Trials@uspto.gov
`571-272-7822
`
` Paper No. 8
` Entered: September 19, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SHENZHEN SILVER STAR INTELLIGENT TECHNOLOGY CO., LTD.,
`Petitioner,
`
`v.
`
`IROBOT CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-00761 (Patent 7,155,308)
`Case IPR2018-00880 (Patent 8,474,090)
`Case IPR2018-00882 (Patent 9,038,233)
`Case IPR2018-00897 (Patent 6,809,490)
`Case IPR2018-00898 (Patent 8,600,553)
`
`____________
`
`Before WILLIAM V. SAINDON, TERRENCE W. MCMILLIN, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`571-272-7822
`
` Paper No. 8
` Entered: September 19, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SHENZHEN SILVER STAR INTELLIGENT TECHNOLOGY CO., LTD.,
`Petitioner,
`
`v.
`
`IROBOT CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-00761 (Patent 7,155,308)
`Case IPR2018-00880 (Patent 8,474,090)
`Case IPR2018-00882 (Patent 9,038,233)
`Case IPR2018-00897 (Patent 6,809,490)
`Case IPR2018-00898 (Patent 8,600,553)
`
`____________
`
`Before WILLIAM V. SAINDON, TERRENCE W. MCMILLIN, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2018-00761 (Patent 7,155,308)
`IPR2018-00880 (Patent 8,474,090)
`IPR2018-00882 (Patent 9,038,233)
`IPR2018-00897 (Patent 6,809,490)
`IPR2018-00898 (Patent 8,600,553)
`
`
`On Friday, September 7, 2018, counsel for Petitioner contacted the
`
`Board, seeking authorization to file Replies to Patent Owner’s Preliminary
`
`Responses in these proceedings, to address Patent Owner’s arguments
`
`regarding 35 U.S.C. §§ 314(a) and 325(d). On September 11, 2018, the
`
`panel requested that Petitioner confer with counsel for Patent Owner to
`
`identify mutually convenient times on September 12 or 13, 2018, for a
`
`teleconference with the Board. On September 13, 2018, counsel for
`
`Petitioner proposed times on September 18 or 19, 2018, for a teleconference.
`
`A teleconference was conducted on September 18, 2018, between
`
`Administrative Patent Judges Saindon, McMillin, and Wieker; Petitioner’s
`
`counsel, Hao Tan, Shen Wang, and Matthew Ridsdale; Petitioner’s
`
`representative, Logan Xie; and Patent Owner’s counsel, Walter Renner and
`
`Jeremy Monaldo. For the reasons discussed below, Petitioner’s request for
`
`authorization to file Replies is denied.
`
`DISCUSSION
`
`
`
`Pursuant to 37 C.F.R. § 42.108(c), a “petitioner may seek leave to file
`
`a reply to the preliminary response in accordance with §§ 42.23 and
`
`42.24(c). Any such request must make a showing of good cause.”
`
`
`
`During the teleconference, Judge Wieker asked Mr. Ridsdale to
`
`explain why “good cause” supported Petitioner’s request. Mr. Ridsdale
`
`noted that, on September 5, 2018, this panel denied institution of inter partes
`
`review in IPR2018-00761 (“the –761 IPR”), based on 35 U.S.C. § 314(a).
`
`Mr. Ridsdale explained that additional facts support institution of the subject
`
`proceedings, and that Petitioner should be afforded an opportunity to discuss
`
`
`
`2
`
`
`
`IPR2018-00761 (Patent 7,155,308)
`IPR2018-00880 (Patent 8,474,090)
`IPR2018-00882 (Patent 9,038,233)
`IPR2018-00897 (Patent 6,809,490)
`IPR2018-00898 (Patent 8,600,553)
`
`those facts in Reply papers. Counsel requested that it be authorized to file
`
`five-page Replies, to be filed in two weeks.
`
`Judge Wieker inquired as to the exact relief sought by Petitioner in the
`
`–761 IPR, given that a Decision denying institution has already been
`
`entered. See –761 IPR, Paper 15 (Dec. on Inst.). Mr. Ridsdale
`
`acknowledged that a Request for Rehearing would be filed in that
`
`proceeding, rather than the requested Reply, given the posture of the
`
`proceeding. Regarding IPR2018-00880 (“the –880 IPR”), IPR2018-00882
`
`(“the –882 IPR”), IPR2018-00897 (“the –897 IPR”), and IPR2018-00898
`
`(“the –898 IPR”), Judge Wieker inquired as to why Petitioner had not
`
`addressed 35 U.S.C. §§ 314(a) or 325(d) in its original Petitions.
`
`Mr. Ridsdale responded that Petitioner had not anticipated that 35 U.S.C.
`
`§ 314(a) would arise, because these are the first Petitions filed by this
`
`Petitioner.1
`
`For Patent Owner, Mr. Monaldo opposed Petitioner’s request.
`
`According to Mr. Monaldo, Petitioner has not demonstrated good cause.
`
`Additionally, Mr. Monaldo argued that this request comes too late, being
`
`
`1 In a precedential decision in General Plastic Industries Co., Ltd. v. Canon
`Kabushiki Kaisha, the Board articulated a non-exhaustive list of seven
`factors to be considered in evaluating whether to exercise discretion, under
`35 U.S.C. § 314(a), to deny a petition that challenges a patent that was
`previously challenged before the Board. Gen. Plastic, Case IPR2017-01357,
`Paper 19 (PTAB Sept. 6, 2017) (Section II.B.4.i designated as precedential
`on Oct. 17, 2017), slip op. at 16. The first such factor considers “whether
`the same petitioner previously filed a petition directed to the same claims of
`the same patent.” Id. at 16.
`
`
`
`3
`
`
`
`IPR2018-00761 (Patent 7,155,308)
`IPR2018-00880 (Patent 8,474,090)
`IPR2018-00882 (Patent 9,038,233)
`IPR2018-00897 (Patent 6,809,490)
`IPR2018-00898 (Patent 8,600,553)
`
`filed months after Patent Owner’s Preliminary Responses were filed, and
`
`coming only after the Board entered a decision unfavorable to Petitioner in
`
`the –761 IPR.
`
`The panel discussed the parties’ arguments and Judge Wieker reported
`
`the panel’s decision to deny Petitioner’s request for authorization to file a
`
`Reply in these proceedings, because Petitioner failed to demonstrate good
`
`cause. Judge Wieker explained that the panel considered Petitioner’s
`
`argument that it did not address § 314(a) because it did not foresee it to be
`
`an issue. However, in these cases, Petitioner’s failure to foresee the
`
`applicability of § 314(a) does not demonstrate good cause. As Petitioner
`
`acknowledges, Petitioner’s co-respondent in an ITC investigation previously
`
`filed petitions against the challenged patents. See, e.g., –761 IPR, Paper 10
`
`(Corr. Pet.), 2 (identifying IPR2017-02078, filed by petitioner Shenzhen
`
`Zhiyi Technology Co., Ltd., on September 8, 2017). We recognize that the
`
`Petitions filed in the –761, –880, –882, –897, and –898 IPRs are the first
`
`Petitions filed by this Petitioner. See, e.g., –761 IPR, Paper 15 (Dec. on
`
`Inst.), 9–10. Although this fact is relevant to the first of the seven factors
`
`articulated in General Plastics, it is not dispositive. See, e.g., –761,
`
`Paper 14 (Prelim. Resp.), 15–16, 24–25 (discussing previous Board
`
`decisions denying institution under 35 U.S.C. § 314(a), when the subject
`
`petitions were the first petitions filed by those petitioners). Thus, in this
`
`circumstance, given the previous proceedings challenging the same patents,
`
`Petitioner should have been aware that 35 U.S.C. §§ 314(a) and/or 325(d)
`
`may be at issue in these proceedings.
`
`
`
`4
`
`
`
`IPR2018-00761 (Patent 7,155,308)
`IPR2018-00880 (Patent 8,474,090)
`IPR2018-00882 (Patent 9,038,233)
`IPR2018-00897 (Patent 6,809,490)
`IPR2018-00898 (Patent 8,600,553)
`
`
`Additionally, the panel agrees with Patent Owner that Petitioner’s
`
`request comes too late. As discussed above, the Board has already rendered
`
`a Decision in the –761 IPR. Moreover, in the –882 IPR, Petitioner received
`
`Patent Owner’s Preliminary Response on July 11, 2018. –882 IPR, Paper 7
`
`(Prelim. Resp.). However, Petitioner did not request an opportunity to
`
`respond until nearly two months later, after Petitioner received the Board’s
`
`decision in the –761 IPR. –761 IPR, Paper 15 (Dec. on Inst.). The statutory
`
`deadline for the Board to issue its institution decision in the –882 IPR is
`
`October 11, 2018, just over three weeks from the date Petitioner proposed
`
`for this teleconference. Thus, in the subject cases, the timing of Petitioner’s
`
`request is a factor in the Board’s decision.
`
`Accordingly, for the foregoing reasons, Petitioner’s request for
`
`authorization to file Reply papers is denied.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2018-00761 (Patent 7,155,308)
`IPR2018-00880 (Patent 8,474,090)
`IPR2018-00882 (Patent 9,038,233)
`IPR2018-00897 (Patent 6,809,490)
`IPR2018-00898 (Patent 8,600,553)
`
`PETITIONER:
`
`Shen Wang
`shenwang@archlakelaw.com
`
`Hao Tan
`haotan@archlakelaw.com
`
`
`PATENT OWNER:
`
`Walter Renner
`Axf-ptab@fr.com
`
`Jeremy Monaldo
`jjm@fr.com
`
`Nicholas Stephens
`nstephens@fr.com
`
`Tonya Drake
`tdrake@irobot.com
`
`
`
`
`6
`
`
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