Trials@uspto.gov
`571-272-7822
`
`
` Paper 71
`Entered: November 4, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZTE (USA), INC. and LG ELECTRONICS INC.,
`Petitioner,
`
`v.
`
`CYWEE GROUP LTD.,
`Patent Owner.
`
`IPR2019-00143
`IPR2019-012031
`Patent 8,441,438 B2
`
`
`
`
`
`
`
`
`
`Before PATRICK M. BOUCHER, KAMRAN JIVANI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge OGDEN.
`
`Opinion Dissenting filed by Administrative Patent Judge BOUCHER.
`
`OGDEN, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request on Rehearing of Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`1 We do not authorize the parties to use this style of caption.
`
`
`571-272-7822
`
`
` Paper 71
`Entered: November 4, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZTE (USA), INC. and LG ELECTRONICS INC.,
`Petitioner,
`
`v.
`
`CYWEE GROUP LTD.,
`Patent Owner.
`
`IPR2019-00143
`IPR2019-012031
`Patent 8,441,438 B2
`
`
`
`
`
`
`
`
`
`Before PATRICK M. BOUCHER, KAMRAN JIVANI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge OGDEN.
`
`Opinion Dissenting filed by Administrative Patent Judge BOUCHER.
`
`OGDEN, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request on Rehearing of Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`1 We do not authorize the parties to use this style of caption.
`
`
`
`IPR2019-00143
`IPR2019-01203
`Patent 8,441,438 B2
`
`
`INTRODUCTION
`
`On July 17, 2020, we entered an Decision (“Rehearing Decision” or
`“Reh’g Dec.,” Paper 50) granting the request of joined Petitioner LG
`Electronics Inc. (“LGE”) for rehearing (“LG’s Rehearing Request,”
`IPR2019-01203,2 Paper 14) of our Order (Paper 43) denying LGE’s requests
`made in a conference call with the panel on February 5, 2020. See Ex. 2022
`(transcript). 3
`Patent Owner CyWee Group Ltd. (“CyWee”) then requested rehearing
`(“CyWee’s Rehearing Request” or “Reh’g Req.,” Paper 52) of our Rehearing
`Decision. CyWee also requested Precedential Opinion Panel (POP) review
`(Paper 53; Exs. 2023, 2024, 3002), which the POP has denied. Paper 67.
`As background, CyWee filed its contingent Motion to Amend on
`August 9, 2019, asking the Board for preliminary guidance as to CyWee’s
`proposed substitute claims. Paper 19, 22. Our Preliminary Guidance, dated
`December 5, 2019, expressed our initial view that, based on the available
`record, CyWee had not met all the statutory and regulatory requirements for
`the proposed substitute claims, and that Petitioner ZTE (USA), Inc. (“ZTE”)
`had shown a reasonable likelihood that two of the proposed substitute claims
`were unpatentable. Paper 35, 3, 7. On December 17, 2019, we joined LGE to
`this proceeding, noting that LGE had agreed not to assume an active role in
`the IPR unless ZTE ceases to actively participate. Paper 36, 45–48. On
`
`
`2 LGE filed its Paper 14 in IPR2019-01203. All other citations in this
`Decision are to the record of IPR2019-00143.
`3 On March 26, 2020, LGE also requested Precedential Opinion Panel (POP)
`review of the Order (see Paper 47, Ex. 3001), which the POP denied on May
`12, 2020. Paper 48.
`
`
`
`2
`
`
`
`IPR2019-00143
`IPR2019-01203
`Patent 8,441,438 B2
`
`December 20, 2019, CyWee filed a contingent Revised Motion to Amend.
`Paper 38. ZTE responded by withdrawing its objections to the proposed
`substitute claims, and stated that it “does not challenge the patentability of
`the revised amended claims.” Paper 41, 1–2. ZTE stated that it “believes oral
`argument is not necessary and has reached an agreement with Patent Owner
`to have the validity of the original claims determined solely on current
`written submissions.” Id. at 2.
`In our Rehearing Decision, we determined that “the adversarial
`system is better served if we allow a Petitioner to raise [statutory, regulatory,
`or patentability] issues in response to CyWee’s Revised Motion to Amend.”
`Reh’g Dec. 8. Therefore, we held that LGE may present arguments and
`evidence, independently from ZTE, in response to CyWee’s Revised Motion
`to Amend, and that LGE may request an oral hearing limited solely to the
`issues raised in the Revised Motion to Amend. Id. at 9.
`For following reasons, we deny CyWee’s Rehearing Request.
`
`ANALYSIS
`
`The party challenging a decision in a request for rehearing bears the
`burden of showing the decision should be modified. 37 C.F.R. § 42.71(d)
`(2019). A request for rehearing “must specifically identify all matters the
`party believes the Board misapprehended or overlooked, and the place where
`each matter was previously addressed.” Id.
`In its Rehearing Request, CyWee contends the following: (1) that we
`abused our discretion by failing to follow Board precedent; (2) that LGE is
`judicially estopped from taking an active role in this IPR; (3) that the
`
`
`
`3
`
`
`
`IPR2019-00143
`IPR2019-01203
`Patent 8,441,438 B2
`
`decision in Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, IPR2018-
`00600, Paper 67, at 11 (PTAB July 6, 2020) (precedential) does not mandate
`the result in our Rehearing Decision; and (4) that our decision sets a
`dangerous precedent contrary to Congressional intent. Req. Reh’g 3–15. We
`address these arguments in turn.
`
`1. Whether We Abused Our Discretion by Failing to Follow
`Board Precedent.
`
`CyWee contends that our Rehearing Decision “is wholly unsupported
`by PTAB precedent,” and “[i]n every prior instance involving a time-barred
`petitioner, the joined petitioner was subject to severe limitations, akin to
`concessions made by LG[E] in its motion for joinder.” Reh’g Req. 4 (citing
`multiple non-precedential Board decisions). According to CyWee, the Board
`has never allowed “a time-barred petitioner who agreed to play a passive
`role in an IPR to assert new grounds—as opposed to new arguments—for
`unpatentability, nor to take new discovery and argue at an unwanted hearing
`positions the lead petitioner conceded after multiple rounds of claim
`amendments.” Id. at 5. CyWee argues that our Rehearing Decision “means
`that a second petitioner who committed to an understudy role can simply
`invoke the ‘adversarial process’ to undo a result the petitioner does not like,
`regardless of the burden it places on the other parties.” Id.
`These arguments do not persuade us that we abused our discretion.
`First, CyWee has not pointed to any precedent that prohibits us from
`allowing a joined petitioner to present arguments opposing a revised motion
`to amend, where the lead petitioner has declined to do so. Nor has CyWee
`explained how any of the cited Board decisions present a factual scenario
`
`
`
`4
`
`
`
`IPR2019-00143
`IPR2019-01203
`Patent 8,441,438 B2
`
`that is analogous to the one we face in this case. Further, we disagree that we
`have granted LGE the ability to undo any “result” in this inter partes review.
`We have not yet decided the propriety or patentability of the proposed
`substitute claims, and we must still opine on those issues in our Final
`Written Decision.
`
`2. Whether LGE Is Judicially Estopped from Taking an
`Active Role in this IPR
`
`CyWee argues that under the principles of judicial estoppel, LGE is
`estopped from taking an active role in this IPR. See Reh’g Req. 5–11 (citing
`New Hampshire v. Maine, 532 U.S. 742, 749 (2001); Minnesota Mining &
`Manufacturing Co. v. Chemque, Inc., 303 F.3d 1294, 1302 (Fed. Cir. 2002)).
`CyWee has not pointed to a place in the record where it has previously
`addressed this judicial estoppel argument. Thus, CyWee has not met its
`burden to show that our Rehearing Decision misapprehends or overlooks
`any previous argument about judicial estoppel. See 37 C.F.R. § 42.71(d).
`
`3. Whether Hunting Titan Mandates the Result of Our
`Rehearing Decision
`
`CyWee argues that Hunting Titan does not mandate the result of our
`Rehearing Decision. Reh’g Req. 11–14. According to CyWee, “[i]n Hunting
`Titan itself, the original petitioner was held to the specific positions that [it]
`advanced.” Id. at 12. CyWee contends that ZTE and LGE should likewise be
`held to positions they have previously advanced in the IPR, including LGE’s
`commitment to act in an understudy role. Id. at 12–13. CyWee also
`distinguishes Hunting Titan because it “did not involve a second petitioner,
`let alone a time-barred one.” Id. at 13.
`
`
`
`5
`
`
`
`IPR2019-00143
`IPR2019-01203
`Patent 8,441,438 B2
`
`
`CyWee’s arguments do not persuade us that we misapplied Hunting
`Titan. In our Rehearing Decision, we stated that, given ZTE’s decision not to
`oppose CyWee’s Revised Motion to Amend, this aspect of the trial no longer
`appears to be meaningfully adversarial. Reh’g Dec. 7. We cited statements
`from Hunting Titan relating to the importance of the adversarial process in
`evaluating proposed substitute claims for patentability. Id. at 7–8. We also
`noted that Hunting Titan identified certain “circumstances where the
`adversarial system fails to provide the Board with potential arguments for
`the unpatentability of the proposed substitute claims,” such as when “a
`petitioner chooses not to oppose the motion to amend.” Id. at 8 (quoting
`Hunting Titan, IPR2018-00600, Paper 67 at 12–13). The POP stated that in
`such circumstances, “the Board may raise a ground of unpatentability that a
`petitioner did not advance.” Id. (quoting Hunting Titan, IPR2018-00600,
`Paper 67 at 13).
`However, as CyWee acknowledges, Hunting Titan stated that the
`Board should only raise grounds of unpatentability sua sponte in “rare
`circumstances.” Id. at 12 (quoting Hunting Titan, IPR2018-00600, Paper 67
`at 13). In light of this guidance, we chose to avoid the unnecessary prospect
`of raising sua sponte patentability issues in this case,4 because unlike in
`
`
`4 In our Rehearing Decision, we pointed out one potentially unresolved issue
`as to whether proposed claim 22 introduces new matter. See Reh’g Dec. 8.
`But as CyWee correctly points out, our Preliminary Guidance suggested that
`the added limitations in proposed substitute claim 22 find support in the non-
`provisional application. Reh’g Req. 14 (citing Paper 35, 6). Because we
`allow LGE to oppose the Revised Motion to Amend, we will have the
`benefit, going forward, of an adversarial process to identify and weed out
`potential issues with regard to the proposed substitute claims.
`6
`
`
`
`
`
`IPR2019-00143
`IPR2019-01203
`Patent 8,441,438 B2
`
`Hunting Titan, there is a joined petitioner willing to take on the role of the
`adversarial party with respect to the Revised Motion to Amend. See id. This
`is consistent with the principles outlined in Hunting Titan.
`
`4. Whether Our Rehearing Decision Sets a Dangerous
`Precedent Contrary to Congressional Intent.
`
`CyWee argues that in establishing the legislative framework for inter
`partes reviews, Congress intended to create “a less costly[,] more
`streamlined way of resolving patent disputes quickly and efficiently,” which
`was also “a driving force behind the one-year time bar limitation.” Reh’g
`Req. 15. According to CyWee, our Rehearing Decision violates these
`principles because it adds additional cost and delay, and disincentivizes the
`lead parties from narrowing of issues when there is a joined petitioner. Id.
`We do not find this argument persuasive. CyWee does not cite to any
`statute or legislative history that would be inconsistent with the result of our
`Rehearing Decision. Also, our decision allowing LGE to oppose the Revised
`Motion to Amend has not, itself, delayed this proceeding. The case is still
`active with unresolved issues, and we will not decide the propriety or
`patentability of CyWee’s proposed substitute claims until we issue our Final
`Written Decision.
`For the above reasons, CyWee has not met its burden so show that our
`Rehearing Decision should be modified, and it is therefore denied.
`
`ORDER
`
`It is
`ORDERED that CyWee’s Rehearing Request is denied.
`
`
`
`7
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
` Paper 71
`Entered: November 4, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZTE (USA), INC. and LG ELECTRONICS INC.,
`Petitioner,
`
`v.
`
`CYWEE GROUP LTD.,
`Patent Owner.
`
`IPR2019-00143
`IPR2019-01203
`Patent 8,441,438 B2
`
`
`
`
`
`
`
`
`
`Before PATRICK M. BOUCHER, KAMRAN JIVANI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge, dissenting.
`
` I
`
` respectfully dissent from the majority’s decision denying CyWee’s
`Request for Rehearing. For the reasons I previously expressed, I would hold
`LGE to the unsolicited concessions it made in its motion to join this
`proceeding as an otherwise time-barred petitioner. See Paper 50 (Boucher,
`APJ, dissenting). Especially because those concessions weighed in our
`consideration of LGE’s joinder motion, and because the other parties have
`relied on them in the development of the trial, I would refrain from now
`
`
`
`IPR2019-00143
`IPR2019-01203
`Patent 8,441,438 B2
`
`exercising discretion to disregard them. I would accordingly grant CyWee’s
`Request for Rehearing to hold LGE to the limited scope of participation it
`requested with its original filing.
`
`
`
`2
`
`
`
`IPR2019-00143
`IPR2019-01203
`Patent 8,441,438 B2
`
`For PETITIONER:
`
`Dion M. Bregman
`Collin W. Park
`Alexander B. Stein
`Andrew V. Devkar
`Jeremy Peterson
`Adam Brooke
`MORGAN LEWIS & BOCKIUS LLP
`dion.bregman@morganlewis.com
`collin.park@morganlewis.com
`alexander.stein@morganlewis.com
`andrew.devkar@morganlewis.com
`jpeterson@morganlewis.com
`adam.brooke@morganlewis.com
`
`Steve Moore
`ZHONG LUN LAW FIRM
`stevemoore@zhonglun.com
`
`Howard Wisnia
`howard@wisnialaw.com
`
`
`For PATENT OWNER:
`
`Jay P. Kesan
`DIMURO GINSBERG PC–DGKEYIP GROUP
`jay@jaykesan.com
`
`
`
`
`3
`
`
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