`
`challenged patent, we recently granted institution in a similar case
`
`(IPR2020-00318) involving the same patent. Prelim. Reply 2.
`
`Although I recognize the record can change during trial, if Petitioner
`
`has made a sufficiently persuasive showing, on the record presently before
`
`us, that the prior art reference cited in the Petition discloses all limitations of
`
`most challenged claims, we should consider this in determining whether to
`
`use our discretion. I would determine, on this preliminary record, that
`
`Petitioner has set forth a reasonably strong case as to the challenged claims.
`
`Thus, this factor weighs heavily in favor of not exercising discretion to deny
`
`institution under 35 U.S.C. § 314(a).
`
`I find the facts of this case similar to one in which the panel instituted
`
`in Sand Revolution II, LLC v. Continental Intermodal Group-Trucking,
`
`LLC, IPR2019-01393, Paper 24 at 4–14 (Informative). As noted in Fintiv,
`
`we consider six factors when taking “a holistic view of whether efficiency
`
`and integrity of the system are best served by denying or instituting review.”
`
`Fintiv, Paper 11 at 6. For the reasons discussed above, the Fintiv factors
`
`weigh against invoking our discretion to deny institution. Considering the
`
`Fintiv factors as part of a holistic analysis, I am not persuaded that the
`
`interests of the efficiency and integrity of the system would be best served
`
`by invoking our authority under 35 U.S.C. § 314(a) to deny institution of a
`
`potentially meritorious Petition.
`
`14
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`IPR2020-00717
`Patent 7,957,450 B2
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`I, therefore, respectfully dissent.
`
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`IPR2020-00717
`Patent 7,957,450 B2
`
`FOR PETITIONER:
`
`Naveen Modi
`Joseph E. Palys
`Arvind Jairam
`David Valente
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`arvindjairam@paulhastings.com
`
`
`FOR PATENT OWNER:
`
`Steven W. Hartsell
`Alexander E. Gasser
`Joseph M. Ramirez
`SKIERMONT DERBY LLP
`shartsell@skiermontderby.com
`agasser@skiermontderby.com
`jramirez@skiermontderby.com
`
`
`
`
`
`
`
`16
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