Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 17
`Date: June 10, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioner,
`v.
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`IPR2021-00570
`Patent 6,411,941 B1
`____________
`
`
`Before THU A. DANG, JONI Y. CHANG, and KEVIN W. CHERRY,
`Administrative Patent Judges.
`
`
`CHANG, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Denying Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 17
`Date: June 10, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioner,
`v.
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`IPR2021-00570
`Patent 6,411,941 B1
`____________
`
`
`Before THU A. DANG, JONI Y. CHANG, and KEVIN W. CHERRY,
`Administrative Patent Judges.
`
`
`CHANG, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Denying Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`IPR2021-00570
`Patent 6,411,941 B1
`
`
`I.
`INTRODUCTION
`HTC Corporation and HTC America, Inc. (collectively, “Petitioner”
`or “Petitioner HTC”) filed a Petition requesting an inter partes review
`(“IPR”) of claims 1−3, 6−14, and 16 (“the challenged claims”) of
`U.S. Patent No. 6,411,941 B1 (Ex. 1001, “the ’941 patent”). Paper 1
`(“Pet.”). Petitioner HTC also filed a Motion for Joinder (Paper 3, “Mot.”),
`seeking to join as a party to TCT Mobile (US) Inc. v. Ancora Technologies,
`Inc., IPR2020-01609 (the “TCT IPR”), and a Reply (Paper 10, “Reply”).
`Ancora Technologies, Inc. (“Patent Owner”) filed an Opposition to
`Petitioner HTC’s Motion for Joinder (Paper 9, “Opp.”), a Sur-reply
`(Paper 15, “Sur-reply”), and a Preliminary Response (Paper 16, “Prelim.
`Resp.”). For reasons discussed below, we do not institute an inter partes
`review of the challenged claims and deny the Motion for Joinder.
`
`A. Related Matters
`The parties indicate that the ’941 patent is involved in the following
`district court proceedings: Ancora Technologies, Inc. v. TCT Mobile (US)
`Inc., No. 8:19-cv-02192 (C.D. Cal.); Ancora Technologies, Inc. v. Lenovo
`Group Limited, No. 1:19-cv-01712 (D. Del.); Ancora Technologies, Inc. v.
`Sony Corp., No. 1:19-cv-01703 (D. Del.); Ancora Technologies, Inc. v. LG
`Electronics, Inc., No. 1:20-cv-00034 (W.D. Tex.); Ancora Technologies,
`Inc. v. Samsung Electronics Co., No. 6:19-cv-00385 (W.D. Tex.); Ancora
`Technologies, Inc. v. HTC America, Inc., No. 2:16-cv-01919 (W.D. Wash.);
`and Ancora Technologies, Inc. v. Apple Inc., No. 2:10-cv-10045-AG-MLG
`(N.D. Cal.) (the “Ancora v. Apple case”). Pet. 3−4; Paper 4, 1−2.
`
`2
`
`
`
`IPR2021-00570
`Patent 6,411,941 B1
`
`
`The ’941 patent also was involved in ex parte Reexamination No.
`90/010,560. Ex. 1001, 8−9 (Ex Parte Reexamination Certificate issued on
`June 1, 2010, confirming the patentability of claims 1−19 and indicating that
`no amendments have been made to the patent).
`In addition, the ’941 patent was involved in the following
`proceedings: Apple Inc. v. Ancora Technologies, Inc., CBM2016-00023
`(Institution Denied); HTC America, Inc. v. Ancora Technologies, Inc.,
`CBM2017-00054 (Institution Denied); Samsung Electronics Co. v. Ancora
`Technologies, Inc., IPR2020-01184 (Institution Denied).
`The ’941 patent is currently involved in the following: TCT Mobile
`(US) Inc. v. Ancora Technologies, Inc., IPR2020-01609; LG Electronics,
`Inc. v. Ancora Technologies, Inc., IPR2021-00581; Samsung Electronics Co.
`v. Ancora Technologies, Inc., IPR2021-00583; and Sony mobile
`Communications AB v. Ancora Technologies, Inc., IPR2021-00663.
`
`B. The ’941 patent
`The ’941 patent discloses a method of restricting software operation
`within a license limitation that is applicable for a computer having a first
`non-volatile memory area, a second non-volatile memory area, and a volatile
`memory area. Ex. 1001, code (57). According to the ’941 patent, the
`method includes the steps of selecting a program residing in the volatile
`memory, setting up a verification structure in the non-volatile memories,
`verifying the program using the structure, and acting on the program
`according to the verification. Id.
`
`3
`
`
`
`IPR2021-00570
`Patent 6,411,941 B1
`
`
`Figure 1 of the ’941 patent is reproduced below.
`
`
`Figure 1 above shows a schematic diagram of computer processor 1
`and license bureau 7. Id. at 5:9−19. Computer processor 1 is associated
`with input operations 2 and output operations 3. Id. Computer processor 1
`contains first non-volatile memory area 4 (e.g., the ROM section of the
`Basic Input / Output System (“BIOS”)), second non-volatile memory area 5
`(e.g., the E2PROM section of the BIOS), and volatile memory area 6 (e.g.,
`the internal RAM memory of the computer). Id.
`
`C. Illustrative Claim
`Of the challenged claims, only claim 1 is independent. Claims 2, 3,
`6−14, and 16 directly or indirectly depend from claim 1. Claim 1 is
`illustrative:
`1. A method of restricting software operation within a license for
`use with a computer including an erasable, non-volatile memory
`area of a BIOS of the computer, and a volatile memory area; the
`method comprising the steps of:
`selecting a program residing in the volatile memory,
`4
`
`
`
`IPR2021-00570
`Patent 6,411,941 B1
`
`
`using an agent to set up a verification structure in the erasable,
`non-volatile memory of the BIOS, the verification structure
`accommodating data that includes at least one license record,
`verifying the program using at least the verification structure
`from the erasable non-volatile memory of the BIOS, and
`acting on the program according to the verification.
`Ex. 1001, 6:59:67–7:4.
`
`D. Prior Art Relied Upon
`Petitioner HTC relies upon the references listed below (Pet. 5):
`
`Reference
`
`Issue Date
`
`Exhibit No.
`
`Hellman, U.S. Patent No. 4,658,093
`
`Apr. 14, 1987 Ex. 1004
`
`Chou, U.S. Patent No. 5,892,906
`
`Apr. 6, 1999 Ex. 1005
`
`Schneck, U.S. Patent No. 5,933,498
`
`Aug. 3, 1999 Ex. 1006
`
`
`
`
`
`E. Asserted Grounds of Unpatentability
`Petitioner HTC asserts the following grounds of unpatentability:
`
`Claims Challenged 35 U.S.C. §1
`
`References
`
`1, 2, 11, 13
`
`103(a)
`
`Hellman, Chou
`
`103(a)
`
`Hellman, Chou, Schneck
`
`1−3, 6−14, 16
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the
`’941 patent was filed before March 16, 2013, the effective date of the
`relevant amendment, the pre-AIA version of § 103 applies.
`5
`
`
`
`IPR2021-00570
`Patent 6,411,941 B1
`
`
`II. ANALYSIS
`“To join a party to an instituted IPR, the plain language of § 315(c)
`requires two different decisions.” Facebook, Inc. v. Windy City Innovations,
`LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). First, we “determine whether
`the joinder applicant’s petition for IPR ‘warrants’ institution under § 314.”
`Id. Second, if the petition warrants institution, we then “decide whether to
`‘join as a party’ the joinder applicant.” Id. In short, before determining
`whether to join Petitioner HTC as a party to the TCT IPR, we first determine
`whether the petition warrants institution under § 314(a).
`Institution of an inter partes review is discretionary. 35 U.S.C.
`§ 314(a). The Supreme Court of the United States has explained that,
`because § 314 includes no mandate to institute review, “the agency’s
`decision to deny a petition is a matter committed to the Patent Office’s
`discretion.” Cuozzo Speed Techs., LLC v. Lee, 136 S. 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.”).
`Under General Plastic, the Board may deny a petition based on the
`Director’s discretionary authority of § 314(a). General Plastic Co., Ltd. v.
`Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 15 (PTAB Sept. 6,
`2017) (precedential). Thus, before determining whether to join HTC as a
`party to the TCT IPR, even though the Petition is a “copycat petition,” we
`first determine whether application of the General Plastic factors warrants
`6
`
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`IPR2021-00570
`Patent 6,411,941 B1
`
`the exercise of discretion to deny the Petition under § 314(a). See Apple Inc.
`v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 at 5 (PTAB Oct. 28, 2020)
`(precedential) (“Uniloc”).
`
`Discretionary Denial — General Plastic
`In this proceeding, Patent Owner argues that we should exercise our
`discretion to deny this Petition by applying the General Plastic factors.
`Opp. 11−15 (citing General Plastic, Paper 19 at 16−17); Sur-reply 2−4.
`For the reasons set forth below, we determine to exercise our discretion to
`deny institution.
`
`In General Plastic, the Board articulated a list of non-exclusive
`factors to be considered in determining whether to exercise discretion under
`§ 314(a) to deny a petition:
`1. whether the same petitioner previously filed a petition directed
`to the same claims of the same patent;
`2. whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should
`have known of it;
`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision on
`whether to institute review in the first petition;
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the
`filing of the second petition;
`5. whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions directed to
`the same claims of the same patent;
`6. the finite resources of the Board; and
`7
`
`
`
`IPR2021-00570
`Patent 6,411,941 B1
`
`
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
`General Plastic, Paper 19 at 16 (citing NVIDIA Corp. v. Samsung Elec. Co.,
`IPR2016−00134, Paper 9 at 6−7 (PTAB May 4, 2016)). In our analysis
`below, we address each of these factors in turn.
`
`Factor 1: “whether the same petitioner previously filed a
`petition directed to the same claims of the same patent”
`Patent Owner argues that Petitioner HTC already challenged the ’941
`patent in CBM2017-00054, in which the Board denied institution. Opp. 12;
`CBM2017-00054, Paper 7 (Decision denying institution). Patent Owner
`contends that it filed a Preliminary Response in CBM2017-00054,
`addressing the merits. Id. Patent Owner also avers that Petitioner HTC
`“has benefitted from petitions and corresponding responses filed in other
`proceedings, including CBM2016-00023, filed by Apple, and IPR2020-
`01184, filed by Samsung.” Id.
`In its Reply, Petitioner HTC argues that Factor 1 weighs only slightly
`against institution. Reply 5. Petitioner also avers that Patent Owner did not
`substantively address the prior art in its Preliminary Response in CBM2017-
`00054, and that the Board denied institution on the basis that the claims were
`not CBM eligible without reaching the prior art. Id. (citing CBM2017-
`00054, Paper 6 (Preliminary Response) and Paper 7 (Decision denying
`institution)). Petitioner HTC further contends that Patent Owner did not file
`a preliminary response in CBM2016-00023 filed by Apple and the Board
`
`8
`
`
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`IPR2021-00570
`Patent 6,411,941 B1
`
`exercised its discretion to deny the petition in IPR2020-01184, without
`reaching the prior art grounds. Id.
`In its Sur-reply, Patent Owner argues that it is irrelevant whether the
`Board did not substantively address the prior art in CBM2017-00054
`because Petitioner HTC had the opportunity back in 2017 to file an inter
`parties review petition. Sur-reply 4. Patent Owner also contends that
`Petitioner HTC does not identify any reason for delaying more than four
`years after it was served with a complaint, to file the Petition in this
`proceeding. Id.
`We are not persuaded by Petitioner HTC’s arguments. All of the
`claims challenged in the Petition were challenged by the same petitioner in
`CBM2017-00054. The instant Petition challenges claims 1−3, 6−14, and 16
`of the ’941 patent, while the petition in CBM2017-00054 challenges claims
`1−19 of the ’941 patent. Pet. 5; CBM2017-00054, Paper 1 at 1.
`We recognize that the Petition in CBM2019-00054 was denied
`because the ’941 patent was held to be ineligible for a CBM review, without
`reaching the merits of the prior art ground. CBM2017-00054, Paper 7 at 2,
`11. But, as Patent Owner points out, Petitioner HTC fails to identify an
`adequate reason for delaying more than four years after it was served with a
`complaint, to file the instant Petition. Petitioner HTC could have filed an
`IPR petition concurrently with its petition in CBM2019-00054.
`As discussed below, Petitioner HTC should have known Hellman and Chou,
`the primary reference and secondary reference asserted in both grounds here
`when filing its first petition in 2017. Moreover, Petitioner HTC has
`
`9
`
`
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`IPR2021-00570
`Patent 6,411,941 B1
`
`benefitted from petitions filed in other proceedings, including CBM2016-
`00023 filed by Apple and IPR2020-01184 filed by Samsung.
`In light of the foregoing, we determine that Factor 1 of General
`Plastic weighs against institution.
`
`Factor 2: “whether at the time of filing of the first petition the
`petitioner knew of the prior art asserted in the second petition or
`should have known of it”
`Patent Owner argues that this factor weighs against institution because
`Petitioner HTC knew or should have known of the asserted prior art.
`Opp. 13. Patent Owner asserts that the public record of the Ancora v. Apple
`case makes clear that Hellman and Chou were available and known to
`accused infringer of the ’941 patent by August 25, 2015. Id. (citing
`Ex. 2004 (Apple’s 2015 Invalidity Contentions), 2, 3, 31).
`Petitioner HTC argues that Factor 2 only weighs only slightly against
`institution because Petitioner did not learn of Schneck until it began
`preparing its invalidity contentions in 2019. Reply 5 (citing Ex. 2005).
`In its Sur-reply, Patent Owner contends that Hellman and Chou were
`available and could be found much easier than the art relied upon within
`Petitioner HTC’s CBM petition demonstrates this factor weighs strongly
`against institution. Sur-reply 3.
`We agree with Patent Owner that Petitioner HTC should have known
`of Hellman and Chou asserted in both grounds in the instant Petition, at the
`time of filing of the first petition. As Patent Owner points out, Apple’s 2015
`Invalidity Contentions in a district court litigation involving the ’941 patent
`makes clear that Hellman and Chou were publicly available and known to
`10
`
`
`
`IPR2021-00570
`Patent 6,411,941 B1
`
`accused infringer of the ’941 patent by August 25, 2015. Ex. 2004, 2, 3, 31.
`Therefore, we determine that Factor 2 of General Plastic factor weighs
`against institution.
`
`Factor 3: “whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary response
`to the first petition or received the Board’s decision on whether to
`institute review of the first petition”
`Patent Owner and Petitioner HTC argue Factor 1 and Factor 3
`together. Opp. 12; Reply 5−6; Sur-reply 3−4. For the same reasons stated
`above, we conclude that Factor 3 also weights against institution.
`
`Factor 4: “the length of time that elapsed between the time the
`petitioner learned of the prior art asserted in the second petition and
`the filing of the second petition”
`Patent Owner argues that this factor weighs against institution.
`Opp. 13; Sur-reply 3. Patent Owner points out that Petitioner HTC was first
`served with a complaint alleging infringement of the ’941 patent on
`December 27, 2016—more than four years before filing this Petition.
`Opp. 13. Patent Owner contents that Petitioner HTC has ample time to
`identify art, long before filing this Petition because Hellman and Chou were
`available and known to accused infringers of the ’941 patent as early as
`August 2015. Id. (citing Ex. 2004, 2, 3, 31).
`Petitioner HTC argues that Factor 4 is neutral because any delay is
`due to the fact that Petitioner HTC’s ability to bring a joinder-type IPR
`petition did not arise until another party filed its own petition. Reply 5.
`According to Petitioner, it did not learn of the art in this Petition until after
`
`11
`
`
`
`IPR2021-00570
`Patent 6,411,941 B1
`
`the Federal Circuit appeal when the district court proceedings resumed in
`late 2018. Id.
`As discussed above, we agree with Patent Owner that Petitioner HTC
`should have known of Hellman and Chou at the time of filing of the first
`petition. Apple’s 2015 Invalidity Contentions in a district court litigation
`involving the ’941 patent makes clear that Hellman and Chou were publicly
`available and known to accused infringer of the ’941 patent by August 25,
`2015. Ex. 2004, 2, 3, 31. Petitioner HTC could have filed an IPR petition
`concurrently with its petition in CBM2019-00054, instead of waiting more
`than 4 years to join with another IPR proceeding. Therefore, Factor 4 of
`General Plastic weighs against institution.
`
`Factor 5: “whether the petitioner provides adequate explanation for
`the time elapsed between filings of multiple petitions directed to the
`same claims of the same patent”
`Patent Owner argues that this factor weighs against institution because
`Petitioner has not explained the four-year time elapsed between the filing of
`the Petition filed in CBM2017-00054 and this Petition. Opp. 13−14.
`In its Reply, Petitioner HTC argues this factor weighs heavily in favor
`of institution because Petitioner filed its Motion for Joinder only three days
`after institution of IPR2020-01609. Reply 4.
`In its Sur-reply, Patent Owner argues that Petitioner fails to address
`adequately the four-year time period that elapsed between the first Petition
`and this Petition, and improperly focuses on its filing of the Motion for
`Joinder. Sur-reply 2.
`
`12
`
`
`
`IPR2021-00570
`Patent 6,411,941 B1
`
`
`We agree with Patent Owner. As discussed above, Petitioner should
`have known of Hellman and Chou at the time of filing of the first Petition.
`Apple’s 2015 Invalidity Contentions in a district court litigation involving
`the ’941 patent makes clear that Hellman and Chou were publicly available
`and known to accused infringer of the ’941 patent by August 25, 2015.
`Ex. 2004, 2, 3, 31. Petitioner does not explain why it could not have filed an
`IPR petition concurrently with its Petition filed in CBM2017-00054.
`Therefore, Factor 5 of General Plastic weighs against institution.
`
`Factor 6: “the finite resources of the Board”
`Patent Owner argues that the resources spent by the Board on this
`Petition would duplicate various district court efforts, including trial
`between Ancora and Samsung that is scheduled in April 2021, and trial
`between Ancora and LG that is scheduled to begin on June 7, 2021. Opp. 14
`(citing Ex. 2008); Sur-reply 2.
`In its Reply, Petitioner argues that this factor heavily favors institution
`because “this IPR would be more likely to conclude before the district court
`would decide dispositive motions on validity, much less trial.” Reply 3−4.
`As discussed above, the instant Petition is Petitioner HTC’s second
`petition challenging the ’941 patent. Like in Uniloc, joinder in this
`circumstance would allow Petitioner HTC to continue a proceeding even
`after settlement with the primary petitioner, based on a second attempt by
`Petitioner HTC. See Uniloc, Paper 9 at 11−12. Therefore, we determine the
`sixth General Plastic factor weighs in favor of denying institution.
`
`13
`
`
`
`IPR2021-00570
`Patent 6,411,941 B1
`
`
`Factor 7: “the requirement under 35 U.S.C. § 316(a)(11) to issue a
`final determination not later than 1 year after the date on which the
`Director notices institution of review”
`Patent Owner argues that this factor weighs against institution because
`“the only way to conduct a trial in this proceeding is to delay the Original
`Proceeding by at least two mounts and likely more.” Opp. 15. Petitioner
`counters that Factor 7 favors institution because Petitioner “agreed to adhere
`to the operative schedule in IPR2020-01609 and that has not changed,” and
`that the Patent Owner “speculates about delay in the IPR schedule.”
`Reply 3. We agree with Petitioner.
`Therefore, we determine the seventh General Plastic factor does not
`weigh in favor of exercising discretion to deny institution.
`
`Conclusion on the General Plastic Factors
`Upon consideration of all General Plastic factors and the arguments
`presented by the parties for and against the exercise of discretionary denial
`under § 314(a), we conclude that on balance, the majority of the factors
`(Factors 1−3, 5, and 6) weigh in favor of denying institution. Therefore, we
`exercise our discretion under § 314(a) to deny the instant Petition.
`
`III. DENIAL OF MOTION FOR JOINDER
`As stated above, the Director may join a party to an ongoing IPR only
`if the filed petition warrants institution under § 314. 35 U.S.C. § 315(c).
`Because we are exercising discretion to deny institution under § 314, we
`deny Petitioner HTC’s Motion for Joinder.
`
`
`14
`
`
`
`IPR2021-00570
`Patent 6,411,941 B1
`
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is
`denied; and
`FURTHER ORDERED that the Motion for Joinder is denied.
`
`
`
`15
`
`
`
`IPR2021-00570
`Patent 6,411,941 B1
`
`PETITIONER:
`
`Irfan Lateef
`Brian Claassen
`Daniel Kiang
`
`KNOBBE MARTENS
`Boxhtc57@knobbe.com
`2bcc@knobbe.com
`2dck@knobbe.com
`
`PATENT OWNER:
`Nicholas Peters
`David Gosse
`Paul Henkelmann
`
`FITCH, EVEN, TABIN & FLANNERY LLP
`ntpete@fitcheven.com
`dgosse@fitcheven.com
`phenkelmann@fitcheven.com
`
`John Rondini
`John LeRoy
`Marc Lorelli
`
`BROOKS KUSHMAN P.C.
`ancc0120IPR@brookskushman.com
`jrondini@brookskushman.com
`
`
`
`
`16
`
`
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