throbber
Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 10
`Entered: September 5, 2018
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ECHOSTAR CORPORATION and
`HUGHES NETWORK SYSTEMS, L.L.C.,
`Petitioner,
`
`v.
`
`REALTIME DATA LLC,
`Patent Owner.
`
`
`Case IPR2018-00614
`Patent 9,054,728 B2
`
`
`
`
`Before KRISTEN L. DROESCH, CHRISTOPHER M. KAISER, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`
`
`DECISION
`
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`

`

`IPR2018-00614
`Patent 9,054,728 B2
`
`
`INTRODUCTION
`
`A. Background
`EchoStar Corporation and Hughes Network Systems, L.L.C.
`(collectively, “Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting an
`inter partes review of claim 25 of U.S. Patent No. 9,054,728 B2 (Ex. 1001,
`“the ’728 patent”). Realtime Data LLC (“Patent Owner”) filed a
`Preliminary Response (Paper 9, “Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). The standard for
`instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
`provides that an inter partes review may not be instituted unless “there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.”
`After considering the Petition, the Preliminary Response, and the
`evidence currently of record, we determine that 35 U.S.C. § 325(d) and
`35 U.S.C. § 314(a) both apply to allow us discretion to deny institution, and
`we find that it is appropriate for us to exercise that discretion. Accordingly,
`we do not institute inter partes review of claim 25 of the ’728 patent on the
`grounds asserted in the Petition.
`
`B. Related Matters
`The parties note that the ’728 patent has been asserted against
`Petitioner in Realtime Data LLC d/b/a IXO v. Echostar Corp. et al., Case
`No. 6-17-cv-00084 (E.D. Tex.). Pet. 4–6; Paper 4, 8. The parties also
`identify at least 37 other district court cases in which the ’728 patent has
`been asserted against other defendants. Pet. 4–6; Paper 4, 6–10. Finally,
`some claims of the ’728 patent previously have been challenged in other
`
`2
`
`

`

`IPR2018-00614
`Patent 9,054,728 B2
`
`inter partes review proceedings, including IPR2017-00108, IPR2017-00179,
`IPR2017-00808, IPR2017-01354, IPR2017-01690, IPR2017-02178, and
`IPR2018-00703. Pet. 6–7; Paper 4, 4–5.
`
`C. The Asserted Grounds of Unpatentability
`Petitioner contends that claim 25 of the ’728 patent is unpatentable
`based on the following grounds (Pet. 15–72):1
`Statutory
`Basis
`Ground
`§ 103(a)
`
`§ 103(a)
`
`Franaszek,2 Hsu,3 and
`Sebastian4
`Franaszek, Hsu, Sebastian,
`and Kawashima5
`
`Challenged Claim
`
`25
`
`25
`
`D. The ’728 Patent
`The ’728 patent, titled “Data Compression Systems and Methods,”
`issued on June 9, 2015. Ex. 1001, at [45], [54]. The ’728 patent relates to
`“[d]ata compression using a combination of content independent data
`compression and content dependent data compression.” Id. at [57].
`According to the patent, “[t]here are various problems associated with the
`
`
`1 Petitioner also relies on a Declaration from James A. Storer, Ph.D.
`Ex. 1003.
`2 Franaszek et al., U.S. Patent No. 5,870,036, issued Feb. 9, 1999 (Ex. 1005,
`“Franaszek”).
`3 William H. Hsu & Amy E. Zwarico, Automatic Synthesis of Compression
`Techniques for Heterogeneous Files, 25 SOFTWARE PRACTICE & EXPERIENCE
`1097, 1097–1116 (Oct. 1995) (Ex. 1004, “Hsu”).
`4 Sebastian, U.S. Patent No. 6,253,264 B1, issued June 26, 2001 (Ex. 1006,
`“Sebastian”).
`5 Kawashima et al., U.S. Patent No. 5,805,932, issued Sept. 8, 1998 (Ex.
`1007, “Kawashima”).
`
`3
`
`

`

`IPR2018-00614
`Patent 9,054,728 B2
`
`use of lossless compression techniques,” including “data dependency,” in
`which “the compression ratio achieved is highly contingent upon the content
`of the data being compressed.” Id. at 2:29–40. In addition, “natural
`variation” can lead to “significant variations in the compression ratio
`obtained when using a single lossless data compression technique for data
`streams having different data content and data size.” Id. at 2:41–45. Thus,
`according to the ’728 patent, it is important to select the best data
`compression technique for any given application by considering “many
`factors.” Id. at 2:46–64. Although methods to choose appropriate
`compression techniques existed in the prior art, the ’728 patent notes that
`those methods had shortcomings, including “the need to unambiguously
`identify various data types” and that “it may be difficult and/or impractical
`to predict which data encoding technique yields the highest compression
`ratio.” Id. at 3:20–52.
`The ’728 patent purports to address these limitations. Specifically, the
`’728 patent describes “a method for compressing data” that comprises
`“analyzing a data block of an input data stream” with “disparate data types”
`in order to determine which of those data types makes up the data block,
`then “performing content dependent data compression on the data block, if
`the data type of the data block is identified” or “performing content
`independent data compression on the data block, if the data type of the data
`block is not identified.” Id. at 3:59–4:4. The “data compression is
`performed on a per data block basis.” Id. at 8:16–17; see also id. at 18:15–
`16, 21:1–2, 23:56–57 (same statement with respect to multiple
`embodiments).
`
`4
`
`

`

`IPR2018-00614
`Patent 9,054,728 B2
`
`
`E. Challenged Claim
`Claim 25 of the ’728 patent is the only challenged claim; it recites:
`
`25. A computer implemented method comprising:
`analyzing, using a processor, data within a data block to
`identify one or more parameters or attributes of the data within
`the data block;
`determining, using the processor, whether to output the data
`block in a received form or in a compressed form; and
`outputting, using the processor, the data block in the received
`form or the compressed form based on the determination,
`wherein the outputting the data block in the compressed form
`comprises determining whether to compress the data block with
`content dependent data compression based on the one or more
`parameters or attributes of the data within the data block or to
`compress the data block with a single data compression
`encoder; and
`wherein the analyzing of the data within the data block to
`identify the one or more parameters or attributes of the data
`excludes analyzing based only on a descriptor that is indicative
`of the one or more parameters or attributes of the data within
`the data block.
`Ex. 1001, 28:31–51.
`
`ANALYSIS
`
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144 (2016) (upholding
`the use of the broadest reasonable interpretation standard). Claim terms
`generally are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`
`5
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`

`

`IPR2018-00614
`Patent 9,054,728 B2
`
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). Only terms which are in controversy need to be construed, and then
`only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`Petitioner argues that we should construe both “data block” and “data
`block in [a/the] received form.” Pet. 13–14 (alteration in original). Patent
`Owner argues that we need not construe any term in order to decide whether
`to institute trial. Prelim. Resp. 5–6. We agree with Patent Owner.
`Accordingly, we do not construe any terms expressly.
`
`B. Discretionary Denial Under 35 U.S.C. § 325(d)
`Patent Owner argues that we should deny institution under 35 U.S.C.
`§ 325(d). Prelim. Resp. 6–12. We agree.
`“In determining whether to institute or order [an inter partes review],
`the Director may take into account whether, and reject the petition or request
`because, the same or substantially the same prior art or arguments previously
`were presented to the Office.” 35 U.S.C. § 325(d). Thus, even when a
`petition demonstrates “a reasonable likelihood that a challenger would
`prevail, the Office has the discretion to deny the petition.” Neil Ziegmann,
`N.P.Z., Inc. v. Stephens, Case IPR2015-01860, slip op. at 7 (PTAB Sept. 6,
`2017) (Paper 13). In determining whether to exercise this discretion to deny
`a petition under § 325(d), we first determine whether the petition presents
`“the same or substantially the same prior art or arguments” as have been
`“presented to the Office” previously, which is a requirement of § 325(d). Id.
`at 14–15. If the petition presents such art or arguments, we then determine
`whether it would be appropriate for us to exercise our discretion to deny the
`petition. Id.
`
`6
`
`

`

`IPR2018-00614
`Patent 9,054,728 B2
`
`
`On the first inquiry, we find that the art presented here is substantially
`the same as the art that has been asserted against the ’728 patent in earlier
`proceedings. In large part, the art that Petitioner asserts here is identical to
`the art that already has been asserted against the ’728 patent. As Patent
`Owner notes, Franaszek, Hsu, and Sebastian each have been asserted against
`the ’728 patent in multiple earlier inter partes reviews. Prelim. Resp. 7
`(citing IPR2017-00179, Paper 1, 6–12; IPR2017-00808, Paper 1, 7–11;
`IPR2017-01354, Paper 3, 12–58; IPR2017-01690, Paper 1, 7–12).
`Moreover, in three proceedings, the same combination of art—Franaszek,
`Hsu, and Sebastian—as in Petitioner’s first asserted ground here has been
`asserted against the ’728 patent. IPR2017-00179, Paper 40, 8 (final written
`decision resolving IPR2017-00808 and IPR2017-001690 in addition to
`IPR2017-00179).
`Only the Kawashima reference that forms part of Petitioner’s second
`asserted ground is new. But a new reference is not necessarily non-
`cumulative. Here, Petitioner relies on Kawashima to teach or suggest two
`limitations of claim 25. Pet. 65–71 (relying on Kawashima to teach or
`suggest “determining, using the processor, whether to output the data block
`in a received form or in a compressed form” and “outputting, using the
`processor, the data block in the received form or the compressed form based
`on the determination”). Petitioner also, however, asserts that other
`references teach or suggest these limitations. Id. at 66–67 (arguing that
`Franaszek and Hsu each individually teach or suggest “determining, using
`the processor, whether to output the data block in a received form or in a
`compressed form”), 70 (arguing that Franaszek and Hsu each individually
`teach or suggest “outputting, using the processor, the data block in the
`
`7
`
`

`

`IPR2018-00614
`Patent 9,054,728 B2
`
`received form or the compressed form based on the determination”). These
`other references are the same ones Petitioner asserts in its first ground of
`unpatentability and the same ones that have been asserted against the ’728
`patent in the past. Pet. 15–61; IPR2017-00179, Paper 1, 6–12; IPR2017-
`00808, Paper 1, 7–11; IPR2017-01354, Paper 3, 12–58; IPR2017-01690,
`Paper 1, 7–12. Accordingly, we determine that the Kawashima reference is
`merely cumulative of the prior art that already has been asserted against the
`’728 patent. Based on this, we find that the art asserted here—Franaszek,
`Hsu, Sebastian, and Kawashima—is substantially the same as the art
`previously presented to the Office with respect to the ’728 patent.
`In addition, the argument Petitioner presents here also is substantially
`the same as the argument previously presented to challenge the ’728 patent.
`We note that the previous inter partes reviews that relied on the combination
`of Franaszek, Hsu, and Sebastian did not challenge claim 25, the only claim
`challenged here. IPR2017-00179, Paper 40, 8 (showing that only claims 1–
`3, 9, 10, 15, 20, and 24 were challenged on this ground). But claim 25 is
`quite similar to claim 24, with the differences between the claims mostly
`confined to the preambles (claim 25 recites a “computer implemented
`method,” while claim 24 recites a “system for compressing data”), and the
`limitations in the body of the claim being rearranged to comport with the
`differing preambles. Compare Ex. 1001, 28:31–51 (claim 25), with
`Ex. 1001, 28:12–30 (claim 24). Thus, it is unsurprising that, as shown
`below, Petitioner’s arguments here with respect to the
`Franaszek/Hsu/Sebastian ground are quite similar to the arguments
`presented in IPR2017-00179 with respect to claim 24. The table below
`summarizes the arguments in the Petition here against each limitation of
`
`8
`
`

`

`Limitation of Claim
`Claim 25: “A computer
`implemented method
`comprising . . . using a
`processor”
`
`Claim 25:
`“analyzing . . . data
`within a data block to
`identify one or more
`parameters or attributes
`of the data within the
`data block”
`
`Argument Here With
`Respect to Claim 25
`Relies on Franaszek,
`3:63–65, 7:37–55, Fig.
`7.
`
`Relies on Hsu’s
`disclosure that its
`system contains
`modules that were
`“written in C and were
`tested on a Unix
`platform.”
`
`See Pet. 35–36.
`
`IPR2018-00614
`Patent 9,054,728 B2
`
`claim 25 and compares those arguments to the arguments in the petition in
`IPR2017-00179 against similar limitations of claim 24.
`Argument on Related
`Limitation of Claim
`24 in IPR2017-00179
`Relies on Franaszek,
`3:63–65, 7:39–43, Fig.
`7.
`
`Relies on Hsu’s
`disclosure that its
`system contains
`modules that were
`“written in C and were
`tested on a Unix
`platform.”
`
`See IPR2017-00179,
`Paper 1, 19–20, 49–50.
`Relies on Franaszek,
`4:30–34, 5:49–53, 6:1–
`6, 7:39–46, Fig. 2, 4A–
`4C.
`
`Relies on Hsu’s
`disclosure that it
`examines 3 sets of 512
`bytes from the data set
`and compares them to
`collection of known
`data patterns to
`identify data type.
`
`See IPR2017-00179,
`Paper 1, 31–33, 52.
`
`Relies on Franaszek,
`4:30–34, 5:49–53, 6:1–
`6, 7:39–46, Fig. 2, 4A–
`4C.
`
`Relies on Hsu’s
`disclosure that it
`examines 3 sets of 512
`bytes from the data set
`and compares them to
`collection of known
`data patterns to
`identify data type.
`
`See Pet. 37–39.
`
`9
`
`

`

`Argument on Related
`Limitation of Claim
`24 in IPR2017-00179
`Relies on Franaszek,
`5:49–54, 6:1–11, 6:22–
`50, 7:16–19, Figs. 2,
`4A, 7.
`
`Relies on Hsu’s
`disclosure of four data
`compression
`algorithms.
`
`Relies on Sebastian,
`1:50–60, 4:9–23.
`
`See IPR2017-00179,
`Paper 1, 20–24, 28–29,
`39–41, 52–56.
`
`Argument Here With
`Respect to Claim 25
`Relies on Franaszek,
`5:8–6:52, 7:37–55,
`Figs. 4A, 7.
`
`Relies on Hsu’s
`disclosure of four data
`compression
`algorithms.
`
`Relies on Sebastian,
`1:50–52, 1:55–60, 4:9–
`23.
`
`See Pet. 43–58.
`
`IPR2018-00614
`Patent 9,054,728 B2
`
`
`Limitation of Claim
`Claim 25:
`“determining . . .
`whether to output the
`data block in a received
`form or in a
`compressed form; and
`
`outputting . . . the data
`block in the received
`form or the compressed
`form based on the
`determination,
`
`wherein the outputting
`the data block in the
`compressed form
`comprises determining
`whether to compress
`the data block with
`content dependent data
`compression based on
`the one or more
`parameters or attributes
`of the data within the
`data block or to
`compress the data block
`with a single data
`compression encoder”
`
`10
`
`

`

`IPR2018-00614
`Patent 9,054,728 B2
`
`
`Limitation of Claim
`Claim 25: “wherein the
`analyzing of the data
`within the data block to
`identify the one or
`more parameters or
`attributes of the data
`excludes analyzing
`based only on a
`descriptor that is
`indicative of the one or
`more parameters or
`attributes of the data
`within the data block”
`
`Argument on Related
`Limitation of Claim
`24 in IPR2017-00179
`Relies on Hsu’s
`disclosure of sampling
`portions of each data
`set and analyzing those
`portions by comparing
`them to a collection of
`known data patterns in
`order to determine the
`data type and the
`compressibility of the
`data under different
`compression
`algorithms.
`
`See IPR2017-00179,
`Paper 1, 31–34, 52.
`
`Argument Here With
`Respect to Claim 25
`Relies on Hsu’s
`disclosure of using
`statistical methods to
`determine the best
`algorithm to use in
`compressing each data
`block.
`
`See Pet. 58–60.
`
`
`The table above summarizes the arguments Petitioner offers here
`against each limitation of claim 25 and compares those arguments to the
`similar arguments made in IPR2017-00179 against similar limitations of
`claim 24. Based on the comparison above, we find that the argument
`Petitioner offers here with respect to the Franaszek/Hsu/Sebastian ground is
`substantially the same as that previously presented to the Office with respect
`to other claims of the ’728 patent. Although Petitioner’s argument on the
`Franaszek/Hsu/Sebastian/Kawashima ground includes some new material in
`the form of allegations that Kawashima teaches or suggests some limitations
`of claim 25, as discussed above, Petitioner also argues that Franaszek and
`Hsu each individually teach or suggest those same limitations. Pet. 65–71.
`
`11
`
`

`

`IPR2018-00614
`Patent 9,054,728 B2
`
`Accordingly, the argument on the second ground also is substantially the
`same as the arguments previously presented to the Office.
`Because both the art and the arguments presented in the Petition are
`substantially the same as those previously presented to the Office in
`IPR2017-00179, we conclude that 35 U.S.C. § 325(d) applies, and we move
`on to determine whether to exercise the discretion that § 325(d) affords us.
`The previous proceedings against the ’728 patent have not challenged
`claim 25, the claim challenged here, which weighs against denying
`institution in this proceeding under § 325(d). As discussed above, however,
`claim 25 is quite similar to claim 24, which was challenged in those
`proceedings, and the arguments offered here are strikingly similar to those
`presented in IPR2017-00179 with respect to the obviousness of the subject
`matter of claim 24 over the same combination of references asserted here.
`Thus, were we to institute trial here, the issues to be tried already would
`have been decided by the Board in the earlier proceedings. This weighs
`strongly in favor of our exercising our discretion to deny institution.
`Moreover, in the earlier proceedings, the Board found the combination of
`Franaszek, Hsu, and Sebastian not to render claim 24 unpatentable as
`obvious. IPR2017-00179, Paper 40, 11–31. Had the Board found the
`subject matter of claim 24 obvious over this combination of art, it would be
`reasonable to suspect that the similar subject matter of claim 25 also would
`be obvious over the same combination of references. The actual result in
`IPR2017-00179, however, does not itself suggest that there is a compelling
`reason to conduct a trial on the obviousness of the subject matter of claim 25
`on the same asserted ground of unpatentability. Given all of this, and
`considering the efficient use of the Board’s administrative resources, we find
`
`12
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`

`IPR2018-00614
`Patent 9,054,728 B2
`
`that it is appropriate for us to exercise our discretion to deny institution
`under § 325(d).
`Because 35 U.S.C. § 325(d) applies to allow us discretion to deny
`institution, and because we find that it is appropriate for us to exercise that
`discretion, we do not institute inter partes review of claim 25 of the ’728
`patent on the grounds asserted in the Petition.
`
`C. Discretionary Denial Under 35 U.S.C. § 314(a)
`Patent Owner argues that we should deny institution under 35 U.S.C.
`§ 314(a). Prelim. Resp. 12–23. We agree.
`Although 35 U.S.C. § 314(a) permits institution of an inter partes
`review under certain conditions, it does not mandate institution under any
`conditions. Intelligent Bio-Syst., Inc. v. Illumina Cambridge Ltd., Case
`IPR2013-00324, slip op. at 4 (PTAB Nov. 21, 2013) (Paper 19) (“Congress
`did not mandate that an inter partes review must be instituted under certain
`conditions. Rather, by stating that the Director—and by extension, the
`Board—may not institute review unless certain conditions are met, Congress
`made institution discretionary.”); see also Cuozzo, 136 S. Ct. at 2140 (“[T]he
`agency’s decision to deny a petition is a matter committed to the Patent
`Office’s discretion. See [5 U.S.C.] § 701(a)(2); 35 U.S.C. § 314(a) (no
`mandate to institute review).” (remainder of citation omitted)).
`In deciding whether to exercise discretion under § 314(a), we must
`consider a non-exclusive list of seven factors. General Plastic Indus. Co.,
`Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357 (PTAB Sept. 6,
`2017) (Paper 19) (precedential). These factors are:
`1. whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
`
`13
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`

`IPR2018-00614
`Patent 9,054,728 B2
`
`
`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.
`Id. at 16 (citations omitted). Applying these factors to the present Petition,
`we conclude that the circumstances present here warrant discretionary denial
`of institution.
`Factor 1 weighs somewhat in favor of considering this Petition on the
`merits because Petitioner has not previously filed a petition challenging the
`’728 patent. But the Petition appears to copy substantial portions of the
`petition in IPR2017-00179. Compare IPR2017-00179, Paper 1, 32–33, with
`Pet. 38; compare IPR2017-00179, Paper 1, 26–27, with Pet. 55. These
`instances of copying are not exhaustive. This factor is not as compelling as
`it would be if Petitioner’s analysis were not copied from the IPR2017-00179
`petition. Accordingly, Factor 1 weighs only somewhat in favor of
`institution.
`
`14
`
`

`

`IPR2018-00614
`Patent 9,054,728 B2
`
`
`As to Factor 2, Patent Owner does not provide argument or evidence
`to demonstrate that Petitioner knew, or should have known, of Franaszek,
`Hsu, and Sebastian as of the November 14, 2016 filing date of the petition in
`IPR2017-00179. Prelim. Resp. 13–14. Thus, Factor 2 is neutral.
`With respect to Factor 3, Patent Owner filed its Preliminary Response
`in IPR2017-00179 on March 1, 2017. IPR2017-00179, Paper 14. The
`Board instituted trial on May 30, 2017. IPR2017-00179, Paper 20. Patent
`Owner filed its post-institution Patent Owner Response on September 22,
`2017.6 IPR2017-00179, Paper 31. The Petition before us was filed on
`February 13, 2018. During the time leading up to the February 13, 2018
`filing of the Petition, Petitioner already had access to, and the benefit of, the
`preliminary response, institution decision, and Patent Owner’s response filed
`in IPR2017-00179. Accordingly, Factor 3 weighs in favor of invoking our
`discretion to deny institution.
`Factor 4 also weighs somewhat in favor denying institution.
`Petitioner should have learned of Franaszek, Hsu, and Sebastian no later
`than shortly after February 14, 2017, when it was served with a complaint
`alleging infringement of the ’728 patent. The petition in IPR2017-00179,
`asserting all three of these references, was already pending when the
`
`
`6 Factor 3 is directed to Petitioner’s potential benefit from receiving and
`having the opportunity to study Patent Owner’s preliminary response, and
`institution decision on the first filed petition so that Petitioner can tailor its
`arguments to address issues identified by the Patent Owner and/or the Board
`during a prior proceeding. Although the formulation of Factor 3 in General
`Plastic only refers to the patent owner’s preliminary response and the
`Board’s institution decision in the earlier proceeding, the filing date of the
`patent owner’s response in the earlier proceeding is equally relevant to this
`factor.
`
`15
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`

`IPR2018-00614
`Patent 9,054,728 B2
`
`infringement complaint was served on Petitioner. The record contains no
`evidence that Petitioner could not have located the fourth reference,
`Kawashima, a United States patent disclosed on the face of the ’728 patent
`itself, at or around the same time. See Ex. 1001, at [56]; Ex. 1007, at [11],
`[19]. Factor 4 considers the length of Petitioner’s delay in filing its Petition
`after it learned or should have learned of the asserted references. When the
`triggering event for Petitioner learning of the asserted references is the filing
`of an infringement complaint, as it is here, that delay can be at most one
`year. 35 U.S.C. § 315(b). Here, Petitioner waited nearly the full year before
`filing its Petition, so this factor weighs as heavily as it possibly can in favor
`of denying the Petition. On the other hand, given that Petitioner did no more
`than exercise its statutory right to wait up to one year before filing its
`Petition, we do not believe that this factor should weigh heavily against
`Petitioner. Accordingly, Factor 4 weighs only somewhat in favor of denying
`the Petition.
`Regarding Factor 5, claim 25, which is challenged here, was not
`challenged in IPR2017-00179. As discussed above, however, the challenged
`claim here is quite similar to claim 24, which was challenged as
`unpatentable over the combination of Franaszek, Hsu, and Sebastian in
`IPR2017-00179, and the arguments offered here for the unpatentability of
`claim 25 are nearly identical to those offered in IPR2017-00179 for the
`unpatentability of claim 24. The Petition here contains no argument about
`why we should institute this proceeding despite the long history of cases
`challenging the claims of the ’728 patent, including several cases
`challenging those claims on grounds nearly identical to those advanced here.
`We are mindful that Petitioner did not have any control over the filing of the
`
`16
`
`

`

`IPR2018-00614
`Patent 9,054,728 B2
`
`other petitions challenging the ’728 patent and only exercised its statutory
`right to wait up to one year before filing its own Petition. Petitioner did,
`however, have control over the content of its Petition, and chose not to
`provide any argument for instituting review in the face of the other petitions
`presenting similar arguments against similar claims of the same patent.
`Accordingly, Factor 5 weighs at least somewhat in favor of denying the
`Petition.
`Factors 6 and 7 also weigh against institution. The previous inter
`partes review proceeding that challenged the ’728 patent on the basis of
`unpatentability over the combination of Franaszek, Hsu, and Sebastian has
`reached a final written decision and is now on appeal. IPR2017-00179,
`Paper 40; IPR2017-00179, Paper 41. Thus, due to Petitioner’s delay in
`filing its Petition and the time limit of 35 U.S.C. § 316(a)(11), the Board is
`unable to join, consolidate, or coordinate this proceeding with the earlier-
`filed proceedings involving the same patent and the same prior-art
`references. Instituting an inter partes review would require the Board to
`conduct an entirely separate proceeding involving numerous issues that
`already have been considered and resolved in IPR2017-00179. The result
`would be a significant waste of the Board’s resources.
`In addition, instituting inter partes review here would result in
`significant prejudice to Patent Owner, which already has spent more than a
`year defending the patentability of the ’728 patent in several earlier-filed
`proceedings. Petitioner offers no reason why Patent Owner should be forced
`to spend an additional year re-arguing issues that substantially overlap with
`issues that have reached final decision in IPR2017-00179, when it appears
`from the record that Petitioner could have minimized the burden on the
`
`17
`
`

`

`IPR2018-00614
`Patent 9,054,728 B2
`
`Board and Patent Owner by raising its present arguments at a much earlier
`date.
`
`Because the analysis is fact-driven, no single factor is determinative
`of whether we exercise our discretion to deny institution under 35 U.S.C.
`§ 314(a). Nonetheless, three of the General Plastic factors weigh strongly
`against institution, two weigh somewhat against institution, one is neutral,
`and one weighs somewhat in favor of institution. On this record, we
`determine that the circumstances presented here weigh in favor of invoking
`our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes
`review.
`
`CONCLUSION
`Upon consideration of the Petition, the Preliminary Response, and the
`evidence before us, we exercise the discretion available to us under both
`35 U.S.C. § 325(d) and 35 U.S.C. § 314(a), and we do not institute inter
`partes review on any of Petitioner’s asserted grounds.
`
`ORDER
`
`It is hereby
`ORDERED that, pursuant to 35 U.S.C. § 314, the Petition is denied,
`and no inter partes review is instituted.
`
`
`
`
`18
`
`

`

`IPR2018-00614
`Patent 9,054,728 B2
`
`
`PETITIONER:
`Adam R. Shartzer
`Timothy W. Riffe
`FISH & RICHARDSON P.C.
`shartzer@fr.com
`riffe@fr.com
`
`
`
`
`PATENT OWNER:
`William P. Rothwell
`Kayvan B. Noroozi
`NOROOZI PC
`william@noroozipc.com
`kayvan@noroozipc.com
`
`
`
`
`
`19
`
`

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