Trials@uspto.gov
`571-272-7822
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` Paper 16
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` Entered: October 13, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., SAMSUNG RESEARCH AMERICA, INC.,
`Petitioner,
`
`v.
`
`DYNAMICS, INC.,
`Patent Owner.
`_______________
`
`IPR2020-00504
`Patent 10,223,631 B2
`_______________
`
`Before TREVOR M. JEFFERSON, GEORGIANNA W. BRADEN, and
`JON M. JURGOVAN, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request on Rehearing of Decision Granting
`Institution of Inter Partes Review
`37 C.F.R. § 42.71(d)
`
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`571-272-7822
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` Paper 16
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` Entered: October 13, 2020
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., SAMSUNG RESEARCH AMERICA, INC.,
`Petitioner,
`
`v.
`
`DYNAMICS, INC.,
`Patent Owner.
`_______________
`
`IPR2020-00504
`Patent 10,223,631 B2
`_______________
`
`Before TREVOR M. JEFFERSON, GEORGIANNA W. BRADEN, and
`JON M. JURGOVAN, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request on Rehearing of Decision Granting
`Institution of Inter Partes Review
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`IPR2020-00504
`Patent 10,223,631 B2
`
`INTRODUCTION
`I.
`Petitioner, Samsung Electronics Co., Ltd., Samsung Electronics
`America, Inc., and Samsung Research America, Inc., filed a Petition
`requesting inter partes review of claims 1–7, 9–13, 19, 21, and 22 of
`U.S. Patent No. 10,223,631 B2 (Ex. 1001, the “’631 Patent”). Paper 1
`(“Petition” or “Pet.”). Patent Owner, Dynamics Inc., filed a Preliminary
`Response to the Petition. Paper 8 (“Prelim. Resp.”). Per our email
`authorization (Ex. 3001), Petitioner filed a Reply to Patent Owner’s
`Preliminary Response. Paper 9 (“Pet. Reply”). Patent Owner filed a Sur-
`Reply to Petitioner’s Reply. Paper 10 (“PO Sur-Reply”).
`We granted Petitioner’s request to institute trial. Paper 11 (“Dec.” or
`“Institution Decision”). In our Institution Decision, we evaluated the factors
`in Apple v. Fintiv, IPR2020-00016, Paper 11 (PTAB March 20, 2020)
`(precedential), which were briefed in the Reply and Sur-Reply, and we
`determined the factors weighed against exercising our discretion to deny
`institution of inter partes review under 35 U.S.C. § 314(a).
`Patent Owner filed a Request for Rehearing of our Institution
`Decision, asserting that some of the Apple v. Fintiv factors were evaluated
`incorrectly. Paper 13 (“Reh’g Req.” or “Request for Rehearing”). For the
`reasons below, we deny the Request for Rehearing.
`
`LEGAL STANDARDS
`II.
`“The burden of showing a decision should be modified lies with the
`party challenging the decision,” and the challenging party “must specifically
`identify all matters the party believes the Board misapprehended or
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`IPR2020-00504
`Patent 10,223,631 B2
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`overlooked, and the place where each matter was previously addressed” in a
`paper of record. 37 C.F.R. § 42.71(d) (2019) (emphasis added). When
`rehearing a decision on petition, the Board will review the decision for an
`abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may
`be determined if a decision: (1) is clearly unreasonable, arbitrary, or
`fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly
`erroneous fact findings; or (4) involves a record that contains no evidence on
`which the Board could rationally base its decision. Redline Detection, LLC
`v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal
`citations omitted).
`Patent Owner contends we misapprehended or overlooked certain
`facts in analyzing Apple v. Fintiv factors 1, 3 and 4, which Patent Owner
`contends favor exercising our discretion to deny institution of inter partes
`review. Req. Reh’g 1–4. We address Patent Owner’s arguments below in
`correspondence with each argued Apple v. Fintiv factor.
`Apple v. Fintiv Factor 1 – Whether a Stay Exists or is Likely to be
`A.
`Granted if a Proceeding is Instituted
`Patent Owner argues “[t]he Board’s factor 1 analysis relied solely on
`the fact that there is a stay in the district court proceeding, and ignored the
`duplications of efforts at the pending ITC proceeding for factor 1.” Req.
`Reh’g 6. We disagree with Patent Owner’s characterization of our analysis
`under Apple v. Fintiv factor 1. For factor 1, we merely stated that the district
`court’s stay weighed against exercising discretion to deny institution, and
`that the duplicative efforts with the ITC proceeding must be considered
`further in Apple v. Fintiv factors 2 and 4. Dec. 9–10.
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`IPR2020-00504
`Patent 10,223,631 B2
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`Patent Owner argues “[g]iven that trial has already begun, Fintiv
`factor 1 should have been determined in favor of denial.” Req. Reh’g 7.
`But the proximity of the trial date to the Board’s projected statutory deadline
`is exactly what is considered under Apple v. Fintiv factor 2. See Dec. 10.
`Likewise, Patent Owner argues “[r]elitigating the exact same issues
`petitioner asserted in its final invalidity contentions at the ITC cannot be
`considered to be efficient, nor a sign of ‘integrity of the system.’” Req.
`Reh’g. 6. This, however, is considered under Apple v. Fintiv factor 4. See
`Dec. 11–12.
`In sum, Patent Owner argues we should have considered Apple v.
`Fintiv factors 2 and 4 under factor 1. See Req. Reh’g 6–7. We do not agree
`with this contention. Patent Owner does not show we misapprehended or
`overlooked any fact, evidence, or legal issue in rendering our Institution
`Decision, regardless of the Apple v. Fintiv factor under which it was
`considered. In any case, we considered all factors, including factors 1, 3,
`and 4, in concluding that the balance of the Apple v. Fintiv factors weighed
`against exercising discretion to deny institution. Thus, Patent Owner has not
`demonstrated we misapprehended or overlooked any fact in our Apple v.
`Fintiv factor 1 analysis.
`Factor 3 – Investment in the Parallel Proceeding by the Court and
`B.
`Parties
`Patent Owner argues that our analysis of Apple v. Fintiv factor 3 was
`clearly erroneous because “it was based, at least in part, on the number of
`papers filed in the present proceeding as compared to ‘the Fintiv or the Sand
`Revolution case.’” Req. Reh’g 8 (citing Dec. 11). We did not, however,
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`IPR2020-00504
`Patent 10,223,631 B2
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`base our Apple v. Fintiv factor 3 analysis of the number of papers filed
`relative to these cases, but on the investments made by the ITC and parties
`as demonstrated by the evidence of record. Dec. 11–12. The parties’ filings
`reflect these investments.
`
`Patent Owner further argues “nothing in the precedential opinion on
`factor 3 concerns the investment by the parties in the present IPR.” Req.
`Reh’g 8 (citing Apple v. Fintiv, Paper 11 at 9). Apple v. Fintiv states,
`however, that “[t]he investment factor is related to the trial date factor, in
`that more work completed by the parties and court in the parallel proceeding
`tends to support the arguments that the parallel proceeding is more
`advanced, a stay may be less likely, and instituting would lead to duplicative
`costs.” Apple v. Fintiv, Paper 11 at 10. In other words, a comparison of the
`investments made in each proceeding indicates which proceeding is more
`advanced.
`
`Patent Owner also argues “the Panel completely ignored the portion of
`the factor 3 analysis related to the ‘matter of petition timing,’ . . . which
`further favors denial.” Req. Reh’g 8 (citing Apple v. Fintiv, Paper 11 at 11).
`Apple v. Fintiv factor 3 states, however, that “the parties should explain facts
`relevant to timing.” See Apple v. Fintiv, IPR2020-00019, Paper 11 at 11.
`Patent Owner contends Petitioner became aware of the asserted claims on
`July 15, 2019. Req. Reh’g 11. Yet Patent Owner fails to identify any
`evidence in the record to support this date, nor has Patent Owner provided
`sufficient information to explain why Petitioner would have known of the
`asserted claims on this date. In this regard, we note that attorney argument
`is not evidence. Elbit Systems of America, LLC v. Thales Visionix, Inc., 881
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`IPR2020-00504
`Patent 10,223,631 B2
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`F.3d 1354, 1359 (Fed. Cir. 2018) (citing Icon Health & Fitness, Inc. v.
`Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017)).
`
`Patent Owner then argues the Reply and Sur-Reply should not be
`considered as investments in the preliminary proceeding for this case
`because they “did not include any substantive patent law analysis pertinent
`to resolution of the IPR, if instituted.” Req. Reh’g 9. Patent Owner points
`to no authority that the investments in the Reply and Sur-Reply should not
`be considered in the factor 3 analysis.
`
`Patent Owner makes numerous assertions that the investment in the
`parallel ITC proceeding was greater than that in the present inter partes
`review. Req. Reh’g 9–11. Patent Owner identifies some investments
`supported by evidence in the record and others that are not. For example,
`Patent Owner does not indicate where in the record the listing of depositions
`and locations was presented before the request for rehearing. Id. at 10. A
`request for rehearing is not an opportunity to supplement the record by
`presenting new information and arguments without a showing of good cause,
`which has not been made here. See Huawei Device Co., Ltd. v. Optis
`Cellular Tech., LLC, IPR2018-00816, Paper 19 at 4 (PTAB Jan. 8, 2019)
`(precedential). Furthermore, as noted, attorney argument and assertions do
`not constitute evidence. See Elbit, supra.
`Accordingly, Patent Owner has not demonstrated that we
`misapprehended or overlooked any fact in our Apple v. Fintiv factor 3
`analysis.
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`IPR2020-00504
`Patent 10,223,631 B2
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`C.
`
`Factor 4 – Overlap Between Issues Raised in the Petition and
`in the Parallel Proceeding
`Patent Owner contends “[our] determination that [Apple v. Fintiv]
`factor 4 weighs against denial of institution was clearly erroneous based on a
`misapprehension of the analysis required by the [Apple v. Fintiv] Board and
`overlooking facts that weigh in favor of denial.” Req. Reh’g 12.
`Specifically, Patent Owner contends Apple v. Fintiv states that “if a petition
`involves the same prior art challenges but challenges claims in addition to
`those that are challenged in the district court, it may still be inefficient to
`proceed because the district court may resolve the validity of enough
`overlapping claims to resolve key issues in the petition.” Req. Reh’g 12
`(citing Apple v. Fintiv, IPR2020-00016, Paper 11 at 13 (emphasis omitted)).
`Patent Owner contends we did not consider whether “‘enough overlapping
`claims [would] resolve key issues in the petition’” but instead “made a
`simple black and white comparison of the claims at issue at the ITC versus
`the claims at issue in the present IPR, and finding that there was not a 100%
`match, found factor 4 in favor of institution.” Id. (quoting Apple v. Fintiv,
`IPR2020-00016, Paper 11 at 13).
`Patent Owner incorrectly characterizes our Apple v. Fintiv factor 4
`analysis. Req. Reh’g 12–14. The “key issue” that Patent Owner identified
`in its briefing is the assertion that challenging claims 1, 4, 6, and 22 in the
`’631 Patent instead of the dependent and independent claims 1–7, 9–13, 19,
`21, and 22 of the ’631 Patent in this inter partes review “‘indirectly
`addresses the patentability of ‘enough’ overlapping claims’” in relation to
`Apple v. Fintiv factor 1. See Patent Owner’s Sur-Reply, Paper 10 at 4, 8–10.
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`IPR2020-00504
`Patent 10,223,631 B2
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`Patent Owner gave no reasoning to explain this conclusion. Id. As we
`explained in our Institution Decision, the ITC proceeding will not resolve
`the parties’ dispute concerning patentability of claims 2, 3, 5, 7, 9–13, 19,
`and 21, which recite different and additional elements than the claims in the
`ITC proceeding. Dec. 11–12. We further explained that the ITC proceeding
`will not resolve the parties’ dispute concerning dependent claims that
`address processor limitations (claims 8 and 9) and RFID receiver limitations
`(claims 10 and 11). Id. (citing Ex. 1001, 15:3–14). Thus, in our Institution
`Decision, we assessed the significance of the non-overlapping claims in
`relation to the overlapping claims, and found in the facts of this case that the
`non-overlapping claims were sufficient to weigh in favor of institution when
`the parties’ dispute over those claims would not be resolved in either the ITC
`proceeding or the stayed district court case. Dec. 11–12.
`Patent Owner next argues “the claims asserted in the ITC proceeding
`were 100% identical to the claims challenged in the present proceeding
`throughout fact and expert discovery, so all of those issues have already
`been fully litigated between the parties.” Req. Reh’g 12. Patent Owner
`further argues “the claims asserted in these related IPRs matched 100% with
`the claims asserted in the ITC proceeding when the petitions were filed with
`the Board.” Id. at 12–13. Patent Owner states Petitioner complained that
`there were too many claims in the case for a one-week trial before the ITC,
`and under direction from the ITC judge, Patent Owner withdrew a number of
`dependent claims from the ITC investigation. Id. at 13. Patent Owner
`argues Petitioner should not “be rewarded by being permitted to use that
`difference in scope as the basis for the institution.” Id. Patent Owner
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`IPR2020-00504
`Patent 10,223,631 B2
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`contends we misapprehended or overlooked “that the ITC proceeding will
`resolve patentability issues of “enough overlapping claims to resolve key
`issues in the petition” because the ITC proceeding involves the same
`independent claim, the same prior art challenges, and the same parties.” Id.
`For reasons already explained, we do not agree we misapprehended or
`overlooked the patentability issues to be resolved in the ITC proceeding.
`The ITC proceeding involves the claims 1, 4, 6, and 22 of the ’631 Patent so
`the patentability of the claims 2, 3, 5, 7, 9–13, 19, and 21 will not be
`resolved in that proceeding. Whatever the history between the parties as to
`why the non-overlapping claims were litigated and then withdrawn from the
`ITC proceeding, seemingly with Patent Owner’s acquiescence, the fact is the
`non-overlapping claims remain in the ’631 Patent and Petitioner has
`challenged their patentability in this proceeding. Although Patent Owner
`asserts “resolution of the validity and infringement issues by Judge Elliot at
`the ITC are substantially likely to resolve the dispute between the parties”
`(Req. Reh’g 14), this is mere speculation, and Patent Owner points to no
`evidence to support its assertion. In any case, Patent Owner’s assertion does
`not show we misapprehended or overlooked any fact in rendering our
`Institution Decision.
`Patent Owner further argues “the Panel overlooked the fact that ITC
`trial has already commenced, that the ITC initial determination is scheduled
`to issue March 16, 2021, and that the target date for completion of the
`investigation is July 16, 2021, which facts were provided via e-mail prior to
`the issuance of the Decision.” Req. Reh’g 14 (citing Ex. 2027; Ex. 2028).
`The evidence Patent Owner presented for the Request for Rehearing,
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`IPR2020-00504
`Patent 10,223,631 B2
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`however, shows the ITC trial is scheduled for November 16–20, 2020, so
`Patent Owner is incorrect in asserting the ITC trial has begun. See Ex. 2028.
`That the initial determination is scheduled for March 16, 2021, and the target
`date for completion of the investigation is July 16, 2021, means a final
`written decision in this proceeding will be entered before any exclusion
`order in the ITC proceeding becomes effective.
`Accordingly, Patent Owner has not demonstrated we misapprehended
`or overlooked any fact in our Apple v. Fintiv factor 4 analysis.
`
`III. CONCLUSION
`For the reasons expressed above, we determine Patent Owner has
`failed to demonstrate error or an abuse of discretion in our Institution
`Decision. Accordingly, we decline to change our Institution Decision and,
`thus, deny Patent Owner’s Request for Rehearing.
`
`IV. ORDER
`For the reasons given, it is:
`ORDERED Patent Owner’s Request for Rehearing of the Institution
`Decision is denied.
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`IPR2020-00504
`Patent 10,223,631 B2
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`For PETITIONER:
`
`F. Christopher Mizzo
`Gregory S. Arovas
`James E. Marina
`Alan Rabinowitz
`KIRKLAND & ELLIS LLP
`Chris.mizzo@kirkland.com
`Greg.arovas@kirkland.com
`James.marina@kirkland.com
`Alan.rabinowitz@kirkland.com
`
`
`For PATENT OWNER:
`
`Robert W. Morris
`ECKERT SEAMANS CHERIN & MELLOTT, LLC
`rwmorris@eckertseamans.com
`
`Michael V. Messinger
`SHAMI MESSINGER PLLC
`mike@shamimessinger.com
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`11
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