Trails@uspto.gov
`571-272-7822
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`Paper No. 8
`Entered: June 13, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RPX CORPORATION,
`Petitioner,
`
`v.
`
`DESHODAX LLP,
`Patent Owner.
`____________
`
`Case IPR2018-00280
`Patent 7,307,398 B2
`____________
`
`
`
`Before TREVOR M. JEFFERSON, JOHN A. EVANS, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`EVANS, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C.. § 314(a)
`
`
`
`
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`571-272-7822
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`Paper No. 8
`Entered: June 13, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RPX CORPORATION,
`Petitioner,
`
`v.
`
`DESHODAX LLP,
`Patent Owner.
`____________
`
`Case IPR2018-00280
`Patent 7,307,398 B2
`____________
`
`
`
`Before TREVOR M. JEFFERSON, JOHN A. EVANS, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`EVANS, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C.. § 314(a)
`
`
`
`
`
`
`
`IPR2018-00280
`Patent 7,307,398 B2
`
`
`
`INTRODUCTION
`I.
`RPX Corporation (“Petitioner”) filed a Petition requesting an inter
`
`partes review of claims 1–12 (all claims) of U.S. Patent No. 7,307,398 B2
`(Ex. 1001, “the ’398 patent”). Paper 2 (“Pet.”). Deshodax LLC (“Patent
`Owner”) did not file a Preliminary Response.1
`35 U.S.C. § 314(a) provides that an inter partes review may not be
`instituted unless 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.”
`We find, on the record before us, that Petitioner has established a reasonable
`likelihood of prevailing at least with respect to independent claims 1 and 8
`under at least a first ground over Chang. On April 24, 2018, the Supreme
`Court held that a decision to institute under 35 U.S.C. § 314 may not
`institute on less than all the claims challenged in the petition. SAS Inst., v.
`Iancu, 138 S. Ct. 1348, 1359–60 (2018). In view of the foregoing, we grant
`the Petition and institute an inter partes review of all claims, i.e., claims 1–
`12 of the ’398 patent on all grounds set forth in the Petition.
`II. BACKGROUND
`
`
`1 On May 7, 2018, the Panel held a conference call with counsel for
`Petitioner, as well as Mr. Peter J. Corcoran, III. See Teleconference
`Summary (Paper 7). Mr. Corcoran explained that he represents Patent
`Owner in a related district court case, but, at the time of the call, had not yet
`filed a power of attorney in this proceeding. Id. at 2. Mr. Corcoran also
`stated that Patent Owner did not intend to file a Preliminary Response to the
`Petition. Id.
`
`
`
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`2
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`IPR2018-00280
`Patent 7,307,398 B2
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`
`Related Matters
`A.
`Petitioner advises us that the ’398 patent is or was at issue in seven (7)
`lawsuits filed by Deshodax in April 2017, in the Eastern District of Texas,
`against Acer America Corporation (5-17-cv-00079), Huawei Device USA,
`Inc. (5-17-cv-00080), Lenovo (United States) Inc. (5-17-cv-00081), Nokia
`Mobile Phones, Inc. (5-17-cv-00082), OnePlus, Inc. (5-17-cv-00083), TCL
`Communication, Inc. (5-17-cv-00084), and ZTE (USA), Inc. (5-17-cv-
`00085), and four (4) lawsuits filed in June or July 2017, in the District of
`Delaware, against Lenovo (United States) Inc. (1:17-cv-00804), Blackberry
`Corporation (1:17-cv-01014), Samsung Electronics USA, Inc. (1:17- cv-
`01015), and Sony Mobile Communications (USA) Inc. (1:17-cv-01016).
`Pet. 1.
`
`
`
`The ’398 Patent
`B.
`The ’398 patent is titled “Image Processing Device and Method for
`Controlling a Motor System.” The ’398 patent relates to an image
`processing device having a variable-speed scanning module. Ex. 1001,
`Abstr. The ’398 patent claims such a device that has a plurality of loading
`circuits that are selectable to control the power provided to the scanning
`motor. Id., col. 2, ll. 9–14.
`According to the ’398 patent, various image-processing devices, such
`as computer printers, photocopiers, scanners, and multi-function peripherals,
`require increasing levels of resolution and require higher scanning speeds as
`a function of resolution. Id., col. 1, ll. 13–21. According to the ’398 patent,
`low scanning speeds require much less power than higher scanning speeds,
`but prior art scanning motors are controlled by a single loading circuit which
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`IPR2018-00280
`Patent 7,307,398 B2
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`must be designed to handle the maximum power that may be required. Id.,
`col. 1, ll. 59–66. The ’398 patent describes low-speed scanning at maximum
`power as problematic because the excess power is dissipated as heat which
`damages the motor. Id., col. 2, ll. 2–5. To address this problem, the ’398
`patent provides a plurality of loading circuits from which to choose
`according to the scanning power required. Id., col. 2, ll. 9–14.
`Petitioner contends the ’398 patent is directed to a generic image
`processing device (e.g., a scanner or printer) that controls the speed of a
`moving part of the system (e.g., a “scanning module” or “printing module”)
`by controlling power delivered to the motor. Pet. 4. Petitioner alleges the
`novelty of the ’398 patent is replacing a single loading circuit with a
`plurality of loading circuits, and selecting from those to control motor
`power. Id.
`
`Illustrative Claims
`C.
`The ’398 patent includes two independent claims, claim 1 to an image
`processing device, and claim 8 to a method of controlling a motor system of
`an image processing device. Independent claims 1 and 8 are illustrative of
`the invention:
`
`1.
`
`An image processing device comprising:
`a first module;
`a motor system connected to the first module and capable
`of pushing the first module to move forward,
`comprising:
`a motor;
`a driver for driving the motor;
`a plurality of loading circuits; and
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`4
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`IPR2018-00280
`Patent 7,307,398 B2
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`a power supply for providing power to the motor
`and the driver;
`a selector connected to the plurality of loading circuits
`and capable of selecting a loading circuit among the
`plurality of loading circuits and setting the selected
`loading circuit as a loading of the motor system; and
`a controller electrically connected to the driver and
`capable of controlling a speed of the motor system
`pushing the first module.
`
`8.
`
`
`A method for controlling a motor system of an image
`processing device, wherein the image processing device
`comprises a first module and a motor system electrically
`connected to the first module,
`wherein the motor system comprises a plurality of
`loading circuits, the method comprising:
`selecting a loading circuit among the plurality of
`loading circuits and
`setting the selected loading circuit as a loading of
`the motor system for controlling power provided to the
`motor system.
`
`Claim Construction
`D.
`1.
`Standard
`The Board interprets claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b); see also Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`Petitioner proposes constructions for several claim terms. Pet. 11–15.
`Petitioner contends no term of the ’398 patent need be construed as a means-
`plus-function limitation in accordance with 35 U.S.C. § 112 ¶ 6 because “the
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`IPR2018-00280
`Patent 7,307,398 B2
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`words of the claim [would be] understood by persons of ordinary skill in the
`art to have a sufficiently definite meaning as the name for structure.” Pet. 16
`(quoting Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir.
`2015)). However, Petitioner also proposes “alternate constructions” under
`35 U.S.C. § 112 ¶ 6, in the event that Patent Owner argues certain terms
`should be construed as means-plus-function limitations. See Pet. 16–25.
`Because no claim term has been controverted by the parties at this stage of
`the proceeding, we see no need to perform any express claim construction.
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (“[O]nly those terms need be construed that are in controversy, and
`only to the extent necessary to resolve the controversy”).
`
`Person of Ordinary Skill in the Art
`2.
`On the present record and for purposes of decision, we adopt
`Petitioner’s proposal that for the subject matter of the ’398 patent, “a person
`of ordinary skill in the art . . . would have had a bachelor’s degree in
`electrical engineering, or equivalent work experience, and at least one year
`of experience involving engineering aspects of motion control systems
`utilizing electric motors, including stepping motors and PMDC motors.”
`Pet. 11.
`
`
`References
`E.
`Petitioner relies on the following references:
`Ex. 1004
`Chang
`US 6,414,461 B1
`July 2, 2002
`Buckley
`US 4,739,346
`Apr. 19, 1988 Ex. 1005
`
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`Patent 7,307,398 B2
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`Kaneko, et al.
`(“Kaneko”)
`Tanaka
`Jung
`
`
`
`US 6,040,670
`
`Mar. 21, 2000 Ex. 1006
`
`US 5,207,520
`US 6,147,777
`
`Ex. 1007
`May 4, 1993
`Nov. 14, 2000 Ex. 1008
`
`Petitioner also relies on Exhibit 1009, a Declaration from Dr. Duane
`Hanselman (“Hanselman Decl.,” Ex. 1009).
`
`
`Grounds Asserted
`F.
`Petitioner challenges claims 1–12 of the ’398 patent on the following
`grounds. Pet. 3.
`Ground
`1
`2
`
`Basis
`103(a)
`103(a)
`
`Claims
`1, 2, 4–6, 8, 9, 11, 12
`72
`
`References
`Chang (Ex. 1004)
`Chang and Buckley (Ex.
`1005)
`Chang and Kaneko (Ex.
`1006)
`Kaneko and Tanaka (Ex.
`1007)
`Kaneko, Tanaka, and Jung
`(Ex. 1008)
`Kaneko, Tanaka, and
`Buckley
`
`3
`
`4
`
`5
`
`6
`
`103(a)
`
`1–6 and 8–12
`
`103(a)
`
`1, 3–6, 8, 10–12
`
`103(a)
`
`2, 93
`
`103(a)
`
`7
`
`
`Petitioner further relies upon Albert C. Leenhouts, The Art and
`
`Practice of Step Motor Control, 1987 (excerpts) (Ex. 1010) and Darlington,
`US 2,663,806, December 22, 1953 (Ex. 1011), as background art to evidence
`
`
`2 Exhibit 1011 is relied upon to teach a prior art Darlington Circuit.
`3 Exhibit 1010 is relied upon to teach a prior art Scanning Module.
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`IPR2018-00280
`Patent 7,307,398 B2
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`the knowledge, motivation, and skill level of persons of ordinary skill in the
`art. Pet. 4.
`
`
`
`
`
`
`III. ANALYSIS
`Asserted Grounds based on Chang
`A.
`Prior art status
`1.
`Chang is relied upon alone and in combination with variously
`Buckley, Kaneko, or Tanaka as prior art against all claims of the ’398 patent.
`Id. at 3.
`
`The ’398 patent was filed March 15, 2005 and claims a foreign
`priority date of March 18, 2004. Ex. 1001, at [22], [30]; Pet. 10. Petitioner
`asserts that each cited reference is a U.S. patent that issued more than a year
`before the claimed foreign priority date of the ’398 patent, March 18, 2004
`(i.e., before March 18, 2003). Pet. 10. Accordingly, Petitioner contends
`each reference relied on is §102(b) prior art. Id.
`On the record before us, we find that each of Chang (Ex. 1004, July 2,
`2002), Buckley (Ex. 1005, April 19, 1988), Kaneko (Ex. 1006, March 21,
`2000), Tanaka (Ex. 1007, May 4, 1993), and Jung (Ex. 1008, November 14,
`2000) were published at least one year prior to the March 18, 2004 foreign
`priority date of the ’398 patent.
`
`
`Independent claim 1
`
`2.
`
`Independent claim 1 (illustrative) is set forth above (§ II.C).
`Petitioner contends that Chang discloses each of the basic image processing
`elements recited in claim 1, including a “first module” (e.g., a scanning
`module) and a “motor system connected to the first module and capable of
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`IPR2018-00280
`Patent 7,307,398 B2
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`pushing the first module to move forward” (e.g., a motor system that pushes
`the scanning module). Pet. 27 (citing Ex. 1009, ¶¶ 85–100). Petitioner
`further contends that Chang also discloses the basic motor system elements
`(e.g., a stepping motor, driver, power supply, and controller). Id.
`For a teaching of the claimed power supply, Petitioner refers to
`Chang’s disclosure of a power line, which is a conductor that is coupled to a
`power supply (e.g., an electrical outlet). Id. (citing Ex. 1004, FIG. 5, power
`line 31).
`For a teaching of the claimed controller, Petitioner refers to Chang’s
`disclosure of a control circuit that controls the speed of a motor that pushes a
`module. Id. at 28 (citing Ex. 1004, Abstract, FIGS. 1, 2, 4, 5, 7, 8 (showing
`“control circuit”)). Chang discloses that the “control circuit controls the
`stepping motor to generate different torque so that the scanning module can
`scan the document at different speeds.” Id. (quoting Ex. 1004, Abstract).
`
`For a teaching of the claimed plurality of loading circuits, Petitioner
`refers to Chang’s disclosure relating to Figure 5. Id. at 29. Figure 5, as
`annotated by Petitioner, is shown below.
`
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`Chang (Ex. 1004) Figure 5 as annotated by Petitioner identifying the loading
`circuits, the selector components, and the controller. Pet. 29.
`
`
`Chang discloses a plurality of loading circuits that are illustrated as
`resistors R1, R2, R3 and which control power to the motor from power line
`31 by changing the amount of current to stepping motor 32. Id. (citing Ex.
`1004, Fig. 5, col. 2, l. 54–col. 3, l. 30; Ex. 1009 ¶¶ 95–97).
`For a teaching of the claimed selection and setting of the loading
`circuits, Petitioner refers to Chang’s disclosure, in Figure 5, of two
`transistors M1, M2, which receive signals from signal lines 33, 35 to control
`the on/off states of the transistors. Id. (citing Ex. 1009 ¶¶ 95–98). Petitioner
`argues the input signals (sent from the control circuit) control the states of
`the transistors based on a desired resolution or speed of the system, thereby
`selecting and setting the loading circuit. Id.
`
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`IPR2018-00280
`Patent 7,307,398 B2
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`According to Petitioner, the “selector” selects and sets the loading
`circuit and coordinates with the “controller” which controls the speed of the
`motor system. Id. at 30. The coordinated actions of the selector and
`controller act in accord with the requirement of the selected resolution. Id.
`Thus, at this stage of the proceeding, Petitioner has shown sufficiently that
`Chang discloses an image processing device comprising each of the claim
`elements of claim 1, and has shown a reasonable likelihood of prevailing in
`its challenge to claim 1 as unpatentable as obvious in view of Chang. Id.
`
`On the present record and for purposes of decision, we find that
`Petitioner has established a reasonable likelihood that Chang, alone, teaches
`each limitation recited in independent claim 1.
`
`
`
`3.
`
`Independent claim 8
`
`Petitioner contends independent claim 8 is similar to claim 1, but is a
`
`method claim reciting fewer limitations in that claim 8 does not recite a
`motor, a driver for driving the motor, a power supply, or a controller capable
`of controlling the speed of the motor system. Pet. 35. Petitioner argues
`claim 8 merely recites a first module and a motor system with a plurality of
`loading circuits, and the step of selecting and setting a loading circuit for
`controlling power. Id. Petitioner refers to its discussion of claim 1 to argue
`Chang discloses a motor system of an image processing device, a first
`module electrically connected to the motor system, and a motor system with
`a “plurality of loading circuits.” Id.
`
`Petitioner contends that claim 8’s language differs from that of claim
`1 in that claim 1’s controller controls the motor system’s speed, but claim 8
`recites the step of selecting a loading circuit and setting that loading circuit
`11
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`IPR2018-00280
`Patent 7,307,398 B2
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`as a loading of the motor system for controlling power provided to the motor
`system. Id. Petitioner argues that this is a distinction without a difference,
`because Chang also discloses “setting the loading circuit as a loading of the
`motor system for controlling power to the motor system.” Id. at 36
`(referring to claim chart elements 1f, 1h; Ex. 1009 ¶¶ 40, 103).
`Accordingly, Petitioner argues claim 8 is obvious over Chang because
`Chang discloses each every step of the recited method. Id.
`
`On the present record and for purposes of decision, we find that
`Petitioner has established a reasonable likelihood that Chang, alone, teaches
`each limitation recited in independent claim 8.
`
`
`
`IV. CONCLUSION
`
`For the foregoing reasons, we determine Petitioner has demonstrated
`
`that there is a reasonable likelihood it would prevail in establishing the
`unpatentability of at least independent claims 1 and 8 of the ’398 patent.
`
`
`
`In view of the foregoing, it is hereby:
`
`V. ORDER
`
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–12 of the ’398 patent is instituted with respect to all
`grounds set forth in the Petition; and
`
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37
`C.F.R. § 42.4(b), inter partes review of the ’398 patent shall commence on
`the entry date of this Order, and notice is hereby given of the institution of a
`trial.
`
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`12
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`IPR2018-00280
`Patent 7,307,398 B2
`
`PETITIONER
`Andrew M. Mason
`Deakin T. Lauer
`John M. Lunsford
`KLARQUIST SPARKMAN, LLP
`andrew.mason@klarquist.com
`deakin.lauer@klarquist.com
`john.lunsford@klarquist.com
`
`
`PATENT OWNER
`
`Peter J. Corcoran
`peter@corcoranip.com
`
`
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`13
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