Trials@uspto.gov
`571-272-7822
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`
`
`
`
` Paper 15
` Entered: September 28, 2017
`
`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 IPR2017-01090
`Patent 9,073,532 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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`

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`IPR2017-01090
`Patent 9,073,532 B2
`
`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 1–7 and 15–24 of U.S. Patent No. 9,073,532 B2 (Ex. 1001, “the ’532
`patent”). Petitioners also filed concurrently a Motion for Joinder that seeks
`joinder to Case IPR2016-01559. 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 ’532 Patent (Ex. 1001)
`The ’532 patent relates to a “homeostatic flying hovercraft.” Ex.
`1001, 1:20–25. 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 9:20–33. Each fan 214
`is powered from an internal pair of batteries 216. Id. at 9:45–46.
`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 11:1–10.
`
`
`1 The Preliminary Response improperly contains arguments against
`Petitioners’ Motion for Joinder. See Prelim. Resp. 15–21; 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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`IPR2017-01090
`Patent 9,073,532 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 10:18–22. 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 10:26–30.
`B. Illustrative Claim
`The ’532 patent has 24 claims, of which Petitioners challenge claims
`1–7 and 15–24. Of the challenged claims, claims 1, 15, and 21 are
`independent, and claim 1 is reproduced below:
`1.
`A radio controlled (RC) flying hovercraft controlled
`by a handheld RC controller separate and remote from the RC
`flying hovercraft, the RC flying hovercraft comprising:
`a set of thrusters, each thruster including at least one blade
`driven by an electrically powered motor, that provide aerodynamic
`lift for the RC flying hovercraft;
`a battery system positioned in the flying hovercraft and
`electrically coupled to the set of thrusters;
`a homeostatic control system positioned in the RC flying
`hovercraft and operably connected
`to
`the
`thrusters
`that
`automatically controls a thrust produced by each thruster in order
`to automatically maintain a desired orientation of the RC flying
`hovercraft, the 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 alone for use by the homeostatic
`control system in automatic control of said thrusters to maintain
`homeostatic stabilization in the desired orientation; and
`a radio frequency (RF) receiver positioned in the RC flying
`hovercraft and adapted to receive communications from the RC
`controller, the communications including the desired orientation of
`the RC flying hovercraft used by the homeostatic control system to
`
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`IPR2017-01090
`Patent 9,073,532 B2
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`3, 4, 7, 17, and 18
`
`6, 20, and 24
`
`1–5, 7, 15–19, and 21–23
`
`automatically control the thrusters to maintain the desired
`orientation, wherein the desired orientation communicated by the
`RC controller is determined based on a handheld structure housing
`a sensor system in the RC controller that senses at least a two
`dimensional, two-axis sensed orientation of the handheld structure
`as a result of a user remote from the RC flying hovercraft
`selectively orienting the handheld structure,
`whereby an actual moment-to-moment orientation of the RC
`flying hovercraft mimics a corresponding moment-to-moment
`positioning of the RC controller based on the two dimensional, two-
`axis sensed orientation of the RC controller.
`
`C. Asserted Grounds
`Petitioners challenge, under 35 U.S.C. § 103, the claims as follows:
`References
`Claims Challenged
`Louvel2, Thomas3, Jimenez4, and
`1–5, 7, 15–19, 21–23
`Kroo5
`Louvel, Thomas, Jimenez, Yavnai6,
`and Kroo
`Louvel, Thomas, Jimenez, Gabai7,
`and Kroo
`Louvel, Thomas, Jimenez, and
`Admitted Prior Art8
`Louvel, Thomas, Jimenez, Yavnai,
`and Admitted Prior Art
`Louvel, Thomas, Jimenez, Gabai,
`and 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 2001/0021669 A1, published Sept. 13, 2001 (Ex. 1008).
`8 Ex. 1001, 3:49–57, 4:31–39. See Pet. 74 (quoting these portions).
`
`3, 4, 7, 17, and 18
`
`6, 20, and 24
`
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`Patent 9,073,532 B2
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`References
`Louvel, Thomas, and Jimenez
`
`Claims Challenged
`1–5, 7, 15–19, and 21–23
`
`6, 20, and 24
`
`3, 4, 7, 17, and 18
`
`Louvel, Thomas, Jimenez, and
`Yavnai
`Louvel, Thomas, Jimenez, and
`Gabai
`Pet. 18–19.
`D. Related Proceedings
`The parties indicate that the ’532 patent is a continuation of the patent
`at issue in Cases IPR2016-01550 and IPR2017-01089. Pet. 87–88; Paper 5,
`1–2; Prelim. Resp. 4, 9.
`Patent Owner also indicates that the ’532 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. 8–9; Ex. 2014; see also Pet. 88 (indicating intent
`to file an action in the District of Delaware).
`Additionally, the ’532 patent was the subject of a petition filed by
`Petitioners in Case IPR2016-01559 (“the ’1559 proceeding”). Pet. 1; Paper
`5, 1–2; Prelim. Resp. 9. In the ’1559 proceeding, Petitioners challenged:
`(1) claims 1–5, 7–12, 14–19, and 21–23 as unpatentable over Louvel,
`Thomas, and Jimenez;
`(2) claims 3, 4, 7, 10, 11, 17, and 18 as unpatentable over Louvel,
`Thomas, Jimenez, and Yavnai;
`(3) claims 6, 13, 20, and 24 as unpatentable over Louvel, Thomas,
`Jimenez, and Gabai;
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`(4) claims 1, 5, 8, 12, 14, 15, 19, and 21 as unpatentable over Gordon9
`and Thomas; and
`(5) claims 6, 13, 20, and 24 unpatentable over Gordon, Thomas, and
`Gabai.
`Parrot S.A. v. QFO Labs, Inc., Case IPR2016-01559, slip op. at 6–7 (PTAB
`Feb. 16, 2017) (Paper 15) (“the ’1559 Decision” or “the ’1559 Dec.”). In
`the ’1559 proceeding, we determined that the Petition (“the ’1559 Petition”
`or “the ’1559 Pet.”) was deficient in several of the asserted challenges, and
`therefore, inter partes review was instituted for claims 8–14 and not
`instituted for any of claims 1–7 and 15–24 of the ’532 patent. ’1550 Dec.
`16, 24, 25, 27, 29, 35, 36.
`
`
`II. ANALYSIS
`The Petition in the present proceeding challenges again claims 1–7
`and 15–24 of the ’532 patent, which were previously challenged in the ’1559
`proceeding. Compare Pet. 18–19 with ’1559 Pet. 16–17. The present
`Petition itself notes that the institution decision found “the ’[1]559 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 1–7 and 15–24” and that the “Board
`noted a single shortcoming – that the original petition presented insufficient
`evidence of a ‘battery system’/‘electrical-power system’” (emphasis
`
`
`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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`omitted)).
`Patent Owner urges us to exercise our discretion to deny the Petition
`because it is “undesirable incremental-petitioning” (Prelim. Resp. 21),
`“nothing more than a second-bite that includes the very same arguments as
`in [IPR2016-01559], but with an additional reference . . . being argued to
`support a claim limitation that the Board found missing” (id. at 22), 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 24–28.
`We agree with Patent Owner that the Director has discretion to
`institute an inter partes review. Prelim. Resp. 23; 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-
`
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`00034, slip op. at 7–8 (PTAB Apr. 13, 2017) (Paper 9); Gen. Plastic Indus.
`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;
`
`
`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. 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
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`in multiple petitions, “using our decisions as a roadmap, until a ground is
`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 ’1559 proceeding, the
`Board declined Petitioners’ request to institute review of claims 1–7 and 15–
`24 of the ’532 patent and that “[t]his Petition requests that the Board institute
`review of claims 1–7 and 15–24” of the ’532 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 ’532 patent and the newly cited
`reference, Kroo, which is the subject of the newly cited portions of the
`specification. See Prelim. Resp. 26. The record also contains insufficient
`explanation as to why Petitioners could not have known about the new
`citations to the ’532 patent specification and Kroo at the time of filing the
`’1559 Petition.
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`Additionally, as discussed above, the present Petition acknowledges
`that it addresses deficiencies in the ’1559 Petition identified by the ’1559
`Decision. See Pet. 1; see also Prelim. Resp. 26 (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 ’532 patent. See Prelim. Resp. 27. 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 ’1559 Petition and the present petition, both directed to, at
`least, claims 1–7 and 15–24 of the ’532 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 ’1559
`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
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`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’
`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 1–7 and 15–24 of
`the ’532 patent, and
`FURTHER ORDERED that the Motion for Joinder is dismissed as
`moot.
`
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`Patent 9,073,532 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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