`571-272-7822
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` Paper 15
` Entered: September 28, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PARROT S.A., PARROT DRONES, S.A.S. and PARROT INC.,
`Petitioners,
`
`v.
`
`QFO LABS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01089
`Patent 7,931,239 B2
`____________
`
`
`Before MEREDITH C. PETRAVICK, HYUN J. JUNG, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Dismissing Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
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`
`IPR2017-01089
`Patent 7,931,239 B2
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`I.
`
`INTRODUCTION
`Parrot S.A., Parrot Drones S.A.S., and Parrot Inc. (“Petitioners”) filed
`a Petition (Paper 2, “Pet.”), requesting institution of an inter partes review of
`claims 1–9 of U.S. Patent No. 7,931,239 B2 (Ex. 1001, “the ’239 patent”).
`Petitioners also filed concurrently a Motion for Joinder that seeks joinder to
`Case IPR2016-01550. Paper 3. QFO Labs, Inc. (“Patent Owner”) timely
`filed a Preliminary Response1 (Paper 7, “Prelim. Resp.”).
`For the reasons below, based on the circumstances of this case, we
`exercise our discretion pursuant to 35 U.S.C. § 314(a) and 37 C.F.R.
`§ 42.108(a) to deny the Petition and, therefore, decline to institute an inter
`partes review. Because the Petition is denied, we also dismiss as moot
`Petitioners’ Motion for Joinder.
`A. The ’239 Patent (Ex. 1001)
`The ’239 patent relates to a “homeostatic flying hovercraft.” Ex.
`1001, 1:19. Homeostatic flying craft 200 has upper surface 202, bottom
`surface 204, four duct openings 212, and battery-powered ducted fan 214
`mounted inboard from each duct opening 212. Id. at 9:14–29. Each fan 214
`is powered from an internal pair of batteries 216. Id. at 9:41–42.
`Homeostatic control system 300 is “operably connected to the thrusters . . .
`in order to maintain a desired orientation” and includes “XYZ sensor
`arrangement 302 and associated control circuitry 304 that dynamically
`determines an inertial gravitational reference.” Id. at 10:64–11:5.
`
`
`1 The Preliminary Response improperly contains arguments against
`Petitioners’ Motion for Joinder. See Prelim. Resp. 19–23; 37 C.F.R.
`§ 42.6(3) (“Combined motions, oppositions, replies, or other combined
`documents are not permitted.”) and § 42.25(a)(1) (“An opposition is due one
`month after service of the motion.”).
`
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`2
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`IPR2017-01089
`Patent 7,931,239 B2
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`A radio-controlled (“RC”) controller 220 “includes a body adapted to
`be held in one hand” and a “homeostatic control system IS positioned within
`the body.” Id. at 10:13–17. A user selectively positioning an orientation of
`RC controller 220 provides a “desired orientation.” Id. RC controller 220
`includes a “bidirectional radio frequency (RF) transceiver providing two-
`way RF communications between the RC aircraft and the hand-held RC
`controller that communicates the desired orientation to the RC aircraft.” Id.
`at 10:22–25.
`B. Illustrative Claim
`The ’239 patent has 10 claims, of which Petitioners challenge claims
`1–9. Of the challenged claims, claims 1 and 6 are independent, and claim 1
`is reproduced below:
`1. A radio controlled (RC) homeostatic flying
`hovercraft comprising:
`a flying structure having lift generated by at least four
`electrically, powered generally downwardly directed thrusters,
`said flying structure including:
`a homeostatic control system operably connected to said
`thrusters that automatically controls a thrust produced by each
`thruster in order to automatically maintain a desired orientation
`of said flying structure, said homeostatic control system
`including at least a three dimensional, three-axis sensor system
`and associated control circuitry that dynamically determines a
`gravitational reference other than by dead reckoning for use by
`said homeostatic control system in automatic control of said
`thrusters to maintain homeostatic stabilization in said desired
`orientation;
`a radio frequency (RF) receiver; and
`a battery system electrically coupled to said thrusters, said
`RF receiver and said homeostatic control system; and
`an RC controller separate and remote from said flying
`structure and adapted to control said desired orientation of said
`flying structure, said RC controller including:
`
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`3
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`Patent 7,931,239 B2
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`a handheld structure housing a sensor system that senses
`at least a two dimensional, two-axis sensed orientation of said
`handheld structure as a result of a user remote from said flying
`structure selectively orienting said handheld structure; and
`an RF transmitter that communicates information based on
`said sensed orientation to said receiver of said flying structure as
`said desired orientation used by said homeostatic control system
`to automatically control said thrusters to maintain said desired
`orientation.
`
`C. Asserted Grounds
`Petitioners challenge, under 35 U.S.C. § 103, the claims as follows:
`References
`Claim(s)
`Challenged
`1–3, 5–7, and 9
`
`Louvel2, Thomas3, Jimenez4, and Kroo5
`
`3
`
`4–8
`
`1–3, 6, 7, and 9
`
`Louvel, Thomas, Jimenez, Yavnai6, and
`Kroo
`Louvel, Thomas, Jimenez, Carroll7, and
`Kroo
`Louvel, Thomas, Jimenez, and asserted
`admitted prior art8
`Louvel, Thomas, Jimenez, Yavnai, and
`asserted admitted prior art
`Louvel, Thomas, Jimenez, Carroll, and
`asserted admitted prior art
`Louvel, Thomas, Jimenez, Kroo, and
`asserted admitted prior art
`
`2 US 2002/0104921 A1, published Aug. 8, 2002 (Ex. 1004).
`3 US 5,128,671, iss. July 7, 1992 (Ex. 1005).
`4 US 2002/0106966 A1, published Aug. 8, 2002 (Ex. 1007).
`5 I. Kroo & P. Kunz, “Mesoscale Flight and Miniature Rotorcraft
`Development,” Fixed and Flapping Wing Aerodynamics for Micro Air
`Vehicle Applications (Thomas J. Mueller ed., 2001) (Ex. 1006).
`6 US 6,588,701 B2, iss. July 8, 2003 (Ex. 1009).
`7 US 6,847,865 B2, iss. Jan. 25, 2005 (Ex. 1008).
`8 Ex. 1001, 3:46–54, 4:27–34. See Pet. 74 (quoting these portions).
`
`3
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`4–8
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`5
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`4
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`References
`
`Louvel, Thomas, and Jimenez
`
`Claim(s)
`Challenged
`1–3, 6, 7, and 9
`
`Louvel, Thomas, Jimenez, and Yavnai
`
`Louvel, Thomas, Jimenez, and Carroll
`
`Louvel, Thomas, Jimenez, and Kroo
`
`3
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`4–8
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`5
`
`Pet. 17–18.
`D. Related Proceedings
`A related patent is at issue in Cases IPR2016-01559 and IPR2017-
`01090. Pet. 90; Paper 5, 2; Prelim. Resp. 9.
`Patent Owner indicates that the ’239 patent is involved in Parrot S.A.
`v. QFO Labs, Inc., case 1:16-cv-00682-GMS (D. Del.) and QFO Labs, Inc.
`v. Brookstone Stores, Inc., case 0:17-cv-01100-JNE-SR (D. Minn.). Paper 5,
`4–5; Prelim. Resp. 9; Ex. 2014; see also Pet. 90 (indicating intent to file an
`action in the District of Delaware). The ’239 patent was also involved in a
`case that has been dismissed without prejudice. Prelim. Resp. 9.
`Additionally, the ’239 patent was the subject of a petition filed by
`Petitioners in Case IPR2016-01550 (“the ’1550 proceeding”). Pet. 1; Paper
`5, 1–2; Prelim. Resp. 9. In the ’1550 proceeding, Petitioners challenged:
`(1) claims 1–3, 5–7, 9, and 10 as unpatentable over Louvel, Thomas,
`and Jimenez;
`(2) claim 3 as unpatentable over Louvel, Thomas, Jimenez, and
`Yavnai;
`(3) claims 4 and 8 as unpatentable over Louvel, Thomas, Jimenez, and
`Carroll;
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`(4) claims 1, 2, 5–7, 9, and 10 as unpatentable over Gordon9 and
`Thomas;
`(5) claim 3 as unpatentable over Gordon, Thomas, and Yavnai; and
`(6) claims 4 and 8 as unpatentable over Gordon, Thomas, and Carroll.
`Parrot S.A. v. QFO Labs, Inc., Case IPR2016-01550, slip op. at 7 (PTAB
`Feb. 16, 2017) (Paper 18) (“the ’1550 Decision” or “the ’1550 Dec.”). In
`the ’1550 proceeding, we determined that the Petition (“the ’1550 Petition”
`or “the ’1550 Pet.”) was deficient in several of the asserted challenges, and
`therefore, inter partes review was instituted only for claim 10 and not
`instituted for any of claims 1–9 of the ’239 patent. ’1550 Dec. 19, 20, 29,
`31, 35, 36.
`
`II. ANALYSIS
`The Petition in the present proceeding challenges again claims 1–9 of
`the ’239 patent, which were previously challenged in the ’1550 proceeding.
`Compare Pet. 17–18 with ’1550 Pet. 18–19. The present Petition itself notes
`that the institution decision found “the ’[1]550 petition presented insufficient
`evidence of a single claim limitation” and contends that the present Petition
`“addresses the Board’s concerns over the ‘battery’ limitations.” Pet. 1; see
`also Paper 3, 1 (Petitioners stating “the Board . . . declined to institute
`review of claims 1–9” and that the “Board noted a single shortcoming – that
`the original petition presented insufficient evidence of a ‘battery’
`system/means” (emphasis omitted)).
`
`
`9 M. Gordon et al., “Rotorcraft Aerial Robot—Challenges and Solutions,”
`Georgia Institute of Technology, School of Aerospace Engineering (October
`25–28, 1993).
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`Patent Owner urges us to exercise our discretion to deny the Petition
`because it is “undesirable incremental-petitioning” (Prelim. Resp. 23),
`“nothing more than a second-bite that includes the very same arguments as
`in [IPR2016-01550], but with an additional reference . . . being argued to
`support a claim limitation that the Board found missing” (id. at 24), and
`“impermissibly benefit[ing] from the Board’s prior decision” (id.). Patent
`Owner also argues that factors considered by the Board favor using our
`discretion to deny institution in this proceeding. Id. at 26–30.
`We agree with Patent Owner that the Director has discretion to
`institute an inter partes review. Prelim. Resp. 25; 35 U.S.C. § 314(a)
`(stating “[t]he Director may not authorize an inter partes review to be
`instituted unless the Director 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” (emphasis added)); 37 C.F.R. § 42.108(a) (stating “the Board may
`authorize the review to proceed on all or some of the challenged claims and
`on all or some of the grounds of unpatentability asserted for each claim”
`(emphasis added)). There is no per se rule precluding the filing of follow-on
`petitions after the Board’s denial of one or more first-filed petitions on the
`same patent. The Board consistently has considered a number of factors in
`determining whether to exercise that discretion. See NVIDIA Corp. v.
`Samsung Elec. Co., Case IPR2016-00134, slip op. at 6–8 (PTAB May 4,
`2016) (Paper 9) (“NVIDIA”); LG Elecs. Inc. v. Core Wireless Licensing
`S.A.R.L., Case IPR2016-00986, slip op. at 6–7 (PTAB Aug. 22, 2016) (Paper
`12); see also Xactware Sols., Inc. v. Eagle View Techs., Inc., Case IPR2017-
`00034, slip op. at 7–8 (PTAB Apr. 13, 2017) (Paper 9); Gen. Plastic Indus.
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`Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357, slip op. at 15–
`16 (PTAB Sept. 6, 2017) (Paper 19) (designated informative) (“Gen.
`Plastic”). Those factors are:
`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;
`
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`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;
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`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;
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`6. the finite resources of the Board; and
`
`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.
`
`See NVIDIA, slip op. at 6–7.
`The factors are intended to take into account undue inequities and
`prejudices to Patent Owner. Gen. Plastic, slip op. at 17. Multiple, staggered
`petitions challenging the same patent and same claims raise the potential for
`abuse, such as petitioners strategically staging their prior art and arguments
`in multiple petitions, “using our decisions as a roadmap, until a ground is
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`found that results in the grant of review.” Id. Consideration of these factors
`allows for assessing whether a petitioner should have or could have raised
`the new challenges earlier. Id. at 18. “[T]here may be circumstances where
`multiple petitions by the same petitioner against the same claims of a patent
`should be permitted, and that such a determination is dependent on the facts
`at issue in the case.” Id.
`We agree with Patent Owner that applying the factors from NVIDIA
`strongly favors exercising our discretion under 35 U.S.C. § 314(a) and
`37 C.F.R. § 42.108(a). We address each of the factors in the order presented
`above.
`First, Petitioners themselves, state that, in the ’1550 proceeding, the
`Board declined Petitioners’ request to institute review of claims 1–9 of the
`’239 patent and that “[t]his Petition requests that the Board institute review
`of claims 1–9” of the ’239 patent. Pet. 1. Thus, the Petition makes clear that
`Petitioners previously filed a petition directed to the same claims of the same
`patent.
`As to 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, we agree with Patent Owner that Petitioners should have known of the
`new cites to the specification of the ’239 patent and the newly cited
`reference, Kroo, which is the subject of the newly cited portions of the
`specification. See Prelim. Resp. 28. The record also contains insufficient
`explanation as to why Petitioners could not have known about the new
`citations to the ’239 patent specification and Kroo at the time of filing the
`’1550 Petition.
`Additionally, as discussed above, the present Petition acknowledges
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`that it addresses deficiencies in the ’1550 Petition identified by the ’1550
`Decision. See Pet. 1; see also Prelim. Resp. 28 (quoting Pet. 1). Petitioners,
`thus, indicate clearly that they received the Board’s decision on whether to
`institute in the first petition.
`We further agree with Patent Owner that the time that elapsed
`between the time Petitioners learned of the newly identified prior art asserted
`in the second petition and the filing of the second petition favors Patent
`Owner because the newly identified prior art are citations to the specification
`of the ’239 patent. See Prelim. Resp. 29. Kroo is also discussed in the new
`citations to the specification of the ’239 patent. See id. The record indicates
`to us that there can be no plausible explanation as to 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.”
`Regarding “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,” we agree with Patent Owner that
`Petitioners provide insufficient explanation for the time elapsed between the
`filings of the ’1550 Petition and the present petition, both directed to, at
`least, claims 1–9 of the ’239 patent. See id. The only apparent explanation
`seems to be that the present Petition “addresses the Board’s concerns over
`the ‘battery’ limitations” (Pet. 1) identified in the ’1550 Decision.
`Furthermore, challenging the same claims of the same patent in
`multiple staggered petitions is an inefficient use of the inter partes review
`process. See Gen. Plastic, slip op. at 18. Finally, although a final
`determination could be made not later than 1 year after the date on which
`institution of review was noticed, this one factor, even if in Petitioners’
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`favor, does not outweigh the other factors discussed above.
`
`III. CONCLUSION
`
`For the foregoing reasons, based on the circumstances of this case and
`our assessment that the NVIDIA factors strongly favor non-institution, we
`exercise our discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a)
`to deny the Petition in this proceeding. Petitioners’ Motion for Joinder is
`also dismissed as moot.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied as to claims 1–9 of the ’239
`patent, and
`FURTHER ORDERED that the Motion for Joinder is dismissed as
`moot.
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`IPR2017-01089
`Patent 7,931,239 B2
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`PETITIONERS:
`James M. Glass
`Matthew A. Traupman
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`jimglass@quinnemanuel.com
`matthewtraupman@quinnemanuel.com
`
`
`PATENT OWNER:
`Charles A. Lemaire
`Jonathan M. Rixen
`LEMAIRE PATENT LAW FIRM
`clemaire@lemairepatent.com
`jrixen@lemairepatent.com
`
`Charles H. De La Garza
`LAW OFFICES OF CHAZ DE LA GARZA
`Chaz@cdlglaw.com
`
`
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