Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 9
`Entered: April 15, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`THE BOEING COMPANY,
`Petitioner,
`
`v.
`
`SEYMOUR LEVINE,
`Patent Owner.
`_______________
`
`Case IPR2016-00023
`Patent RE39,618
`_______________
`
`
`
`
`
`Before MICHAEL W. KIM, TRENTON A. WARD, and
`DANIEL N. FISHMAN, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`and Dismissing Motion for Joinder
`35 U.S.C. §§ 315(c), 325(d); 37 C.F.R. §§ 42.122, 42.108
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`Paper 9
`Entered: April 15, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`THE BOEING COMPANY,
`Petitioner,
`
`v.
`
`SEYMOUR LEVINE,
`Patent Owner.
`_______________
`
`Case IPR2016-00023
`Patent RE39,618
`_______________
`
`
`
`
`
`Before MICHAEL W. KIM, TRENTON A. WARD, and
`DANIEL N. FISHMAN, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`and Dismissing Motion for Joinder
`35 U.S.C. §§ 315(c), 325(d); 37 C.F.R. §§ 42.122, 42.108
`
`
`
`
`
`
`
`
`IPR2016-00023
`Patent RE39,618
`
`
`
`
`I. INTRODUCTION
`
`
`
`A. Background
`The Boeing Company (“Petitioner”) filed a Petition seeking to
`institute an inter partes review of claims 4, 5, 8, 9, 10, 14, and 16 (“the
`challenged claims”) of U.S. Patent No. RE39,618 (Ex. 1001,
`“the ’618 patent”) pursuant to 35 U.S.C. §§ 311–319. Paper 1 (“Pet.”).
`Seymour Levine (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). After filing the Petition, Petitioner subsequently filed a
`Motion for Joinder, requesting joinder with an inter partes review trial
`currently pending before the Board, The Boeing Company v. Levine, Case
`IPR2015-01341. Paper 7 (“Joinder Motion”). Patent Owner filed an
`Opposition to Petitioner’s Motion for Joinder. Paper 8 (“Joinder
`Opposition”). We have statutory authority under 35 U.S.C. § 314(a), which
`provides that an inter partes review may not be instituted “unless . . . there is
`a reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.”
`Upon consideration of the Petition, Motion for Joinder, and the
`specific facts of this case, we exercise our discretion to deny review under
`35 U.S.C. § 325(d). Because we determine that the Petition does not warrant
`institution, we are prohibited from granting, and thus dismiss as moot, the
`Motion for Joinder under 35 U.S.C. § 315(c).
`B. Additional Proceedings
`The parties indicated the ’618 patent is the subject of the following
`district court action: Levine v. The Boeing Company, No. 14-cv-1991 (W.D.
`Wash.). Pet. 1; Paper 5, 1. The ’618 patent is also the subject of an inter
`partes review trial currently pending before the Board, The Boeing Company
`
`2
`
`
`
`
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`
`
`IPR2016-00023
`Patent RE39,618
`
`v. Levine, Case IPR2015-01341 (the “1341 IPR”). In that proceeding, we
`instituted review of claims 4, 5, 8, 9, 10, 14, and 16 of the ’618 patent, the
`same claims challenged in this proceeding, on December 21, 2015. 1341
`IPR, Paper 10. Trial is currently ongoing in the 1341 IPR, with oral
`argument scheduled for September 14, 2016. 1341 IPR, Paper 24.
`C. The ’618 Patent
`The ’618 patent is titled “Remote, Aircraft, Global, Paperless
`Maintenance System” and generally relates to a system that monitors
`performance parameters and aircraft operational parameters, and broadcasts
`this information along with aircraft identification, audio, video, global
`positioning and altitude data, to a worldwide two-way RF network.
`Ex. 1001, Abstract. The ’618 patent discloses that the information is
`monitored and recorded at a remote, centralized location and analysis of this
`information allows identification of problems and generation of advisories.
`Id.
`
`Figure 1 of the ’618 patent, reproduced below, illustrates an
`embodiment of the system described:
`
`3
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`IPR2016-00023
`Patent RE39,618
`
`
`
`
`
`
`
`As shown above in Figure 1, the ’618 patent discloses an aircraft 10 with
`Sensor Multiplexer Receiver & Transmitter (“SMART”) 14, which can
`receive aircraft performance and control data 18, acoustic data 22, video
`data 26, and information from GPS receiver system 16. Id. at 4:57–65.
`SMART 14 periodically samples the sensor signals 18, 22, 26, 44 and adds
`to each signal a sensor identification label, an aircraft identification label,
`and a configuration label. Id. at 5:1–5. Aircraft 10 equipped with SMART
`14 transmits the sensor data over a UHF radio to communication satellite 38,
`which relays the data to Central Ground Based Processing Station
`
`4
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`IPR2016-00023
`Patent RE39,618
`
`(“CGBS”) 42. Id. at 5:21–28. CGBS 42 includes processing station 62 for
`data analysis and problem simulation and advisory module 70 for generating
`aircraft advisories. Id. at 5:49–53.
`D. Illustrative Claims
`Claims 4 and 8 are illustrative of the claimed subject matter and are
`reproduced below.
`4. An aircraft maintenance system for use on an aircraft having
`a flight data recorder, the maintenance system comprising:
`
` a
`
` transmitter portable to be placed on an aircraft, said transmitter
`configured for transmission of digital aircraft performance data
`across a communication network while said aircraft is in flight;
`and
`
` a
`
` central station connected to said communication network
`configured
`to receive and analyze said digital aircraft
`performance data to generate maintenance advice for said aircraft
`while said aircraft is in flight,
`
`wherein said digital aircraft performance data includes an
`identifier unique to a particular aircraft and a configuration label,
`and at least a portion of said digital aircraft performance data
`comprises data directed to the flight data recorder.
`
`8. The aircraft maintenance system of claim 4 wherein said
`digital aircraft performance data includes aircraft position data
`directed to said flight data recorder.
`E. The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of the challenged claims of the
`’618 patent based on the following grounds, the same grounds as raised in
`the 1341 IPR:
`
`5
`
`
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`IPR2016-00023
`Patent RE39,618
`
`
`Claims
`4, 5, 14, and 16
`8, 9, and 10
`
`4, 5, 14, and 16
`8, 9, and 10
`
`4, 5, 14, and 16
`8, 9, and 10
`
`8, 9, and 10
`
`8, 9, and 10
`
`
`
`
`
`References
`Ward1 in view of ARINC 624-12
`Ward in view of ARINC 624-1 in
`further view of Monroe3
`Dyson4 in view of Chetail
`Dyson in view of Chetail5 in further
`view of Monroe
`Dowling6 in view of ARINC 624-1
`Dowling in view of ARINC 624-1 in
`further view of Monroe
`Ward in view of ARINC 624-1,
`ARINC 702-6,7 and FAA, Increased
`FDR Parameters8
`Ward in view of ARINC 624-1, FAA,
`Increased FDR Parameters and
`Farmakis9
`
`Basis
`§ 103
`§ 103
`
`§ 103
`§ 103
`
`§ 103
`§ 103
`
`§ 103
`
`§ 103
`
`
`1 M J Ward, “Power Plant Health Monitoring – The Human Factor,”
`February 1992 (Ex. 1015) (“Ward”).
`2 “Design Guidance for Onboard Maintenance System,” ARINC Report
`624-1, August 1993 (Ex. 1014) (“ARINC 624-1”).
`3 US Patent No. 5,798,458, filed October 28, 1996 (Ex. 1017) (“Monroe”).
`4 R.J.E. Dyson, “Commercial Engine Monitoring Status at GE Aircraft
`Engines,” October 1988 (Ex. 1019) (“Dyson”).
`5 P. Chetail, “LE CFM 56-5 SUR A320 A Air France,” October 1988 (Ex.
`1018) (“Chetail”).
`6 Drew Dowling and Richard A. Lancaster, “Remote Maintenance
`Monitoring Using a Digital Link,” December 1984 (Ex. 1013) (“Dowling”).
`7 “Flight Management Computer System,” ARINC Characteristic 702-6,
`June 10, 1994 (Ex. 1016) (“ARINC 702-6”).
`8 “Increased Flight Data Recorder Parameters,” Federal Register 13,862–
`13,864, March 14, 1995 (Ex. 1011) (“FAA, Increased FDR Parameters”).
`9 US Patent No. 5,714,948, filed April 16, 1996 (Ex. 1021) (“Farmakis”).
`
`6
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`IPR2016-00023
`Patent RE39,618
`
`
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`
`
`II. ANALYSIS
`Our statutory authority to institute inter partes review derives from
`35 U.S.C. § 314(a), which provides that a review may not “be instituted
`unless the Director10 determines that the information presented in the
`petition . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” As we have recognized, “Congress did not mandate that an inter
`partes review must be instituted under certain conditions. Rather, by stating
`that the Director—and by extension, the Board—may not institute review
`unless certain conditions are met, Congress made institution discretionary.”
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., Case
`IPR2013-00324, slip op. at 4 (PTAB Nov. 21, 2013) (Paper 19). In
`determining whether to institute an inter partes review, the Board may
`“deny some or all grounds for unpatentability for some or all of the
`challenged claims.” 37 C.F.R. § 42.108(b); see 35 U.S.C. § 314(a).
`Our discretion is further guided by 35 U.S.C. § 325(d), which states,
`in relevant part, that “[i]n determining whether to institute or order a
`proceeding under this chapter, chapter 30, or chapter 31,11 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.”
`
`
`10 “The Board institutes the trial on behalf of the Director.” 37 C.F.R.
`§ 42.4(a).
`11 Chapter 31 of the Patent Act covers inter partes review proceedings.
`Thus, although § 325(d) appears in Chapter 32, which is directed to post-
`grant reviews, it is applicable to inter partes reviews.
`
`7
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`IPR2016-00023
`Patent RE39,618
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`
`The Board, acting on behalf of the Director, also has broad discretion
`whether to join a party to an inter partes review under 35 U.S.C. § 315(c):
`JOINDER.–If the Director institutes an inter partes
`review, the Director, in his or her discretion, may join as a party
`to that inter partes review any person who properly files a
`petition under section 311 that the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
`
`
`
`Thus, joinder in an inter partes review may be warranted in certain
`circumstances, but is not required in any. See Sony Corp. v. Network-1 Sec.
`Solutions, Inc., Case IPR2013-00386, slip. op. at 3 (PTAB July 29, 2013)
`(Paper 16) (“[t]he Board will determine whether to grant joinder on a case-
`by-case basis, taking into account the particular facts of each case,
`substantive and procedural issues, and other considerations”). The statute
`does, however, set forth at least one circumstance in which we do not have
`the discretion to join a party: if the Board determines that the second petition
`does not warrant institution. 35 U.S.C. § 315(c) (“the Director . . . may join
`as a party . . . any person who properly files a petition . . . that the
`Director . . . determines warrants the institution of an inter partes review
`under section 314”).
`With these statutory provisions in mind, we turn to the question of
`whether, in our discretion, the Petition in this case warrants inter partes
`review. Petitioner states in the Joinder Motion that its “second petition is
`substantively identical to the first petition with the exception of five
`additional paragraphs in the expert declaration and exhibits referenced
`therein (as well as further evidence that a certain reference is a printed
`
`8
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`IPR2016-00023
`Patent RE39,618
`
`publication).” Joinder Motion. 1. Furthermore, Petitioner explains that it is
`separately seeking leave in the first case, the 1341 IPR, to add the only new
`material contained in this second petition, namely the limited additional
`testimony and related exhibits from its declarant, Dr. Albert Helfrick, as
`supplemental information in the first petition pursuant to 37 C.F.R. §
`42.123(a). Id. at 7. Should Petitioner’s motion to submit supplemental
`information in the 1341 IPR be denied, Petitioner alternatively “seeks
`institution of the second petition and joinder to the instituted IPR2015-
`01341.” Id. In other words, we understand that Petitioner filed this second
`petition “in an abundance of caution,” in the event that we deny its Motion
`to Submit Supplemental Information in the 1341 IPR. See 1341 IPR, Paper
`21.
`
`Concurrent with the entry of this Decision, the Board has issued an
`Order granting Petitioner’s Motion to Submit Supplemental Information in
`the 1341 IPR. See 1341 IPR, Paper 30. The Order granting Petitioner’s
`Motion to Submit Supplemental Information in the 1341 IPR authorizes the
`entry of the Supplemental Declaration of Dr. Albert Helfrick and associated
`Exhibits A–C. See id. (authorizing the entry of 1341 IPR, Ex. 1042). In
`view of the Board’s entry of the supplemental information in related
`1341 IPR, we determine that this second petition is rendered moot because,
`as stated by Petitioner, “[t]he second petition is substantively identical to the
`first petition with the exception of five additional paragraphs in the expert
`declaration and exhibits referenced therein.” Joinder Motion 1.
`Because the Petition presents substantially the same prior art, and
`substantially the same arguments, as the Petition in the 1341 IPR, we
`
`9
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`IPR2016-00023
`Patent RE39,618
`
`exercise our discretion to deny institution of review under 35 U.S.C.
`§ 325(d).
`
`
`
`
`
`
`III. SUMMARY
`For the foregoing reasons, we determine that the Petition presents
`substantially the same art and arguments as the Petition in the 1341 IPR,
`and, taking into account the grant of the motion to submit supplemental
`information in the 1341 IPR, we exercise our discretion to deny institution of
`review under 35 U.S.C. § 325(d). Consequently, we are prohibited from
`granting, and thus dismiss as moot, Petitioner’s Motion for Joinder with the
`1341 IPR.
`
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that the Petition is denied as to all challenged claims of
`the ’618 patent; and
`FURTHER ORDERED that the Motion for Joinder with The Boeing
`Company v. Levine, Case IPR2015-01341 is dismissed.
`
`10
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`
`
`IPR2016-00023
`Patent RE39,618
`
`PETITIONER:
`
`Ryan McBrayer
`Chun Ng
`PERKINS COIE LLP
`rmcbrayer@perkinscoie.com
`cng@perkinscoie.com
`
`
`
`PATENT OWNER:
`
`Bruce R. Zisser
`Amardeep (Amar) L. Thakur
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`brucezisser@quinnemanuel.com
`amarthakur@quinnemanuel.com
`
`11
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