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`Trials@uspto.gov
`Paper 21
`571-272-7822
` Entered: November 28, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`SEVEN NETWORKS, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01106
`Patent 9,516,127 B2
`____________
`
`Before THU A. DANG, JONI Y. CHANG, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`1
`
`
`Trials@uspto.gov
`Paper 21
`571-272-7822
` Entered: November 28, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`SEVEN NETWORKS, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01106
`Patent 9,516,127 B2
`____________
`
`Before THU A. DANG, JONI Y. CHANG, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`1
`
`
`
`(cid:51)(cid:56)(cid:37)(cid:47)(cid:44)(cid:38)(cid:3)(cid:57)(cid:40)(cid:53)(cid:54)(cid:44)(cid:50)(cid:49)
`
`IPR2018-01106
`Patent 9,516,127 B2
`
`INTRODUCTION
`I.
`Samsung Electronics Co., Ltd. and Samsung Electronics America,
`Inc. (collectively, “Petitioner” or “Samsung”) filed a Petition requesting an
`inter partes review of claims 1−24, 26−33, 35−42, and 44−50 (“the
`challenged claims”) of U.S. Patent No. 9,516,127 B2 (Ex. 1001, “the ’127
`patent”). Paper 2; Ex. 30031 (“Pet.”). The SEVEN Networks, LLC and CF
`SVN LLC (collectively, “Patent Owner”) filed a Preliminary Response.
`Paper 11 (“Prelim. Resp.”). Pursuant to our prior authorization, Petitioner
`filed a Reply (Papers 14, 15, “Reply”) to the Patent Owner Preliminary
`Response as to the issue of whether Petitioner had named all of the real
`parties in interest, and Patent Owner filed a Sur-Reply (Papers 18, 19, “Sur-
`Reply”).2 The parties also filed Motions to Seal (Papers 16, 17, 20) the
`nonpublic versions of their papers (Papers 15, 18) and certain exhibits and
`have agreed to the Revised Protective Order (Paper 16, Attachments A, B;
`Paper 17, Attachment A).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the information presented in the petition “shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at
`
`1 The Petition does not include page numbers. Patent Owner uses the page
`numbers in the Portable Document Format (“PDF”) for its citations to the
`Petition. Prelim. Resp. 19 n.6. For consistency, our citations to the Petition
`refer to Exhibit 3003, which contains the Petition with the PDF page
`numbers added.
`2 Both parties filed public and nonpublic versions of their papers. Our
`citations correspond to the nonpublic version of each paper.
`2
`
`
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`
`IPR2018-01106
`Patent 9,516,127 B2
`
`least 1 of the claims challenged in the petition.” For the reasons stated
`below, we determine that there is a reasonable likelihood that Petitioner
`would prevail with respect to at least one challenged claim. We hereby
`institute inter partes review of all the challenged claims on all the grounds of
`unpatentability asserted in the Petition.
`
`A. Related Matters
`The parties indicate that the ’127 patent is involved in SEVEN
`Networks, LLC v. Samsung Electronics Co., Ltd., Case No. 2:17-cv-00441
`(E.D. Tex.). Pet. 78; Paper 3, 2. The parties also list other related
`proceedings. Paper 3, 1−2.
`
`B. The ’127 Patent
`The ’127 patent claims priority to U.S. Provisional Application No.
`61/805,070, which was filed on March 25, 2013. Ex. 1001, at [54], [60].
`The ’127 patent discloses a system and method “for tracking resources used
`by triggers such as alarms and timers that are used by mobile applications to
`schedule tasks and intelligently manipulating the timing of the triggers to
`optimize usage of resources.” Id. at Abstract.
`
`3
`
`
`
`PUBLIC VERSION
`
`IPR201 8-01 106
`
`Patent 9,516,127 B2
`
`Figure lA-l of the ’ 127 patent is reproduced below.
`
`
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`
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`
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`
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`
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`
`
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`
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`
`
`
`
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`
`
`
`Resource
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`
`
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`
`
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`
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`
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`
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`
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`
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`
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`
`FIG. IA-l
`
`Figure lA-l of the ’ 127 patent illustrates an example resource
`
`utilization tracking and intelligent alarm management of triggers across
`
`multiple applications on a mobile device. Id. at 5:15—20. Inparticular,
`
`Figure lA-l shows intelligent alarm manipulator and resource tracker
`
`module 114 having intelligent alarm manger 1 15 and resource utilization
`
`tracker 116. Id. Applications 101, 105, and 107 are exemplary applications
`
`of a mobile device, which can set alarms for different times to perform
`
`different tasks. Id. at 5:24-26. Alarms A1, A2, andA3 are intercepted
`
`and/or tracked by intelligent alarm manger l 15, and they use resources 102,
`
`including battery 109, network 111, and CPU 113. Id. at 5:29—33. Resource
`
`4
`
`
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`
`IPR2018-01106
`Patent 9,516,127 B2
`
`utilization tracker 116 tracks or monitors the usage of various resources by
`alarms A1, A2, and A3, or tasks triggered by the alarms. Id. at 5:33−36.
`For example, assuming that alarm A1 wakes up the mobile device from the
`sleep mode, when alarm A1 is triggered, the mobile device’s battery/power
`resource and CPU resource can be utilized. Id. at 5:36−39.
`
`C. Illustrative Claim
`Of the challenged claims, claims 1, 10, 17, 24, 33 and 42 are
`independent. Claims 2−9 depend from claim 1; claims 11−16 depend from
`claim 10; claims 18−23 depend from claim 17; claims 26−32 depend from
`claim 24; claims 35−41 depend from claim 33; and claims 44−50 depend
`from claim 42. Claim 1 is illustrative:
`1. A method for managing resources on a mobile device,
`comprising:
`entering a power save mode based on a backlight status and
`sensed motion of a mobile device;
`delaying a timing of one or more triggers for multiple
`applications on the mobile device,
`wherein the timing is delayed such that the triggers execute
`within a window of time,
`wherein at least a subset of the triggers are associated with
`wakelocks; and
`exiting the power save mode when the backlight of the mobile
`device turns on or motion of the mobile device is sensed.
`Ex. 1001, 23:60–24:5.
`
`5
`
`
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`PUBLIC VERSION
`
`IPR2018-01106
`
`Patent 9,516,127 B2
`
`D. PriorArrRelied Upon
`
`Petitioner relies upon the references listed below (Pet. 4-6).
`
`Giaretta
`
`US 2012/0185577 A1, published July 19, 2012
`
`Backholrn US 2012/0023236 A1, published Jan. 26, 2012
`
`Pathak3
`
`“What is keeping my phone awake? Characterizing and
`Detecting No-Sleep Energy Bugs in Smartphone Apps,”
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1011
`
`Aleksic
`
`US 2008/0057894 A1, published Mar. 6, 2008
`
`7
`3
`Hackborn US 8 280 456 B2, issued Oct. 2, 2012
`
`-
`
`“The Busy Coder’s Guide to Android Development,”
`CommonsWare,LLC (2012)
`
`3 On this record, Petitioner has made a threshold showing that Pathak is a
`printed publication under § 102(a)(1). Pet. 7; Ex 1009 1111 5, 6; Ex. 1010
`M 5—18. Patent Owner does not challenge Petitioner’s showing at this time.
`See generally Prelim. Resp.
`
`
`
`PUBLIC VERSION
`
`IPR2018-01106
`
`Patent 9,516,127 B2
`
`E. Assertea' Grounds ofUnpatentabi Iity
`
`Petitioner asserts the following grounds of unpatentability (Pet. 6)4:
`
`References
`
`1-23
`
`§ 103
`
`Giaretta, Backhohn, and P athak
`
`Hackbom
`
`24, 26, 28—33, 36-42, 44,
`and 46—50
`
`37, 35, and 45
`
`_
`Backholm and Aleks1c
`
`Backholm, Aleksic, and
`
`§ 103
`
`§ 103
`
`II. ANALYSIS
`
`A. Whether the Petition is Time—Bawed under § 3 15 (b)
`
`Petitioner asserts that its Petition was filed timely on May 21, 2018,
`
`because it was served on May 19, 2017, with a complaint alleging
`
`infringement of the ’ 127 patent, and May 19, 2018 was a Saturday. Pet. 5.
`
`Petitioner indicates that it is the sole real party in interest (“RPI”). Id. at 79.
`
`4 The relevant post—grant review provisions of the America Invents Act
`(“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (201 1), took effect on March 16,
`2013. 125 Stat. at 293, 311. The earliest poss1ble effective filing date of the
`’ 127 patent is March 25, 2013. Therefore, our citations to Title 35 are to its
`post AIA version. Section 4(c) of the AIA re-designated 35 U. SC.
`§§ 112(1), (2) as 35 U.S.C. §§ 112 (a), (b), respectively, effective September
`16, 2012. 125 Stat. at 296—297.
`
`
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`
`IPR2018-01106
`Patent 9,516,127 B2
`
`Patent Owner argues that the Petition is time-barred under § 315(b).
`Prelim. Resp. 1, 4. According to Patent Owner, Google LLC (“Google”) is
`also an RPI to this proceeding, and a privy of Petitioner. Id. Patent Owner
`avers that the Petition was filed more than a year after Google was served
`with a complaint. Id. (citing Ex. 2003, 2).
`
`1. Principles of Law
`Section 315(b) of Title 35 of the United States Code provides:
`(b) PATENT OWNER’S ACTION.—An inter partes review
`may not be instituted if the petition requesting the proceeding is
`filed more than 1 year after the date on which the petitioner, real
`party in interest, or privy of the petitioner is served with a
`complaint alleging
`infringement of the patent. The time
`limitation set forth in the preceding sentence shall not apply to a
`request for joinder under subsection (c).
`“Whether a party who is not a named participant in a given
`proceeding nonetheless constitutes a ‘real party-in-interest’ . . . to that
`proceeding is a highly fact-dependent question” with no “bright line test,”
`and is assessed “on a case-by-case basis.” Office Patent Trial Practice Guide
`(“TPG”), 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (citing Taylor v.
`Sturgell, 553 U.S. 880, 893−95 (2008); 18A Charles Alan Wright, Arthur R.
`Miller & Edward H. Cooper, Federal Practice & Procedure §§ 4449, 4451).
`“To decide whether a party other than the petitioner is the real party in
`interest, the Board seeks to determine whether some party other than the
`petitioner is the ‘party or parties at whose behest the petition has been
`filed.’” Wi-Fi One, LLC v. Broadcom Corp., 887 F.3d 1329, 1336 (Fed. Cir.
`2018) (“Wi-Fi Remand”)(emphasis added). “Aparty that funds and directs
`8
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`IPR2018-01106
`Patent 9,516,127 B2
`
`and controls an IPR or post-grant review proceeding constitutes a ‘real
`party-in-interest,’ even if that party is not a ‘privy’ of the petitioner.” Id.
`Also, several relevant factors for determining whether a party is an RPI
`include the party’s relationship with the petitioner, the party’s relationship to
`the petition, and the nature of the entity filing the petition. Applications in
`Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed. Cir. 2018)
`(“AIT”).
`The concept of “privity” is more expansive and encompasses parties
`that do not necessarily need to be identified in the petition as RPIs. TPG, 77
`Fed. Reg. at 48,759. The legislative history endorsed the expression of
`“privy” as follows:
`The word “privy” has acquired an expanded meaning. The
`courts, in the interest of justice and to prevent expensive
`litigation, are striving to give effect to judgments by extending
`“privies” beyond the classical description. The emphasis is not
`on the concept of identity of parties, but on the practical
`situation. Privity is essentially a shorthand statement that
`collateral estoppel is to be applied in a given case; there is no
`universally applicable definition of privity. The concept refers
`to a relationship between the party to be estopped and the
`unsuccessful party in the prior litigation which is sufficiently
`close so as to justify application of the doctrine of collateral
`estoppel.
`154 CONG. REC. S9987 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl)
`(emphasis added); 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011)
`(incorporating prior 2008 statement). “[T]he standards for the privity
`inquiry must be grounded in due process.” WesternGeco LLC v. ION
`Geophysical Corp., 889 F.3d 1308, 1318−19 (Fed. Cir. 2018). “[T]he
`9
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`
`IPR2018-01106
`Patent 9,516,127 B2
`
`privity inquiry in this context naturally focuses on the relationship between
`the named IPR petitioner and the party in the prior lawsuit. For example, it
`is important to determine whether the petitioner and the prior litigant’s
`relationship—as it relates to the lawsuit—is sufficiently close that it can be
`fairly said that the petitioner had a full and fair opportunity to litigate the
`validity of the patent in that lawsuit.” Id. (emphases added).
`In Taylor, the United States Supreme Court identified a
`non-exhaustive list of six categories under which nonparty preclusion based
`on a privity relationship may be found: (1) an agreement between the parties
`to be bound; (2) pre-existing substantive legal relationships between the
`parties; (3) adequate representation by the named party; (4) the nonparty’s
`control of the prior litigation; (5) where the nonparty acts as a proxy for the
`named party to re-litigate the same issues; and (6) where special statutory
`schemes foreclose successive litigation by the nonparty (e.g., bankruptcy or
`probate). Taylor, 553 U.S. at 893−95, 893 n.6. The Supreme Court noted
`that this list of the six “established grounds for nonparty preclusion” is
`“meant only to provide a framework . . . , not to establish a definitive
`taxonomy.” Id. at 893 n.6. Each ground alone is sufficient to establish
`privity between a nonparty and a named party in the prior litigation.
`WesternGeco, 889 F.3d at 1319−20.
`Petitioner “bears the ultimate burden of persuasion to show that its
`petitions are not time-barred under § 315(b) based on a complaint served on
`an alleged real party in interest more than a year earlier.” Worlds Inc. v.
`Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018).
`10
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`PUBLIC VERSION
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`IPR2018-01106
`
`Patent 9,516,127 B2
`
`2. Whether Google is a Real Pay in Interest
`
`Patent Owner contends that Google is an RPI because (1) Google and
`
`Samsung have a preexisting, established relationship that includes
`
`indemnification obligations; (2) Google and Samsung are cooperating in the
`
`related district court case, including by submitting joint invalidity
`
`contentions that rely on some of same prior art used in the Petition;
`
`(3) Samsung will benefit from the Petition; and (4) Google and Samsung
`
`each filed several petitions for interparres review of Patent Owner’s patents
`
`within a few days of one another. Prelim. Resp. 1, 4—16; Sur-Reply 1—6.
`
`Samsung contends that Google is not indemnifying Samsung and that
`
`Google is not involved in this proceeding. Reply. l—10.
`
`On this record, Samsung shows sufficiently that Google is not an RPI.
`
`First, the customer-supplier relationship between Samsung and Google does
`
`not indicate that Google is an RPI-—
`
`— _
`
`Ex 1030 11 22; Ex 1047. Thus, the evidence shows that
`
`Samsung and Google have a standard customer—supplier relationship, which
`
`by itself does not make Google an RPI. See WesternGeco, 889 F.3d at 1321
`
`(“ION and PGS had a contractual and fairly standard customer-manufacturer
`
`relationship regarding the accused product,” which “does not necessarily
`
`suggest that the relationship is sufficiently close .
`
`.
`
`. that the parties were
`
`litigating .
`
`.
`
`.
`
`the IPRs as proxies for the other”).
`
`Second, the relationship between Google and the Petition does not
`
`indicate that Google is an RPI. Samsung independently prepared and filed
`
`11
`
`
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`
`IPR2018-01106
`Patent 9,516,127 B2
`
`the Petition without any involvement from Google. Ex. 1035 ¶¶ 3−5.
`Indeed, Google filed its own petitions. See, e.g., IPR2018-01051, Paper 2;
`IPR2018-01052, Paper 2. A member of Google’s Patent Litigation Legal
`team, Joseph Shear, testifies that Google and Samsung filed their petitions
`within a few days of one another because their respective deadlines under 35
`U.S.C. § 315(b) were a few days apart. Ex. 1030 ¶ 21. Thus, even if
`Google’s and Samsung’s interests, as co-defendants in the district court
`litigation, generally are aligned in that they have been charged with
`infringing the same patents (as would normally be true for all
`co-defendants), the evidence shows that the parties acted independently, and
`Samsung did not file the Petition at the behest or on behalf of Google. See
`Wi-Fi Remand, 887 F.3d at 1340–41 (“Wi-Fi’s evidence showed that
`Broadcom’s interests as to the issue of infringement were generally aligned
`with those of its customers,” but “there is no evidentiary support for Wi-Fi’s
`theory that Broadcom was acting at the behest or on behalf of the D-Link
`defendants.”).
`Third, the nature of the relationship between Google and Samsung as
`parties charged with infringing the same patents does not indicate that
`Google is an RPI. Google and Samsung are independent companies that
`Patent Owner separately accused of patent infringement. Exs. 2022, 2029.
`Patent Owner’s cases against Google and Samsung were consolidated for
`pretrial purposes (Ex. 2023), and, thus, as would normally be expected in
`such situations, Google and Samsung cooperated to file joint proposed claim
`constructions and joint invalidity contentions (Ex. 2020; Ex. 2024, 4). But,
`12
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`PUBLIC VERSION
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`as discussed, the evidence establishes that Google is not funding or
`
`controlling Samsung’s defense, and that Samsung prepared and filed the
`
`Petition independently, without any involvement from Google. Ex. 1035
`
`1111 3—5; Ex. 1030 W 20, 22; EL 1047. Thus, the evidence does not indicate
`
`anything about the nature of Google or Samsung’s cooperation in litigation
`
`with Patent Owner that would make Google an RPI. Cf. AIT, 897 F.3d at
`
`1351 (“The evidence of record reveals that RPX, uner a traditional trade
`
`association, is a for-profit company whose clients pay for its portfolio of
`
`‘patent risk solutions. ”’).
`
`Therefore, based on the totality ofthe circumstances at this time, we
`
`determine that Samsung has shown that Google is not an RPI.
`
`3. Whether Google is a Prim of Petitioner
`
`Patent Owner argues that Google is a privy of Petitioner. Prelim.
`
`Resp. 1, 4-16. According to Patent Owner, Google had the opportunity to
`
`control Samsung’s challenges to the ’ 127 patent because—
`
`— Sur-Reply 1—6- Patent Owner
`
`further contends that Google is a privy of Petitioner under each of the six
`
`Taylor considerations. Id. at 6.
`
`The evidence of record indicates that Google is not a privy of
`
`Petitioner. As explained in AIT, “a ‘privity’ is a party that has a direct
`
`relationship to the petitioner with respect to the allegedly i nfringingproduct
`
`or service.” AIT, 897 F.3d at 1350 (emphasis added). Here, Patent Owner
`
`improperly relies upon prior indemnification agreements unrelated to the
`
`products alleged to infringe the ’ 127 patent. See, e. g.,Prelim. Resp. 10, 14
`13
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`IPR2018—01106
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`Patent 9,516,127 B2
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`(citing Ex 2028 (a copy of a 2011 Mobile Application Distribution
`
`Agreement setting forth the conditions under which Google will incur
`
`indemnification obligations, but not identifying or accepting any particular
`
`indemnity tender»; 1'd. at 5—1 6 (arguing that “the parties have a history of
`
`mutual indemnity obligations for such products dating back to 201 1 and
`
`Google has accepted Samsung requests for indemnification in p17" orparent
`
`i nfri ngementacfions” (emphasis added)). Similarly, the 2014 articles cited
`
`by Patent Owner are not related to the products alleged to infringe the ’ 127
`
`patent. Exs. 2041, 2042, 2050.
`
`Patent Owner’ 5 argument that Google had the opportunity to control
`
`the related infringement action against Samsung is not supported by the
`
`evidence of record. Sur-Reply 1—6.—
`
`— Ex. 10413.—
`
`— Ex 1047;Ex. 103011 22.
`
`We also are not convinced by Patent Owner’s contention that
`
`Samsung has tendered control of its defense to Google. Sur-Reply 1—6.
`
`Exs- 1031—1033.—
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`Patent 9,516,127 B2
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`— Ex. 1047, 3. Nothing in this record shows Patent
`
`Owner’s infringement contentions are directed to the products covered by
`
`— or any other indemnification agreement between Google
`
`and Samsung. Therefore, Patent Owner’s contention that Google had an
`
`opportunity to control Samsung’s defense in the related infringement action
`
`is not supported by the evidence of record.
`
`Based on the evidence in this record, we also do not agree with Patent
`
`Owner’s arguments that Google is a privy of Petitioner under each of the six
`
`Taylor grounds. Sur—Reply 1—6.
`
`As to the first and second Taylor grounds, Patent Owner argues that
`
`Samsung and Google have “an agreement between the parties to be bound”
`
`and a “pre-existing substantive legal relationship.” Id. at 6. In Patent
`
`Owner’s View, they are “long-time business partners—
`
`indemnitors/ indemnitees as to Android phone products and common-
`
`interest parties as to the patents themselves.” Id.
`
`As discussed above, however, the evidence of record indicates that the
`
`prior indemnification agreements— pertain to other
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`products, not those alleged to infringe the ’ 127 patent in the lawsuit asserted
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`against Samsung. Exs. 1047, 1051, 2028.—
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`——
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`Rep1y4—6.
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`Therefore, Samsung and Google merely have a standard customer-supplier
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`relationship as to the accused product, which by itself “does not necessarily
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`suggest that the relationship is sufficiently close that both should be bound
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`1 5
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`by the trial outcome and related estoppels, nor does it suggest, without more,
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`that the parties were litigating either the district court action or the IPRs as
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`proxies for the other.” See WesfernGeco, 889 F.3d at 1321.
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`The evidence shows that Samsung acted independently as to the filing of this
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`Petition. Ex 1035 W 3—4. Also, Samsung and Google are named in
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`separate infringement actions, which have been consolidated for pre-trial
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`proceedings (e.g., case schedule and claim construction). Reply 5—6. -
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`— Significantly, “a common desire among multiple parties to see
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`a patent invalidated, without more, does not establish privity.” See
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`WesternGeco, 889 F.3d at 1321.
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`Accordingly, at this time, Petitioner has established sufficiently that
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`“there exists no agreement between the parties subjugating Samsung to
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`Google in either the litigation or the IPRs.” Reply 4—6. And the evidence of
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`record supports Petitioner’s assertion that there is no substantive legal
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`relationship between Google and Samsung with respect to the accused
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`products. Id. at 6. In short, Petitioner has established on this record that
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`Google is not a privy of Petitioner under the first and second Taylor
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`grounds.
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`As to the third and fourth Taylor grounds—
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`—— S
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`ur-Reply 6. However, as discussed above, the evidence of record indicates
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`that the indemnification provisions— do not apply to the
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`accused products, and there is insufficient evidence to show that Google had
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`an opportunity to control the co-pending lawsuit against Samsung.
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`Ex 1047, 3—4. Google is not indemnifying Samsung or otherwise funding
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`or controlling Samsung’s defense. Id.; Ex. 1030 W 19—22. As Petitioner
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`notes, Samsung and Google are named in separate and distinct cases, and
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`each party has retained its own counsel and maintains control over its own
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`case. Reply 5—7. Samsung alone has controlled and funded this Petition
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`and proceeding. Ex 1035 1111 3—5; Ex. 1047, 4. On this record, Petitioner
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`has established at this time that Google is not a privy of Petitioner under the
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`third and fourth Taylor grounds.
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`As to the fifth Taylor ground, Patent Owner argues that Google has
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`acted as a proxy for Samsung by virtue of the parties’ “joint preparation of
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`invalidity contentions raising most of the combination references asserted in
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`the IPRs and their discussions of the IPRs prior to filing.” Sur-Reply 6.
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`However, as discussed above, Samsung independently prepared and filed
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`this Petition without any involvement from Google. Ex. 1035 W 3—5.
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`Indeed, Google filed its own petitions. See, e. g., IPR2018-01051, Paper 2;
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`IPR2018-01052, Paper2. Mr. Shear testifies that Google and Samsung filed
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`their petitions within a few days of one another because their respective
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`deadlines under § 3 15(b) were a few days apart. Ex 1030 11 21. _
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`——
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`Basedonthe
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`evidence in this record, we agree with Petitioner that Google did not act as a
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`proxy for Samsung. Reply 10. In sum, Petitioner has established at this
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`time that Google is not a privy of Petitioner under the fifth Taylor ground.
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`As to the sixth Taylor ground, Patent Owner argues that § 315(b) is a
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`special statutory scheme as identified in Taylor because it serves “to prevent
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`successive challenges to a patent.” Sur-Reply 6. Patent Owner’s argument
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`is misplaced. As noted above, § 315(b) provides Petitioner a one-year time
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`period to file a petition. The legislative history indicates that § 3 15(b) was
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`intended to set a “deadline for allowing an accused infringer to seek 1' nter
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`parres review after he has been sued for infringement.” 157 CONG. REC.
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`85429 (daily ed. Sept. 8, 201 1) (statement of Sen. Kyl). The deadline helps
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`to ensure that i nrerpartes review is not used as a tool for harassment by
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`“repeated litigation and administrative attacks.” H.R. REP. NO. 112-98 at 48
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`(2011), as reprintedz'n 2011 U.S.C.C.AN. 67, 78. “[T]herationale behind
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`§ 315(b)’s preclusion provision is to prevent successive challenges to a
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`patent by those who previously have had the opportunity to make such
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`challenges in prior litigation.” WesternGeco, 889 F.3d at 1319.
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`Here, as discussed above, Samsungtimely filed its Petition within one
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`year after it was served with a complaint alleging infringement of the ’ 127
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`1 8
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`
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`(cid:51)(cid:56)(cid:37)(cid:47)(cid:44)(cid:38)(cid:3)(cid:57)(cid:40)(cid:53)(cid:54)(cid:44)(cid:50)(cid:49)
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`IPR2018-01106
`Patent 9,516,127 B2
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`patent in accordance with § 315(b). Nothing in this record shows that
`Samsung uses this Petition as a tool for harassment by repeated litigation
`and administrative attacks. In sum, Petitioner has established on this record
`that Google is not a privy of Petitioner under the sixth Taylor ground.
`
`4. Conclusion as to the § 315(b) Issue
`For the foregoing reasons, we determine that Petitioner has shown
`adequately that Google is neither an RPI nor a privy of Petitioner. We,
`therefore, conclude that Petitioner has demonstrated sufficiently at this time
`that its Petition is not time-barred under § 315(b).
`
`B. Patent Owner’s Procedural Arguments
`Patent Owner argues that the Petition should be denied for providing
`long string cites of paragraphs, figures, and other citations without any
`quotations, parentheticals or explanations of how those various citations
`support its arguments. Prelim. Resp. 16−35. Patent Owner also argues that
`the Petition uses figures excessively to circumvent the word limit. Id. at
`30−35.
`Upon consideration of Patent Owner’s arguments and the Petition, we
`are not convinced that denial of institution is warranted. The Petition as a
`whole provides clear and detailed explanations as to how the prior art
`references teach or suggest each claim limitation. See generally Pet. For
`instance, in the allegedly egregious example cited by Patent Owner (Prelim.
`Resp. 20), Patent Owner narrowly focuses on one sentence and ignores the
`detailed explanations provided immediately in the next several sentences in
`19
`
`
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`(cid:51)(cid:56)(cid:37)(cid:47)(cid:44)(cid:38)(cid:3)(cid:57)(cid:40)(cid:53)(cid:54)(cid:44)(cid:50)(cid:49)
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`the Petition. Pet. 22. Petitioner’s prior art citations provide support for the
`explanations, showing where the reference discloses the subject matter relied
`upon. The mere fact that a reference teaches the claimed subject matter in
`multiple places, and that the Petition comprehensively directs our attention
`to all of the locations where the subject matter is being discussed or
`disclosed, does not warrant a denial of the Petition.
`In addition, the use of the figures in the Petition seems reasonable, as
`they provide further support for the detailed explanations. See generally Pet.
`The only figure that contains excessive text is Pathak’s Table 2, which
`depicts a list of applications using wakelocks. Id. at 28. Even if we were to
`consider the explanations alone without Pathak’s Table 2, Petitioner has
`established sufficiently that wakelocks were well known at the time of the
`inventions. Id. at 27−28 (explaining that “an email application acquires a
`wakelock during background syncing of mailboxes” and “a social media
`application acquires a wakelock to run its service which communicates with
`a server to send and receive data”) (citing Ex. 1006, 271−272).
`Upon review of the Petition as a whole, we are not convinced that
`denial of institution is warranted.
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`C. Discretionary Denial Under 35 U.S.C. § 325(d)
`In determining whether to institute 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). The panel has
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`20
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`(cid:51)(cid:56)(cid:37)(cid:47)(cid:44)(cid:38)(cid:3)(cid:57)(cid:40)(cid:53)(cid:54)(cid:44)(cid:50)(cid:49)
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`IPR2018-01106
`Patent 9,516,127 B2
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`considered the factors set forth in Becton, Dickinson & Co. v. B. Braun
`Melsungen AG, Case IPR2017-01586, slip op. at 17−18 (Paper 8) (PTAB
`Dec. 15, 2017) (informative), and determined the factors do not weigh in
`favor of exercising discretion under § 325(d).
`Patent Owner argues that the Board should exercise its discretion to
`deny institution because “[d]uring prosecution of the ’127 Patent, Patent
`Owner submitted office actions from three other applications in the
`Backholm patent family” as items in Information Disclosure Statements
`(“IDS”). Prelim. Resp. 63−64 (citing Ex. 1002, 60, 386, 440;
`Exs. 2052−2054).
`However, the specific Backholm reference asserted by Petitioner,
`itself, was not submitted to the Office during prosecution of the ’127 patent,
`so the reference could not have been considered by the Office previously.
`In addition, Patent Owner does not provide any analysis indicating that the
`teachings relied upon by Petitioner were contained in those office actions
`from other Backholm applications, or point to any substantive discussion of
`those office actions by the Examiner during prosecution of the ’127 patent.
`Moreover, mere submission of a reference in an IDS is insufficient for
`purposes of exercising discretion under § 325(d). See Alcatel-Lucent USA v.
`Oyster Optics, LLC, Case IPR2018-00070, slip op. at 15 (Paper 14) (PTAB
`May 10, 2018). Accordingly, we decline to exercise our discretion under
`§ 325(d) to deny the Petition in this proceeding.
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`21
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`(cid:51)(cid:56)(cid:37)(cid:47)(cid:44)(cid:38)(cid:3)(cid:57)(cid:40)(cid:53)(cid:54)(cid:44)(cid:50)(cid:49)
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`IPR2018-01106
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`D. Claim Construction
`The instant Petition was filed May 21, 2018, prior to the effective date
`of the rule change that replaces the broadest reasonable interpretation
`(“BRI”) standard. See Changes to the Claim Construction Stand for
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
`Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (final rule) (“This rule is
`effective on November 13, 2018 and applies to all IPR, PGR and CBM
`petitions filed on or after the effective date.”). We, therefore, apply the BRI
`standard in this proceeding. Under the BRI standard, claim terms in an
`unexpired patent are given their broadest reasonable construction in light of
`the specification of the patent in which they appear. 37 C.F.R. § 42.100(b)
`(2017). Under the BRI standard, claim terms generally are given their
`ordinary and customary meaning, as would be understood by one of ordinary
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