Trials@uspto.gov
`571-272-7822
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` Paper 10
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` Entered: December 13, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ONE WORLD TECHNOLOGIES, INC. d/b/a TECHTRONIC INDUSTRIES
`POWER EQUIPMENT,
`Petitioner,
`v.
`THE CHAMBERLAIN GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01546
`Patent 7,224,275 B2
`____________
`
`
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and
`JON M. JURGOVAN, Administrative Patent Judges.
`
`JURGOVAN, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
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`
`571-272-7822
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` Paper 10
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`
`
` Entered: December 13, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ONE WORLD TECHNOLOGIES, INC. d/b/a TECHTRONIC INDUSTRIES
`POWER EQUIPMENT,
`Petitioner,
`v.
`THE CHAMBERLAIN GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01546
`Patent 7,224,275 B2
`____________
`
`
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and
`JON M. JURGOVAN, Administrative Patent Judges.
`
`JURGOVAN, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-01546
`Patent 7,224,275 B2
`
`
`I.
`INTRODUCTION
`Petitioner, OneWorld Technologies, Inc. d/b/a Techtronic Industries Power
`Equipment, filed a Petition requesting an inter partes review of claims 1, 4–6, 9–
`11, 14, 15, 21, 22, and 24–28 of U.S. Patent No. 7,224,275 B2 (Ex. 1001, “the ’275
`patent”). Paper 2 (“Pet.”). Patent Owner, The Chamberlain Group, Inc., filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”). Pursuant to our authorization,
`Petitioner filed a Reply and Patent Owner filed a Sur-Reply. See Papers 7–9.
`Upon consideration of the Petition, Preliminary Response, Reply, and Sur-
`Reply, we exercise our discretion to deny institution of trial on this Petition under
`35 U.S.C. § 314(a). Therefore, we do not institute an inter partes review as to the
`challenged claims of the ’275 patent.
`
`A. Related Matters
`Petitioner indicates the ’275 patent is asserted against Petitioner in
`Chamberlain Group, Inc. v. Techtronic Industries Co., No. 16-cv-06097 (N.D. Ill.
`filed June 10, 2016). Pet. 1. Petitioner also identifies other patents that Patent
`Owner is presently asserting against Petitioner in various proceedings: U.S. Patent
`No. 7,635,966 B2 is involved in Chamberlain Group, Inc. v. Techtronic Industries
`Co., No. 16-cv-06097 (N.D. Ill. filed June 10, 2016), and U.S. Patent Nos.
`7,339,336 B2, 7,161,319 B2, and 7,196,611 B2 are involved in Chamberlain
`Group, Inc. v. Techtronic Industries Co., No. 16-cv-06094 (N.D. Ill. filed June 10,
`2016) and Certain Access Control Systems and Components Thereof, ITC
`Investigation No. 337-TA-1016 (instituted Aug. 3, 2016). Pet. 1–2. Petitioner
`previously filed other petitions seeking inter partes review of claims of the ’275
`patent (Cases IPR2016-01772 (claims 1–6, 9–12, and 14–23) (institution denied)
`and IPR2016-01774 (claims 24–31) (institution denied)).
`
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`2
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`IPR2017-01546
`Patent 7,224,275 B2
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`
`Petitioner also has filed petitions against the following patents: U.S. Patent
`No. 6,998,977 B2 (Cases IPR2017-01132 (trial instituted) and IPR2016-01137
`(trial instituted)); U.S. Patent No. 7,635,966 B2 (Cases IPR2016-01846 (institution
`denied), IPR2017-01040 (institution denied), and IPR2017-01042 (institution
`denied)); U.S. Patent No. 7,171,319 B2 (Case IPR2017-00126 (trial instituted));
`U.S. Patent No. 7,196,611 B2 (Cases IPR2017-00073 (trial instituted) and
`IPR2017-00214 (trial instituted)); and U.S. Patent No. 7,339,336 B2 (Case
`IPR2017-00432 (institution denied)).
`
`B. Illustrative Claim
`Of the challenged claims, claims 1, 14, and 24 are independent. Claim 1 is
`illustrative:
`
`1. A movable barrier operator comprising:
`a controller having a plurality of potential operational status
`conditions defined, at least in part, by a plurality of operating
`states;
`a movable barrier interface that is operably coupled to the
`controller;
`a wireless status condition data transmitter that is operably
`coupled to the controller, wherein the wireless status
`condition data transmitter transmits a status condition signal
`that:
`corresponds to a present operational status condition defined,
`at least in part, by at least two operating states from the
`plurality of operating states; and
`comprises an identifier that is at least relatively unique to the
`movable barrier operator, such that the status condition
`signal substantially uniquely identifies the movable barrier
`operator.
`
`
`Ex. 1001, 8:5–21.
`
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`3
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`IPR2017-01546
`Patent 7,224,275 B2
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`C. Prior Art Relied Upon
`Petitioner relies upon the following prior art reference:
`Kikuya
`JP 2001-349141A
`Dec. 21, 2001
`
`Ex. 1003 (Japanese version); Ex. 1004 (certified English translation).
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following ground of unpatentability:
`
`Challenged Claims
`1, 4–6, 9–11, 14, 15, 21, 22,
`and 24–28
`
`
`Pet. 1–3.
`
`Basis
`
`§ 102(b)1
`
`Reference
`
`Kikuya
`
`II. ANALYSIS
`35 U.S.C. § 314(a) provides as follows:
`§ 314. Institution of inter partes review
`(a).Threshold.—The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and
`any response filed under section 313 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.
`This section grants the Board discretion to deny institution of a later-filed petition
`based on various factors, as set forth in General Plastic Indus. Co. v. Canon
`Kabushiki Kaisha, Case IPR2016–01357, slip op. 15−19 (PTAB September 6,
`
`
`1 Because the claims at issue have an effective filing date prior to March 16, 2013,
`the effective date of the applicable provisions of the Leahy-Smith America Invents
`Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), we apply the pre-AIA
`version of 35 U.S.C. § 102 in this Decision.
`
`
`
`
`4
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`IPR2017-01546
`Patent 7,224,275 B2
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`2017) (Paper 19) (“General Plastic”) (Section II.B.4.i designated as precedential2)
`(citing NVIDIA Corp. v. Samsung Elec. Co., IPR2016-00134, slip op. 6−7 (PTAB
`May 4, 2016) (Paper 9)). The non-exhaustive factors are as follows:
`1. whether the same petitioner previously filed a petition directed to
`the same claims of the same patent;
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`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.
`
`
`
`We address each of these factors in turn, but note that not all the factors need
`to weigh against institution for us to exercise our discretion under § 314(a).
`
`
`2 Section II.B.4.i of General Plastic was designated precedential on October 18,
`2017. The decision previously had been designated informative on September 18,
`2017.
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`5
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`IPR2017-01546
`Patent 7,224,275 B2
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`
`1. First Factor: Whether the Petitions are Directed to the Same Claims
`Concerning factor (1) in relation to the facts of this case, the Petition was
`filed on June 12, 2017, and challenges claims 1, 4–6, 9–11, 14, 15, 21, 22, and 24–
`28 of the ’275 patent. Previously, on September 9, 2016, Petitioner filed a petition
`in Case IPR2016-01772 challenging claims 1–6, 9–12, and 14–23 and a petition in
`Case IPR2016-01774 challenging claims 24–31 of the ’275 patent. Thus, all of the
`claims challenged in this Petition were challenged in the previous petitions.
`Consequently, this factor weighs against institution.
`
`2. Second Factor: Whether Petitioner Knew or Should Have Known of the
`Newly Asserted Prior Art
`Considering factor (2), Petitioner states that on January 25, 2017, the Court
`of Appeals for the Federal Circuit (“Federal Circuit”) vacated the claim
`construction of the District Court of the Northern District of Illinois (“District
`Court”), holding that the “controller” recited in the claims of the ’275 patent may
`rely upon external sensors to obtain status conditions. Pet. 6. Petitioner states the
`Federal Circuit’s construction prompted Petitioner to engage a new search firm on
`February 23, 2017, which located the Kikuya reference and provided it to
`Petitioner on April 12, 2017. Id. at 7. Upon review, Petitioner states it identified
`the Kikuya reference as anticipatory prior art and filed the present Petition. Id.
`The relevant question under factor (2), however, is whether Petitioner knew
`or should have known of the Kikuya reference at the time of filing its first two
`petitions (September 9, 2016). Petitioner does not provide any explanation as to
`why the reference could not have been found with a reasonably diligent search at
`the time of the earlier petitions. See General Plastic at 11 (“Petitioner . . .
`provided no explanation why it could not have found this new prior art earlier—
`prior to filing the first-filed petitions—through the exercise of reasonable
`6
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`IPR2017-01546
`Patent 7,224,275 B2
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`diligence.”), 19 (“the record is devoid of any explanation why Petitioner could not
`have found the newly asserted prior art in any earlier search(es) through the
`exercise of reasonable diligence”).
`Furthermore, what bearing the Federal Circuit’s claim construction (or those
`of the Board or the District Court) had on whether the Kikuya reference reasonably
`could have been located earlier is not explained adequately in the Petition. In this
`regard, we note that Petitioner states that it requested the later patent search on
`February 23, 2017, which was shortly after receiving our decisions denying
`institution in Cases IPR2016-01772 and IPR2016-01774 on February 21, 2017.
`Petitioner makes no mention of how this factored into the decision to request the
`later patent search.
`Moreover, Petitioner states that it requested the patent search that yielded the
`Kikuya reference on February 23, 2017, and the District Court adopted a “broader
`construction” in an order issued April 7, 2017. Pet. 7. Given this sequence of
`events, we do not see how the scope of the patent search could have taken into
`account a “broader” claim construction that did not exist when Petitioner requested
`the later patent search. We agree with Patent Owner that factor (2) weighs in favor
`of exercising our discretion to deny the Petition. See Prelim. Resp. 10–14.
`In view of the foregoing, this factor weighs against institution.
`
`3. Third Factor: Whether Information from Prior Proceedings was Available
`As to factor (3), the preliminary responses in Cases IPR2016-01772 and
`IPR2016-01774 were filed on December 23, 2016 and December 27, 2016,
`respectively. As noted, our decisions denying institution were entered on February
`21, 2017. Thus, Petitioner had received Patent Owner’s preliminary responses and
`our decisions on institution in Cases IPR2016-01772 and IPR2016-01774 before
`
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`7
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`IPR2017-01546
`Patent 7,224,275 B2
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`filing the present Petition, and thus had the advantage of knowing what was in
`them in preparing the present Petition.
`Consequently, this factor weighs against institution.
`
`4. Fourth Factor: Elapsed Time
`Concerning factor (4), Petitioner states that it received the Kikuya reference
`on April 12, 2017, and filed the Petition two months later on June 12, 2017. Pet. 7.
`Petitioner suggests time was needed to identify and review the Kikuya reference
`and prepare the Petition. Id. However, although a period of two months may be
`reasonable, Petitioner does not explain why two months was a reasonable time
`under the circumstances in which to file the Petition.
`Accordingly, this factor neither weighs for or against institution.
`
`5. Fifth Factor: Whether Petitioner Provides Adequate Explanation
`Regarding factor (5), Petitioner states it conducted “a more than reasonably
`diligent prior art search in 2016 using a top prior art search firm.” Id. at 8.
`Petitioner also states that the ground asserted in this Petition “is not similar to any
`of the prior art relied upon in the earlier petitions, and the new art was not located
`despite a diligent search.” Id. at 10. However, these statements are conclusory,
`and do not provide sufficient detail to justify the nine months that elapsed between
`filing the petitions in Cases IPR2016-01772 and IPR2016-01774, and the present
`Petition, directed to the ’275 patent. Also, we are not persuaded that any changed
`claim construction was unexpected or surprising to Petitioner. See General Plastic
`at 11 (“the shift in Petitioner’s challenges was not the consequence of a position
`that Patent Owner surprisingly advanced or the Board surprisingly adopted”).
`
`
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`8
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`IPR2017-01546
`Patent 7,224,275 B2
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`Other considerations that have a bearing on factor (5) were discussed previously
`(see particularly the discussion under factor (2)).
`For these reasons, this factor weighs against institution.
`
`6. Sixth and Seventh Factors: Board Resources and Final Determination
`As to factors (6) and (7), analysis of “multiple, staggered petition filings” is,
`in general, “an inefficient use of the inter partes review process and the Board’s
`resources.” General Plastic, slip op 21. Board resources are more fairly expended
`on initial petitions rather than follow-on petitions. See id. at 10. In short, the finite
`resources of the Board weigh against institution in this case.
`
` Conclusion
`For the reasons discussed above, we determine a majority of the General
`Plastic factors weigh strongly against institution in this case. Accordingly, we
`exercise our discretion to deny institution under 35 U.S.C. § 314(a) and 37 C.F.R.
`§ 42.108(a).
`
`III. ORDER
`For the foregoing reasons, it is
`ORDERED that the Petition is denied as to all challenged claims of the ’275
`patent.
`
`
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`9
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`IPR2017-01546
`Patent 7,224,275 B2
`
`For PETITIONER:
`Dion Bregman
`Jason C. White
`Michael Lyons
`Ahren C. Hsu-Hoffman
`MORGAN, LEWIS & BOCKIUS LLP
`Jason.white@morganlewis.com
`Dion.bregman@morganlewis.com
`Ahren.hsu-hoffman@morganlewis.com
`michael.lyons@morganlewis.com
`
`For PATENT OWNER:
`W. Karl Renner
`Joshua Griswold
`Jeremy J. Monaldo
`Dan Smith
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`griswold@fr.com
`jjm@fr.com
`dsmith@fr.com
`
`
`
`
`10
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