Paper No. 11
` Entered: April 25, 2018
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WESTERN DIGITAL CORPORATION,
`Petitioner,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00082
`Patent 6,088,802
`____________
`
`
`
`Before LYNNE E. PETTIGREW, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
` Entered: April 25, 2018
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WESTERN DIGITAL CORPORATION,
`Petitioner,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00082
`Patent 6,088,802
`____________
`
`
`
`Before LYNNE E. PETTIGREW, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2018-00082
`Patent 6,088,802
`
`I. INTRODUCTION
`Western Digital Corporation (“Petitioner”) requests inter partes
`review of claims 1, 2, 6, 7, 11, 12, 23–25, 38, and 39 (the “challenged
`claims”) of U.S. Patent No. 6,088,802 (“the ’802 patent,” Ex. 1001) pursuant
`to 35 U.S.C. §§ 311 et seq. Paper 1 (“Petition” or “Pet.”). SPEX
`Technologies, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). In response to Patent Owner’s Preliminary Response,
`Petitioner filed an authorized Reply. Paper 9 (“Reply”). Responsive to
`Petitioner’s Reply, Patent Owner filed an authorized Sur-Reply. Paper 10
`(“Sur-Reply”).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . 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.” 35 U.S.C. § 314(a);
`see 37 C.F.R. § 42.108. Upon consideration of the Petition and Preliminary
`Response, we conclude the information presented shows there is a
`reasonable likelihood that Petitioner would prevail in establishing the
`unpatentability of claims 38 and 39 of the ’802 patent. However, Petitioner
`has failed to persuade us of a reasonable likelihood of prevailing in showing
`claims 1, 2, 6, 7, 11, 12, and 23–25 are unpatentable. Because the Petition
`has established a reasonable likelihood in prevailing in showing that at least
`one of the challenged claims of the ’802 patent is unpatentable, we institute
`review of all challenged claims.
`
`Related Matters
`A.
`Petitioner informs us that the ’802 patent is presently asserted against
`it in the following litigation: SPEX Techs., Inc. v. Western Digital Corp.,
`
`2
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`IPR2018-00082
`Patent 6,088,802
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`Case No. 8:16-cv-01799 (C.D. Cal.). Pet. 67–68. In addition, Patent Owner
`further informs us that the ’802 patent is or has been involved in Case Nos.
`IPR2017-00430 and IPR2017-00824 before the Board (institution denied in
`both cases); SPEX Techs., Inc. v. Kingston Techs. Co. Inc., et al., Case No.
`8:16-cv-01790 (C.D. Cal.); SPEX Techs., Inc. v. Toshiba Am. Elecs.
`Components Inc., et al., Case No. 8:16-cv-01800 (C.D. Cal.); SPEX Techs.,
`Inc. v. CMS Prods., Inc., Case No. 8:16-cv-01801 (C.D. Cal.); SPEX Techs.,
`Inc. v. Integral Memory, PLC, Case No. 8:16-cv-01805 (C.D. Cal.); and
`SPEX Techs., Inc. v. Apricorn, Case No. 2:16-cv-07349 (C.D. Cal.).
`Paper 5, 2.1
`
`B. The ’802 Patent
`The ’802 patent is directed to a peripheral device that may be
`connected to a host computer, where the peripheral device performs security
`operations such as encryption and decryption on data communicated
`between the peripheral device and the host computer. Ex. 1001, 1:17–27,
`1:35–38, 4:49–5:4. Figures 1, 2, and 3A of the ’802 patent are reproduced
`below.
`
`
`1 Paper 5, as filed, does not include page numbering as required by our rules.
`For purposes of this decision, we refer to the pages of Paper 5 sequentially
`with the caption page starting as page number 1. Although the error here is
`harmless, the parties are reminded to format all papers and exhibits in
`accordance with 37 C.F.R. §§ 42.6 and 42.63.
`3
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`
`Figures 1 and 2 are block diagrams of prior art systems described in
`the ’802 patent. Id. at 1:52–3:14, 4:14–19. Figure 3A is a block diagram of
`a system according to the claimed invention of the ’802 patent. Id. at 4:20–
`21. The ’802 patent explains that in the prior art, such security operations
`were either performed by the host computer, as illustrated in Figure 1 with
`security mechanism 101a included in host computing device 101, or by a
`standalone security device, as illustrated by security device 203 in Figure 2.
`Id. at 1:58–59, 2:22–32. According to the ’802 patent, both of those
`arrangements were deficient in various ways. Id. at 2:10–21, 2:58–3:14.
`The ’802 patent purports to address these problems by integrating
`security operations into the peripheral device, as security mechanism 302a is
`integrated in peripheral device 302 of Figure 3A. See id. at 3:27–33, 4:56–
`62.
`
`4
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`IPR2018-00082
`Patent 6,088,802
`
`C. Illustrative Claim
`Claims 1, 6, 11, 23, 24, 38, and 39 are the independent claims among
`the challenged claims. Claims 1, 6, 38, and 39 reproduced below, are
`illustrative of the claimed subject matter:
`1. A peripheral device, comprising:
`security means for enabling one or more security
`operations to be performed on data;
`target means for enabling a defined interaction with a host
`computing device;
`means for enabling communication between the security
`means and the target means;
`means for enabling communication with a host computing
`device;
`means for operably connecting the security means and/or
`the target means to the host computing device in response to an
`instruction from the host computing device; and
`means for mediating communication of data between the
`host computing device and the target means so that the
`communicated data must first pass through the security means.
`Id. at 18:55–19:4.
`6. A peripheral device, comprising:
`security means for enabling one or more security
`operations to be performed on data;
`target means for enabling a defined interaction with a host
`computing device;
`means for enabling communication between the security
`means and the target means,
`means for enabling communication with a host computing
`device;
`
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`IPR2018-00082
`Patent 6,088,802
`
`means for operably connecting the security means and/or
`the target means to the host computing device in response to an
`instruction from the host computing device; and
`means for providing to a host computing device, in
`response to a request from the host computing device for
`information regarding the type of the peripheral device,
`information regarding the function of the target means.
`Id. at 19:15–32.
`
`in a peripheral device adapted for
`38. For use
`communication with a host computing device, performance of
`one or more security operations on data, and interaction with a
`host computing device in a defined way, a method comprising
`the steps of:
`receiving a request from a host computing device for
`information regarding the type of the peripheral device; and
`providing to the host computing device, in response to the
`request, information regarding the type of the defined interaction.
`Id. at 22:13–23.
`in a peripheral device adapted for
`39. For use
`communication with a host computing device, performance of
`one or more security operations on data, and interaction with a
`host computing device in a defined way, a method comprising
`the steps of:
`communicating with the host computing device to
`exchange data between the host computing device and the
`peripheral device;
`performing one or more security operations and the
`defined interaction on the exchanged data; and
`mediating communication of the exchanged data between
`the host computing device and the peripheral device so that the
`exchanged data must first [pass] through means for performing
`the one or more security operations.
`Id. at 22:24–38.
`
`6
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`IPR2018-00082
`Patent 6,088,802
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts the challenged claims are unpatentable based on the
`following grounds (Pet. 22):
`
`
`References
`Harari3 and Anderson4
`
`Basis
`§ 103
`
`§ 103
`
`§ 103
`
`Claims challenged
`1, 2, 6, 7, 11, 12, 23–25,
`38, and 39
`1, 2, 11, 12, 23, and 39
`
`1, 2, 11, 12, 23, and 39
`
`Harari, Anderson, and
`Wang5
`Harari, Anderson, and
`Dumas6
`Harari, Anderson, Dumas,
`and Wang
`
`Petitioner relies on the testimony of Martin Kaliski, Ph.D. (Ex. 1015) in
`support of its assertions.
`
`§ 103
`
`1, 2, 11, 12, 23, and 39
`
`II. DISCUSSION
`
`A. Claim Construction
`The ’802 patent issued from an application filed June 4, 1997, and
`accordingly expired no later than June 4, 2017. See 35 U.S.C. § 154(a)(2).
`
`
`2 The summary of the asserted grounds on page 2 of the Petition fails to list
`claim 39 in grounds 2 and 4. However, the substance of the Petition
`addresses claim 39 in both of these grounds. See Pet. 59, 64. We deem this
`apparent typographic error to be harmless.
`3 U.S. Patent No. 5,887,145 (“Harari,” Ex. 1004).
`4 Don Anderson, PCMCIA System Architecture 16-Bit PC Cards, Second
`Edition, 1995 (“Anderson,” Ex. 1006).
`5 U.S. Patent No. 5,765,027 (“Wang,” Ex. 1019).
`6 U.S. Patent No. 6,199,163 B1 (“Dumas,” Ex. 1005).
`7
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`“While claims are generally given their broadest possible scope during
`prosecution, In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000), the Board’s
`review of the claims of an expired patent is similar to that of a district
`court’s review.” In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012).
`Specifically, we apply the principles set forth in Phillips v. AWH Corp., 415
`F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). Under that standard, the
`words of a claim are generally given their ordinary and customary meaning,
`which is the meaning the words would have to a person of ordinary skill at
`the time of the invention, in the context of the entire patent including the
`specification. See Phillips, 415 F.3d at 1312–13.
`A claim limitation using the phrase “means for” creates a rebuttable
`presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6.7
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015).
`Section 112 ¶ 6 provides that:
`An element in a claim for a combination may be expressed as a
`means . . . for performing a specified function without the recital
`of structure, material, or acts in support thereof, and such claim
`shall be construed to cover the corresponding structure, material,
`or acts described in the specification and equivalents thereof.
`Construing a means-plus-function claim term is a two-step process, wherein
`we first identify the claimed function and then determine what structure, if
`any, disclosed in the specification corresponds to the claimed function.
`Williamson, 792 F.3d at 1351; Med. Instrumentation & Diagnostics Corp. v.
`
`
`7 Section 4(c) of the Leahy-Smith America Invents Act (AIA), Pub. L.
`No. 112-29, § 4(c), 125 Stat. 284 (2011), re-designated 35 U.S.C. § 112 ¶ 6,
`as 35 U.S.C. § 112(f). Because the ’802 patent has a filing date before
`September 16, 2012 (effective date of the statute), we refer to the pre-AIA
`version of 35 U.S.C. § 112.
`
`8
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`IPR2018-00082
`Patent 6,088,802
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`Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc.
`v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). Moreover,
`“structure disclosed in the specification is ‘corresponding’ structure only if
`the specification or prosecution history clearly links or associates that
`structure to the function recited in the claim.” Golight, Inc. v. Wal-Mart
`Stores, Inc., 355 F.3d 1327, 1334 (Fed. Cir. 2004); Cardiac Pacemakers,
`296 F.3d at 1113. This analysis applies similarly under both the broadest
`reasonable construction and district court-type claim construction standards.
`See Williamson, 792 F.3d at 1348 (affirming application of § 112 ¶ 6 in
`district court litigation); In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011)
`(“[T]he broadest reasonable interpretation . . . [of] means-plus-function
`language is that statutorily mandated in [Section 112] paragraph six.”
`(quoting In re Donaldson Co., 16 F.3d 1189, 1194–95 (Fed. Cir. 1994)
`(en banc))); Donaldson, 16 F.3d at 1193 (“[P]aragraph six applies regardless
`of the context in which the interpretation of means-plus-function language
`arises, i.e., whether as part of a patentability determination in the PTO or as
`part of a validity or infringement determination in a court.”).
`Only terms that are in controversy need to be construed and only to
`the extent necessary to resolve the controversy. See Wellman, Inc. v.
`Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`1. Section 104(b)(3) Compliance
`Petitioner asserts “[t]his petition is based on the claim constructions
`urged by Patent Owner in the [District Court] [l]itigation, or as the parties
`agreed.” Pet. 8 (citing the District Court’s Tentative Order Regarding Claim
`
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`Construction (Ex. 1014) and Patent Owner’s Opening Claim Construction
`Brief (Ex. 1013)).
`Patent Owner argues we should deny review of this Petition because
`Petitioner fails to meet the burden under 37 C.F.R. § 42.104(b)(3). Prelim.
`Resp. 13–16. The cited rule states, in pertinent part, that the petition must
`set forth:
`How the challenged claim is to be construed. Where the claim
`to be construed contains a means-plus-function or step-plus-
`function limitation as permitted under 35 U.S.C. 112(f), the
`construction of the claim must identify the specific portions of
`the specification that describe the structure, material, or acts
`corresponding to each claimed function;
`37 C.F.R. § 42.104(b)(3). Patent Owner argues prior panels of the Board
`have held this rule to require that Petitioner identify claim constructions that
`it believes to be correct and that Petitioner “take ownership” of any
`proffered claim constructions. Prelim. Resp. 13–14 (citing Toyota Motor
`Corp. v. Blitzsafe Texas LLC, Case IPR2016-00422, Paper 12, 26–27
`(“ToyotaIPR”) and CareFusion Corp. v. Baxter Int’l, Inc., Case IPR2016-
`01456, Paper 9, 11 (“CareFusionIPR”)). Patent Owner further argues, here,
`Petitioner does not propose claim constructions that it affirms are correct,
`and, in fact, in the related District Court proceedings, Petitioner argued some
`of the claim constructions relied upon as the basis for the Petition are
`incorrect. Id. at 14–15.
`In its Reply to Patent Owner’s Preliminary Response, Petitioner
`argues “the Petition’s compliance with section 42.104(b)(3) was already
`determined when the filed date was accorded under section 42.106(a),”
`which requires compliance with section 42.104 to receive a filing date.
`Reply 6. In other words, Petitioner argues assignment of a filing date by the
`
`10
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`Board under § 42.106 confirms compliance of the Petition with § 42.104.
`Petitioner contends Patent Owner has waived any objection to compliance
`with these rules by failing to challenge the assignment of the filing date with
`a request for rehearing under 37 C.F.R. § 42.71(d)(1). Id. Patent Owner
`responds there is no waiver and no requirement that assignment of a filing
`date to the Petition be challenged within a particular deadline. Sur-Reply 4.
`We agree with Patent Owner that there is no requirement that Patent
`Owner object to the assignment of a filing date or risk waiving that
`argument. Petitioner has not identified any case law or Board decision in
`support of its assertion regarding waiver and we are not aware of any such
`case law or Board decision.
`Petitioner further argues nothing in 37 C.F.R. § 42.104(b)(3) requires
`Petitioner to express a subjective belief in the correctness of proffered claim
`constructions or to take ownership of those constructions. Reply 7. Instead,
`Petitioner argues that our rule merely requires that the Petition identify
`“[h]ow the claims are to be construed.” Id. Specifically, Petitioner argues
`we should institute review based on certain claim constructions, identified in
`the Petition, as set forth by Patent Owner in the related District Court
`litigation—including some claim constructions the parties agreed to in the
`litigation or the District Court adopted in the litigation. Id. at 8. In addition,
`Petitioner argues the America Invents Act specifically amended 35 U.S.C.
`§ 301 to allow anyone at any time to cite prior statements by a patent owner
`“in which the patent owner took a position on the scope of any claim of a
`particular patent.” Id. (quoting 35 U.S.C. § 301(a)(2)). Petitioner argues the
`legislative history suggests that the purpose of the amendment to § 301 was
`to allow such statements by a patent owner to be considered in inter partes
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`and post-grant reviews such as this proceeding. Id. (citing 157 Cong. Rec.
`S1375 (2011) (Sen. Kyl)). Still further, Petitioner argues ToyotaIPR is
`distinguishable from the facts here in that Toyota’s petition was ultimately
`denied because Toyota impermissibly argued indefiniteness of a means-plus-
`function element of a challenged claim. Id. at 7 (citing ToyotaIPR 27–28).
`Petitioner also distinguishes CareFusionIPR over the facts here in that
`CareFusion’s petition specifically stated that it disagreed with the claim
`constructions proffered in its petition. Id. (citing CareFusionIPR 6–7).
`We agree with Petitioner that 37 C.F.R. § 104(b)(3) does not require
`Petitioner to express its subjective agreement regarding correctness of its
`proffered claim constructions or to take ownership of those constructions.
`Petitioner complies with our rules by identifying claim constructions it
`proposes as the basis for requesting review of the challenged claims.
`Petitioner’s statement that its Petition “is based on the claim constructions
`urged by Patent Owner” in related District Court litigation (Pet. 8 (emphasis
`added)) suffices to identify claim constructions Petitioner is adopting for
`purposes of the requested review in compliance with § 104(b)(3).
`The panel decisions in ToyotaIPR and CareFusionIPR denying
`institution are distinguishable from the facts here. In ToyotaIPR, the panel
`did not deny the petition solely because Petitioner did not express its
`agreement with the Patent Owner’s claim constructions. Instead, the panel
`in ToyotaIPR found,
`But for the generating means, Petitioner does not offer its
`construction by identifying corresponding structure, material, or
`acts in the Specification. Instead, for the [generating] means,
`Petitioner asserts that there is no corresponding structure,
`material, or acts in the Specification of the ’786 patent, and
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`characterizes the means-plus-function element as indefinite.
`Pet. 17.
`ToyotaIPR 27. In CareFusionIPR, the petitioner expressly disagreed with
`the proffered constructions, and, based on that express disagreement, the
`panel determined “that Petitioner has failed to provide a sufficient statement
`of how the challenged claims are to be construed as required by 37 C.F.R.
`§ 42.104(b)(3).” CareFusionIPR 7. Here, by contrast, Petitioner has
`proposed constructions, including identifying corresponding structure when
`appropriate, and, in this Petition, has not expressly disagreed with its
`proffered constructions in this proceeding.
`
`2. District Court Constructions Adopted
`A District Court’s interpretation of claim terms may be useful in our
`claim construction and must be considered in our analysis. See Knowles
`Elecs. LLC v. Iancu, No. 2016-1954, 2018 WL 1659777, at *4 (Fed. Cir.
`Apr. 6, 2018) (“While ‘the [PTAB] is not generally bound by a previous
`judicial interpretation of a disputed claim term[, this] does not mean . . . that
`it has no obligation to acknowledge that interpretation or to assess whether it
`is consistent with the [broadest reasonable interpretation] of the term.’”
`(quoting Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1327 (Fed. Cir.
`2015))). Here, in view of the expiration of the ’802 patent no later than
`June 4, 2017, we apply the same claim construction standard as the District
`Court, and accordingly, the case for adopting the District Court’s
`construction is stronger than in a proceeding involving an unexpired patent
`in which we would apply the broadest reasonable interpretation standard.
`In the related litigation, the U.S. District Court for the Central District
`of California engaged in a Markman hearing considering the positions of the
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`parties regarding construction of disputed terms. See Ex. 1017 (Reporter’s
`Transcript of Proceeding dated Sept. 18, 2017). The Court then issued a
`tentative Markman order construing terms of the ’802 patent claims
`(Tentative Order Regarding Claim Construction undated, Ex. 1014) and
`issued a Markman order, seemingly substantively identical to the tentative
`order, establishing the Court’s claim construction in the related litigation
`(Order Regarding Claim Construction dated Oct. 18, 2017, Ex. 2003).
`The Markman orders of the District Court address only terms for
`which the parties did not agree to a construction. For those disputed terms,
`we agree with the District Court’s claim interpretation, finding it thorough
`and well-reasoned. We adopt the claim term interpretations as presented in
`the District Court’s Markman order entered October 18, 2017 (Ex. 2003) and
`we highlight below particular constructions of the District Court relevant to
`this Decision.
`
`“[S]ecurity means”
`For purposes of this Decision, we adopt the District Court’s
`interpretation of this term under 35 U.S.C. § 112 ¶ 6 where the function is
`“enabling one or more security operations to be performed on data” and the
`corresponding structure is “[a] specific hardware component programmed or
`configured to perform a security operation disclosed in ’802 Patent at 18:1–
`47.” Ex. 2003, 16–22.
`We further note the District Court construed “means for performing
`the one or more security operations” as recited in method claim 39, finding
`the function (“performing the one or more security operations”) is provided
`by the same structure as the “security means” recited in the apparatus claims.
`See id. at 16–17, 22–23.
`
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`“[T]arget Means”
`The District Court did not construe this term because the parties in
`litigation generally agreed on a construction of this term. Specifically, the
`parties agreed that the ’802 patent discloses structure corresponding to the
`recited function as: (1) a memory module adapted to enable non-volatile
`storage of data, (2) a communications module adapted to enable
`communications between the host computing device and a modem or LAN
`transceiver, (3) a smart card reader, or (4) biometric device. Pet. 11–12; see
`also Ex. 1016, 2. For purposes of this Decision, we adopt the above
`construction agreed to by the parties.
`
`“[M]eans for mediating . . .”
`For purposes of this Decision, we adopt the District Court’s
`interpretation of this term under 35 U.S.C. § 112 ¶ 6 where the function is
`“mediating communication of data between the host computing device and
`the target means so that the communicated data must first pass through the
`security means” and the corresponding structure is “[i]nterface control
`device 910 (as shown in Fig. 9B).” Ex. 2003, 31–38.
`
`“[M]eans for providing . . .”
`Claims 6, 7, and 23–25 include a recitation relating to a means for
`providing information regarding the function of the target means to the host
`computing device. The District Court agreed with Petitioner in the related
`litigation that the ’802 patent Specification failed to disclose sufficient
`corresponding structure that performs this function and, thus, claims with
`this element are indefinite. Pet. 14–15; see also Ex. 1014, 30–32; Ex. 2003,
`38–43. In the related District Court litigation, according to the District
`Court, Patent Owner argued memory 612a of the ’802 patent Specification is
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`the structure that corresponds to the recited function of providing the
`function of the target means to the host computing device. See Ex. 2003, 42
`(quoting cited portions of Ex. 1001, 7:62–8:21). However, the District Court
`found, and we agree, the cited portions of the ’802 patent Specification fail
`to disclose that memory 612a stores such information regarding the function
`of the target means, let alone provides such information to the host
`computing device. Ex. 2003, 42–43.
`As discussed supra, Petitioner has adopted Patent Owner’s proffered
`claim constructions for purposes of this Petition and we agree with the
`District Court that Patent Owner’s construction, adopted by Petitioner, is
`insufficient to disclose structure corresponding to this function. Thus, we
`are unable to construe this limitation for purposes of this Decision. See In re
`Aoyama, 656 F.3d 1293, 1298 (Fed. Cir. 2011).
`
`B. Discretionary Factors
`Patent Owner argues we should exercise our discretion under
`35 U.S.C. § 314(a) to deny this Petition based on the factors discussed in
`General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-
`01357 (PTAB Sept. 6, 2017) (Paper 19) (precedential). Prelim. Resp. 6–13.
`In General Plastic, the Board identified a list of seven nonexclusive factors
`that bear on the issue of whether the Board should invoke its discretion to
`deny institution of an inter partes review, based on a follow-on petition on
`the same patent, under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a):
`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 the first petition the petitioner knew of
`the prior art asserted in the second petition or should have known
`of it;
`
`16
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`
`IPR2018-00082
`Patent 6,088,802
`
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`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.
`
`
`General Plastic, slip op. at 9–10 (the “General Plastic factors”). Patent
`Owner notes that, although the General Plastic factors are typically applied
`to determinations relating to the same party filing multiple petitions, the
`factors are helpful as a framework for analyzing multiple petitions filed by
`different parties. Prelim. Resp. 8 (citing NetApp Inc. v. Realtime Data LLC,
`Case No. IPR2017-01354, Paper 16, 10 (PTAB Nov. 14, 2017)). Focusing
`on the fact that petitions, by other petitioners, seeking institution of inter
`partes reviews of the ’802 patent were previously filed in IPR2017-00430
`(“the 430 proceeding”) and IPR2017-00824 (“the 824 proceeding”), Patent
`Owner contends that consideration of the General Plastic factors weighs in
`favor of exercising our discretion to deny this Petition. Prelim. Resp. 6–13;
`Sur-Reply 1–3.
`
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`IPR2018-00082
`Patent 6,088,802
`
`Petitioner argues the Board’s precedential holding in General Plastic
`is not consistent with our statutory authority. Reply 1–2. We disagree.
`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.
`35 U.S.C. § 314(a) (emphasis added). This statutory language merely states
`conditions under which the Director may not institute an inter partes review.
`Nothing in this or other sections of the authorizing statute mandates that the
`Director must or shall institute inter partes review in all cases where the
`Petition establishes a reasonable likelihood of prevailing. See Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016).
`Moving on to address the General Plastic factors, with respect to the
`first factor, Patent Owner acknowledges that Petitioner here is different from
`the petitioners in the 430 and 824 proceedings and, thus, this factor “does
`not weigh in favor of denying this Petition.” Prelim. Resp. 9. We agree.
`The fact that different petitioners are involved causes us to consider the first
`factor as weighing against, rather than in favor of, a discretionary denial of
`this Petition. Stated more strongly, we find this first factor weighs heavily in
`favor of institution because this petitioner was not a party to the earlier
`proceedings.
`Because Petitioner has not previously filed a petition against the same
`patent, factors 2–5 bear little relevance in this case. Factor 3 (Petitioner here
`had access to Patent Owner’s Preliminary Response in earlier petitions)
`weighs slightly in favor of denial although Petitioner argues Patent Owner
`fails to identify any portion of this Petition that may have been tailored to
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`IPR2018-00082
`Patent 6,088,802
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`address issues in either previous petition. Reply 4. Patent Owner does not
`point to any evidence in the record of extenuating circumstances such as a
`showing that a previous petitioner and the current petitioner planned the
`staggered petitions. Factor 5 may also weigh slightly in favor of denial;
`however, Petitioner argues that because the parties were briefing claim
`construction issues in the District Court through the summer preceding filing
`of this Petition and the Board would apply the same claim construction
`standard for this expired patent, “it was entirely appropriate for [Petitioner]
`to wait for a district court claim construction ruling before filing a Petition.”
`Id. at 5.
`We are not persuaded that consideration of the sixth and seventh
`factors weighs in favor of discretionary denial of this Petition. Filing of this
`petition, by a different petitioner than the earlier petitions, applying
`substantially different prior art, based on substantially different arguments,
`cannot be said to be wasteful of resources of the Board. Furthermore,
`because both the 430 proceeding and the 824 proceeding have been
`terminated (by denials of institution), there is no impact on the Board’s
`ability to reach a final determination regarding unpatentability within the
`statutorily mandated one year.
`Moreover, in general, we acknowledge that the instant Petition and the
`petitions in the 430 and 824 proceedings together represent three rounds of
`challenges to the ’802 patent. Although we understand the purposes of
`§§ 314(a) and 325(d), vis-à-vis repeated challenges, we also recognize the
`purpose of the availability of inter partes review to parties accused of
`infringement. Patent Owner’s complaint about the multiple inter partes
`review petitions filed against the ’802 patent is not persuasive when the
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`IPR2018-00082
`Patent 6,088,802
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`volume appears to be a direct result of its own litigation activity. The
`discretion to deny petitions is for the panel to wield under certain conditions,
`but not in every situation where a Patent Owner complains of repeated
`challenges against its patents.
`For these reasons, we determine that a weighing of the General
`Plastic factors does not support a discretionary denial of the Petition.
`
`C. Cited Prior Art References
`1. Overview of Harari (Ex. 1004)
`Harari is directed to a peripheral device that can be removably
`
`connected to a host computer system. Ex. 1004, 3:9–12. The disclosed
`peripheral device includes a mother card portion and a daughter card
`portion. Id. at 3:50–51. The daughter card portion is removably connected
`to the mother card portion and the mother car
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