Trials@uspto.gov
`571-272-7822
`
` Paper 14
`Entered: October 12, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
` GOOGLE LLC,
`Petitioner,
`
`v.
`
` IXI MOBILE (R&D) LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-01669
`Patent 7,552,124 B2
`____________
`
`Before BRYAN F. MOORE, TREVOR M. JEFFERSON, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`ORDER
`
`Staying Reexamination Control No. 90/013,988
`
`37 C.F.R. §§ 42.5, 42.122(a)
`
`
`571-272-7822
`
` Paper 14
`Entered: October 12, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
` GOOGLE LLC,
`Petitioner,
`
`v.
`
` IXI MOBILE (R&D) LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-01669
`Patent 7,552,124 B2
`____________
`
`Before BRYAN F. MOORE, TREVOR M. JEFFERSON, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`ORDER
`
`Staying Reexamination Control No. 90/013,988
`
`37 C.F.R. §§ 42.5, 42.122(a)
`
`
`
`IPR2016-01669
`Patent 7,552,124 B2
`
`
`
`INTRODUCTION
`
`A conference call in the instant proceedings was held on
`
`August 21, 2017, pertaining to, inter alia, a request to file a motion to
`
`terminate or stay an ex parte reexamination of the ’124 patent filed by Patent
`
`Owner on July 17, 2017 (Reexamination Control No. 90/013,793, “the
`
`Reexam”). See Ex. 1015 (Request for Reexamination). We authorized
`
`Petitioner to file the motion to terminate or stay the Reexam, and we
`
`authorized Patent Owner to file an opposition. The parties have filed their
`
`briefs. Papers 15 (Petitioner’s Motion to Termination or Stay Co-Pending
`
`Reexamination, “Mot.”), 17 (Patent Owner’s Opposition to Petitioner’s
`
`Motion to Termination or Stay Co-Pending Reexamination, “Mot. Resp.”).
`
`With respect to the Reexam, we have considered the parties’
`
`respective positions in the briefing. Reexaminations must be conducted with
`
`special dispatch under 35 U.S.C § 305, but we have discretion to terminate
`
`or stay a reexamination involving a patent challenged in an inter partes
`
`review under 37 C.F.R. § 42.122(a); see also 35 U.S.C. § 315(d) (granting
`
`Director discretion to terminate or stay such a reexamination).
`
`Given the particular facts of these proceedings, we are persuaded that
`
`exercise of that discretion to stay but not terminate the Reexam is
`
`appropriate under the circumstances.
`
`BACKGROUND
`
`Petitioner asserted in Case IPR2016-01669 that claims 1–10 were
`
`unpatentable over the combination of either Maes and Preston or Pazandak,
`
`White, and Manson. We instituted as to claims 1–5 of the ’124 patent on the
`
`2
`
`
`
`IPR2016-01669
`Patent 7,552,124 B2
`
`
`following asserted grounds: claims 1–5 under 35 U.S.C. § 103(a) as being
`
`unpatentable in view of Maes and Preston; and claims 1–5 under 35 U.S.C.
`
`§ 103(a) as being unpatentable in view of Pazandak, White, and Manson.
`
`Paper 42 (Inst. Dec.), 40. As to claims 6–10, we determined “Petitioner
`
`[had] not shown sufficiently that the Specification discloses an algorithm [as
`
`required by § 112] for the function of parsing a keyword or any other
`
`structure to enable us to determine if the asserted prior art teaches such
`
`structure.” Id. at 9. Thus, we denied institution as to those claims. Id.
`
`In the Reexam, Patent Owner asserts that the references in IPR2016-
`
`01669 and IPR2017-008981 raise substantial new questions of patentability
`
`as to claims 6–10. Ex. 1015, 15–432. Patent Owner also adds new claims
`
`11–71and asserts those are patentable over the references asserted in
`
`IPR20216-01669 and IPR2017-00898. Ex. 1015, 43–66. Despite the large
`
`number of claims the new independent claims 11 and 12, from which the
`
`rest of the claims depend, contain many similar limitations to claims 6–10.
`
`See Ex. 1015, 63–66; Ex. 3002; Mot. 5.
`
`
`
`
`
`
`
`1 Ittycheriah is cited with respect to the “means for parsing the high-level
`
`code” limitation, and Ittycheriah is incorporated by reference into Maes.
`
`Ex. 1015, 27–28.
`
`2 We cite to the page numbers added to the exhibit not the internal page
`
`numbers of the Request for Reexamination document.
`
`3
`
`
`
`IPR2016-01669
`Patent 7,552,124 B2
`
`
`
`ANALYSIS
`
`Rexam Will Be Stayed
`
`Petitioner asserts that the Reexam “should, at a minimum, be stayed”
`
`to avoid inconsistencies between the Reexam and the instant proceeding.
`
`Mot. 4. Patent Owner asserts the Reexam should not be stayed. Mot.
`
`Resp. 1. Patent Owner distinguishes Board decisions that stay
`
`reexamination in favor of IPRs by asserting “no such risk of ‘duplicative’
`
`efforts or ‘inconsistencies’ exists in the present case because the claims that
`
`served as the basis for reexam are not involved in the IPR.” Id. at 3.
`
`Nevertheless, there is significant overlap between this IPR and the Reexam,
`
`such that permitting the reexamination to proceed in parallel could duplicate
`
`efforts within the Office and potentially result in inconsistencies between the
`
`proceedings.
`
`As noted above, Petitioner asserted that claims 1–10 of the ’124 patent
`
`are unpatentable under 35 U.S.C. § 103(a) based on various prior art
`
`references. The Office has ordered reexamination of claims 6–10 based on
`
`the same prior art references. See Ex. 3001, 6–11, 13. Although the Board
`
`did not institute as to claims 6–10, those claims are essentially means plus
`
`function versions of claims 1–5 and contain very similar limitations. See
`
`generally, Ex. 1001. Thus, consideration of claims 6–10 based on the same
`
`references as the current IPR will raise issues in the Reexam similar to those
`
`being explored in the current IPR.
`
`Patent Owner cites to Idle Free for the proposition that a
`
`reexamination is the proper way for a Patent Owner to amend claims even
`
`4
`
`
`
`IPR2016-01669
`Patent 7,552,124 B2
`
`
`when it asserts the same grounds as an IPR. Mot. Resp. 2–3 (citation
`
`omitted). However, Idle Free was concerned with “a complete remodeling
`
`of [Patent Owner’s] claim structure according to a different strategy,” which
`
`is not the case here. Idle Free Systems, Inc. v. Bergstrom, Inc., Case
`
`IPR2012-00027, slip op. at 6 (PTAB June 11, 2013) (Paper 26). Here,
`
`Patent Owner simply adds two new claims in the Reexam.
`
`The Reexam has been initiated, but the Office has not yet issued a
`
`Notice of Intent to Issue Ex Parte Reexamination Certificate. Ex. 3001.
`
`Patent Owner asserts the “Board ordinarily will not stay a reexamination
`
`because, in the absence of good cause, reexaminations are conducted with
`
`special dispatch.” Mot. Resp. 2 (quoting IBG, LLC et al. v. Trading Tech.
`
`Int’l, Inc., Case CBM2015-00179, slip op. at 3 (PTAB May 2, 2016)
`
`(Paper 52) (citing 35 U.S.C. § 305)). Having two proceedings at the Office
`
`involving many very similar claim limitations and the same prior art taking
`
`place at the same time is inconsistent with the Board’s rules designed to
`
`“secure the just, speedy, and inexpensive resolution of every proceeding.”
`
`37 C.F.R. § 42.1(b); see also 37 C.F.R. § 42.122(a).
`
`Rexam Will Not Be Terminated at This Time
`
`Petitioner argues that the Reexam should be terminated because, as
`
`explained above, the examiner cannot resolve the issues relating to 35
`
`U.S.C. § 112 with claims 6–10 and thus, “the examiner is at this point in a
`
`position where any further analysis of claims 6–10 would be inconsistent
`
`with the Board’s finding in the Institution Decision that these claims could
`
`not be interpreted.” Mot. 3. Patent Owner argues that
`
`5
`
`
`
`IPR2016-01669
`Patent 7,552,124 B2
`
`
`
`termination of the ’124 Patent Reexam would unduly prejudice
`IXI by putting claims that are not involved in the instant IPR in
`a permanent state of limbo and would, in fact, reward Petitioner
`for failing to meet its IPR burden at institution by essentially
`treating the Board’s preliminary decision of non-institution with
`respect to certain claims as a final determination that the non-
`instituted claims are unpatentable.
`
`Mot. Resp. 5. Because the Reexam involves different claims than those
`
`remaining at issue in this IPR, we determine that termination of the Reexam
`
`is not called for at this time. This decision not to terminate the Reexam may
`
`be revisited at a later date.
`
`CONCLUSION
`
`Based on the particular facts of the instant proceeding and the
`
`Reexam, we determine that the fairest and most efficient course of action is
`
`to stay the Reexam until the instant proceeding is terminated or completed.
`
`In consideration of the foregoing, it is hereby:
`
`ORDER
`
`ORDERED that Reexamination Control No. 90/013,988 is stayed
`
`pending the termination or completion of Case IPR2016-01669; and
`
`FURTHER ORDERED that this stay tolls all time periods for filing
`
`further papers in Reexamination Control No. 90/013,988, and no further
`
`papers shall be filed in the reexamination while this stay remains in place.
`
`
`
`
`
`
`
`
`
`6
`
`
`
`IPR2016-01669
`Patent 7,552,124 B2
`
`
`PETITIONER:
`
`Naveen Modi
`naveenmodi@paulhastings.com
`
`Joseph Palys
`josephpalys@paulhastings.com
`
`Daniel Zeilberger
`danielzeilberger@paulhastings.com
`
`Arvind Jairam
`arvindjairam@paulhastings.com
`
`
`
`PATENT OWNER:
`
`Andy Chan
`chana@pepperlaw.com
`
`Charles Koch
`kochc@pepperlaw.com
`
`Griffin Mesmer
`mesmerg@pepperlaw.com
`
`Andrew Schultz
`schultza@pepperlaw.com
`
`
`
`7
`
`
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