Trials@uspto.gov
`571-272-7822
`
`Paper No. 9
`Entered: February 21, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FEDEX CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2017-02028
`Patent 6,909,356 B2
`____________
`
`
`Before DAVID C. MCKONE, BARBARA A. PARVIS, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
`Paper No. 9
`Entered: February 21, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FEDEX CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2017-02028
`Patent 6,909,356 B2
`____________
`
`
`Before DAVID C. MCKONE, BARBARA A. PARVIS, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-02028
`Patent 6,909,356 B2
`
`
`I. INTRODUCTION
`
`A. Background
`FedEx Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”) to
`institute an inter partes review of claims 1, 3–5, 7, 11–14, and 17 of U.S.
`Patent No. 6,909,356 B2 (Ex. 1001, “the ’356 patent”). Petitioner indicates
`that FedEx Corporate Services, Inc., Federal Express Corporation, FedEx
`Ground Package System, Inc., FedEx Freight, Inc., FedEx Custom Critical,
`Inc., FedEx Office and Print Services, Inc., and FedEx Supply Chain
`Distribution System, Inc., are real parties in interest. Pet. 49. Intellectual
`Ventures II LLC (“Patent Owner”), filed a Preliminary Response (Paper 8,
`“Prelim. Resp.”). Upon consideration of the Petition and Preliminary
`Response, we exercise our discretion, under 35 U.S.C. § 314(a) and General
`Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-
`01357 (PTAB Sept. 6, 2017) (Paper 19) (precedential), to deny the Petition.
`Accordingly, we do not institute an inter partes review of claims 1, 3–5, 7,
`11–14, and 17 of the ’356 patent.
`
`B. Related Matters
`The parties indicate that the ’356 patent has been asserted in
`Intellectual Ventures II LLC v. FedEx Corp., No. 2:16-cv-980 (E.D. Tex.).
`Pet. 49; Paper 4, 1. The ’356 patent also was the subject of a petition for
`inter partes review in FedEx Corp. v. Intellectual Ventures II LLC, Case
`IPR2017-00750 (PTAB) (“’750 IPR”). Pet. 49; Paper 4, 1.
`
`
`2
`
`
`
`IPR2017-02028
`Patent 6,909,356 B2
`
`
`C. The Asserted Ground
`Petitioner asserts that claims 1, 3–5, 7, 11–14, and 17 would have
`been obvious over Bowers (Ex. 1002, U.S. Patent No. 5,963,134, Oct. 5,
`1999) and Muhme (Ex. 1003, U.S. Patent No. 5,886,634, Mar. 23, 1999).
`Pet. 3.
`Petitioner supports its assertion with the Declaration of Jason Hill,
`Ph.D. (Ex. 1004, “Hill Decl.”).
`
`D. The ’356 Patent
`The ’356 patent describes a tracking system that monitors an entity (a
`person or robot) that enters a controlled space and monitors the addition,
`removal, or other movement or status changes of objects (e.g., inventory) in
`the controlled space. Ex. 1001, Abstract. The inventory items carry radio-
`frequency identification (“RFID”) tags. Id. at 4:7–21. In one embodiment,
`upon receiving information regarding the ingress, egress, or other movement
`of objects in inventory within the controlled space, a user can take steps to
`replenish objects in inventory automatically or objects may be returned to
`inventory automatically. Id. at 7:12–20.
`Claim 1, reproduced below, is illustrative of the invention:
`1.
`A method, comprising:
`obtaining identity information regarding an entity which
`enters a controlled space;
`monitoring, using a wireless tracking system
`communicatively coupled to a computer system,
`locations and movements of the entity and objects
`within the controlled space;
`automatically associating, using the computer system, the
`identity information regarding the entity with
`
`3
`
`
`
`IPR2017-02028
`Patent 6,909,356 B2
`
`
`status information regarding additions, removals,
`returns, defective status, or movements of the
`objects to/from/within the controlled space; and
`transmitting the status information and the associated
`identity information to a server communicatively
`coupled to the computer system and configured to
`automatically notify a user of the status
`information, wherein at least one of the objects is
`automatically returned or picked up as a result of
`such notification.
`
`
`E. The ’750 IPR
`The ’750 IPR involved the same parties and patent as the instant
`proceeding. The prior art asserted in the ’750 IPR and the parties’
`allegations in that proceeding are summarized in our July 12, 2017,
`Institution Decision in that proceeding. See ’750 IPR, Paper 7 (“’750 DI”).
`Petitioner filed a petition in that proceeding on January 23, 2017,
`challenging claims 1, 3–5, 7, 10–14, 17, 33, 34, 51, 53–55, and 60–63 of the
`’356 patent, a superset of the claims asserted in the present proceeding. ’750
`DI 2. Petitioner alleged that those claims would have been obvious over
`Arneson (U.S. Pat. No. 7,844,505 B1). Id. Patent Owner filed a preliminary
`response in the ’750 IPR on May 2, 2017.
`Arneson is directed to a system for tracking inventory items, with
`RFID tags, by a network tag reader. ’750 DI 9. The system can be used in
`libraries, retail stores, warehouses, and medical facilities. Id. at 9–10. In a
`first embodiment, identification cards carried by users and inventory items
`all carry RFID tags, which are tracked by tag readers as they move through a
`space or pass gates and turnstiles. Id. In a second embodiment, RFID tags
`are placed on stationary items or obstacles within a landscape and an
`
`4
`
`
`
`IPR2017-02028
`Patent 6,909,356 B2
`
`automated vehicle or robot is provided with a portable tag reader to help the
`robot navigate the space. Id. at 11–12.
`The parties’ dispute centered on the term “wherein at least one of the
`objects is automatically returned or picked up as a result of such
`notification,” as recited in claim 1. Petitioner contended that a skilled
`artisan would have combined Arneson’s two embodiments, resulting in a
`robot that would automatically return or pick up inventory items. Id. at 14–
`15. In the alternative, Petitioner argued that “automatically returned or
`picked up” is broad enough to encompass a person picking up a purchased
`item after receiving a receipt. Id. at 16–17. We did not find either of
`Petitioner’s theories persuasive on the record presented in that proceeding.
`Id. at 15–18. Accordingly, we declined to institute an inter partes review of
`the ’356 patent. Id. at 18, 23.
`
`
`II. ANALYSIS
`A. Asserted Ground of Unpatentability
`Petitioner contends that claims 1, 3–5, 7, 11–14, and 17 would have
`been obvious over Bowers and Muhme. Pet. 12–48.
`Bowers describes tracking RFID tags attached to articles, for example,
`to use an inventory database to track articles checked out from a library
`using a self-checkout system. Ex. 1002, Abstract. According to Bowers,
`“[c]hecked out articles are returned to the library by being deposited into an
`exterior smart book drop which reads the RFID tag and automatically checks
`the article back in” and “[a]rticle data from the exterior smart book drop are
`used to generate reshelving reports for efficiently reshelv[ing] the articles.”
`Id.
`
`5
`
`
`
`IPR2017-02028
`Patent 6,909,356 B2
`
`
`Muhme describes a security system integrated with an inventory
`control system for monitoring the location and status of items and persons
`within a facility. Ex. 1003, Abstract. The items and persons are associated
`with tags. Id. In Muhme’s system, a base station reads the tags as items are
`being removed from the facility and determines whether to allow the items
`to be removed or to take other action, such as activating an alarm or locking
`the exit. Id.
`According to Petitioner,
`one skilled in the art would have been motivated to combine the
`teachings of Bowers and Muhme to create a library inventory
`and circulation control system capable of not only sounding an
`alarm and/or locking the exits, as disclosed in both Bowers and
`Muhme, but also automatically alerting library personnel to
`investigate unauthorized exits or attempts to exit by patrons
`with articles not checked out from the library, as disclosed in
`Muhme.
`Pet. 22. As to the limitation “wherein at least one of the objects is
`automatically returned or picked up as a result of such notification,” as
`recited in claim 1, Petitioner argues:
`One of ordinary skill would therefore understand that library
`personnel dispatched to investigate unauthorized exits or
`attempts to exit by patrons would automatically place articles
`not checked out in an interior book drop for reshelving as a
`result of the alert notification in accordance with established
`library procedures.
`Id. at 42.
`
`B. Discretion Under 35 U.S.C. § 314(a)
`35 U.S.C. § 314(a) provides that the Director
`
`6
`
`
`
`IPR2017-02028
`Patent 6,909,356 B2
`
`
`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.
`Section 314(a) does not require the Director to institute a review. See
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016)
`(“[T]he PTO is permitted, but never compelled, to institute an IPR
`proceeding.”). Rather, a decision whether to institute is within the
`Director’s discretion, see General Plastic, Case IPR2017-01357, slip op. at
`15, 18–19, and that discretion has been delegated to the Board, see 37 C.F.R.
`§ 42.4(a).
`The Board has articulated a non-exhaustive list of factors to consider
`in evaluating whether to exercise discretion, under § 314(a), to deny a later-
`filed petition challenging a patent previously challenged before the Board.
`Those factors include:
`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;
`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;
`
`4.
`
`7
`
`
`
`IPR2017-02028
`Patent 6,909,356 B2
`
`
`6.
`7.
`
`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;
`the finite resources of the Board; and
`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.
`General Plastic, Case IPR2017-01357, slip op. at 16 (citing NVIDIA Corp.
`v. Samsung Elec. Co., Case IPR2016-00134 (PTAB May 4, 2016)
`(Paper 9)). For the reasons given below, these factors weigh in favor of
`denying the Petition.
`As to the first General Plastic factor, “whether the same petitioner
`previously filed a petition directed to the same claims of the same patent,”
`Petitioner previously and unsuccessfully challenged claims 1, 3–5, 7, 11–14,
`and 17 of the ’356 patent, each of the claims now challenged in the present
`Petition. ’750 DI 2. Accordingly, this factor weighs against institution.
`The second factor asks whether, at the time of filing of the petition in
`the ’750 IPR, Petitioner knew or should have known of Bowers and Muhme.
`Petitioner does not state when it became aware of these references. Patent
`Owner contends that Petitioner knew of, or at least should have known of
`these references.
`First, Patent Owner points out that Bowers is referenced on the face of
`the ’356 patent and was cited by the Examiner during prosecution of the
`’356 patent. Prelim. Resp. 8 (citing Ex. 1001, [56]; Ex. 1005, 123). We
`agree that this is evidence that Petitioner knew or should have known of
`Bowers.
`
`8
`
`
`
`IPR2017-02028
`Patent 6,909,356 B2
`
`
`Second, Patent Owner argues that on March 14, 2017, in District
`Court, Petitioner served extensive claim charts that mapped Bowers and
`Muhme to the challenged claims. Prelim. Resp. 10–11 (citing Exs. 2117,
`2118, 2119). Exhibit 2118 is a claim chart mapping a combination of
`Bowers and either Arneson or Jones (U.S. Pat. No. 6,748,318) to the claims
`challenged in this proceeding. Exhibit 2119 is a claim chart mapping
`Muhme and one of Arneson, Bradley I (U.S. Pat. No. 6,289,260), and
`Bradley II (U.S. Pat. No. 6,061,607) to the claims challenged in this
`proceeding. On this evidence, at least as early as March 14, 2017, Petitioner
`was aware of both Bowers and Muhme.
`Patent Owner argues that, given the extensive nature of the Invalidity
`Contentions, we should infer that Petitioner knew about the references it
`charted, including Bowers and Muhme, at least as early as the January 23,
`2017, filing date of the petition in the ’750 IPR. Prelim. Resp. 10–11. The
`Invalidity Contentions document itself, without the claim charts, is nearly 90
`pages. Ex. 2117. That document references 31 claim charts pertaining to
`the ’356 patent, including those designated here as Exhibits 2118 and 2119.
`Id. at 15, 20–22. This is a substantial set of documents that likely would
`have taken significant research and a considerable length of time to generate.
`We agree with Patent Owner that the most reasonable inference is that
`Petitioner knew about both Bowers and Muhme before it filed its petition in
`the ’750 IPR. Indeed, the reference Petitioner did advance in the ’750 IPR,
`Arneson, was among the many references charted in its Invalidity
`Contentions. The second General Plastic factor weighs against institution.
`The third General Plastic factor asks whether Patent Owner had
`already received Patent Owner’s preliminary response or our institution
`
`9
`
`
`
`IPR2017-02028
`Patent 6,909,356 B2
`
`decision in the ’750 IPR prior to filing the present Petition. The Board
`explained the relevance of this factor in General Plastic:
`factor 3 is directed to Petitioner’s potential benefit from
`receiving and having the opportunity to study Patent Owner’s
`Preliminary Response, as well as our institution decisions on
`the first-filed petitions, prior to its filing of follow-on petitions.
`As discussed in our Decisions Denying Institution, we are
`concerned here by the shifts in the prior art asserted and the
`related arguments in follow-on petitions. Multiple, staggered
`petitions challenging the same patent and same claims raise the
`potential for abuse. The absence of any restrictions on follow-
`on petitions would allow petitioners the opportunity to
`strategically stage their prior art and arguments in multiple
`petitions, using our decisions as a roadmap, until a ground is
`found that results in the grant of review. All other factors aside,
`this is unfair to patent owners and is an inefficient use of the
`inter partes review process and other post-grant review
`processes.
`Case IPR2016-01357, slip op. at 17–18 (internal citation and footnote
`omitted). As Patent Owner points out, Patent Owner filed its preliminary
`response in the ’750 IPR on May 2, 2017, nearly four months prior to the
`present Petition, and we issued the ’750 DI on July 12, 2017, more than a
`month prior to the present Petition. Prelim. Resp. 13–14. Petitioner admits
`that it brought the present Petition to focus on prior art that allegedly
`overcomes the deficiencies we found in the art advanced in the ’750 IPR.
`Pet. 4–5. We agree with Patent Owner (Prelim. Resp. 15) that Petitioner
`used both the prior preliminary response and our Institution Decision as a
`roadmap for selecting references for the present Petition. The third General
`Plastic factor weighs against institution.
`The fourth General Plastic factor asks us to consider the length of
`time that elapsed between the time Petitioner learned of Bowers and Muhme
`
`10
`
`
`
`IPR2017-02028
`Patent 6,909,356 B2
`
`and the filing of the present Petition. As noted above, Petitioner knew of
`both Bowers and Muhme at least as early as March 14, 2017, and probably
`prior to filing its petition in the ’750 IPR. Thus, as Patent Owner points out,
`Petitioner knew about Bowers and Muhme approximately five and one-half
`months prior to filing the present Petition, during which time Patent Owner
`filed a preliminary response and we issued the ’750 DI. Prelim. Resp. 16–
`17. This factor weighs against institution.
`As to the fifth General Plastic factor, “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,” Petitioner does not
`provide an adequate explanation. Petitioner argues that its Petition
`challenges only a subset of those claims challenged in the ’750 IPR, that its
`new challenges are “substantially different from the first petition,” that the
`newly cited art remedies the deficiencies we found in the ’750 IPR
`challenges, and that “this Petition is brought so that the unpatentability of the
`’356 patent’s claims may be properly considered.” Pet. 4–5. None of these
`arguments presents a reason for Petitioner’s long delay, other than waiting
`for the outcome of the ’750 IPR. This factor weighs against institution.
`As to the remaining two General Plastic factors, “the finite resources
`of the Board” and “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 have observed that “multiple, staggered
`petition filings, such as those here, are an inefficient use of the inter partes
`review process and the Board’s resources.” Case IPR2016-01357, slip op. at
`21. Given the lack of sufficient justification for bringing its follow-on
`
`11
`
`
`
`IPR2017-02028
`Patent 6,909,356 B2
`
`Petition, we are not persuaded that the sixth and seventh General Plastic
`factors favor institution.
`We have considered each of the General Plastic factors and
`Petitioner’s stated reasons for filing the present Petition (Pet. 4–5) and find
`that several factors weigh against institution and no factor weighs in favor of
`institution. In particular, the record shows that Petitioner was aware of
`Bowers and Muhme long before it filed the Petition (and likely before it
`filed its petition in the ’750 IPR), but nevertheless waited until we issued the
`’750 DI to file the Petition, using our decision as a roadmap in a manner
`unfair to Patent Owner. On this record, Petitioner has not shown that we
`should exercise our discretion to institute an inter partes review of the
`challenged claims of the ’356 patent.
`
`
`III. CONCLUSION
`We have considered the factors set forth in General Plastic and
`conclude that they weigh against institution. Accordingly, we exercise our
`discretion, under 35 U.S.C. § 314(a), to deny institution of an inter partes
`review.
`
`
`IV. ORDER
`For the reasons given, it is:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review is not instituted for claims 1, 3–5, 7, 11–14, and 17 of U.S. Patent
`No. 6,909,356 B2.
`
`
`
`12
`
`
`
`IPR2017-02028
`Patent 6,909,356 B2
`
`PETITIONER:
`
`Jeffrey Berkowitz
`Michael Young
`Daniel Tucker
`Gracie Mills
`Alexander Boyer
`Bradford Schulz
`James Stein
`FINNEGAN, HENDERSON, FARABOW, GARRETT, & DUNNER LLP
`Jeffrey.berkowitz@finnegan.com
`Michael.young@finnegan.com
`Daniel.tucker@finnegan.com
`Gracie.mills@finnegan.com
`Alexander.boyer@finnegan.com
`Bradford.schulz@finnegan.com
`James.stein@finnegan.com
`
`PATENT OWNER:
`
`Andrew Heinz
`Kevin McNish
`Alan Kellman
`Lauren Nowierski
`DESMARAIS LLP
`aheinz@desmaraisllp.com
`kmcnish@desmaraisllp.com
`akellman@desmaraisllp.com
`lnowierski@desmaraisllp.com
`
`Tim Seeley
`James Hietala
`INTELLECTUAL VENTURES
`tims@intven.com
`jhietala@intven.com
`
`
`
`13
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
