Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Date: February 5, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`AMERISTAR PERIMETER SECURITY USA, INC., ASSA ABLOY INC.,
`AND ASSA ABLOY AB,
`Petitioner,
`v.
`RSA PROTECTIVE TECHNOLOGIES, LLC,
`Patent Owner.
`
`IPR2020-01369
`Patent 8,215,865 B2
`
`
`
`
`
`Before KEN B. BARRETT, JOHN P. PINKERTON, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`MAYBERRY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`INTRODUCTION
`I.
`A. Background and Summary
`Ameristar Perimeter Security USA Inc., ASSA ABLOY Inc., and
`ASSA ABLOY AB (collectively, “Petitioner”), filed a Petition (“Pet.”)
`requesting inter partes review of claims 1–35 (the “Challenged Claims”) of
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 11
`Date: February 5, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`AMERISTAR PERIMETER SECURITY USA, INC., ASSA ABLOY INC.,
`AND ASSA ABLOY AB,
`Petitioner,
`v.
`RSA PROTECTIVE TECHNOLOGIES, LLC,
`Patent Owner.
`
`IPR2020-01369
`Patent 8,215,865 B2
`
`
`
`
`
`Before KEN B. BARRETT, JOHN P. PINKERTON, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`MAYBERRY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`INTRODUCTION
`I.
`A. Background and Summary
`Ameristar Perimeter Security USA Inc., ASSA ABLOY Inc., and
`ASSA ABLOY AB (collectively, “Petitioner”), filed a Petition (“Pet.”)
`requesting inter partes review of claims 1–35 (the “Challenged Claims”) of
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-01369
`Patent 8,215,865 B2
`U.S. Patent No. 8,215,865 B2 (Ex. 1001, the “’865 patent”). Paper 3. RSA
`Protective Technologies, LLC (“Patent Owner”), filed a Preliminary
`Response (“Prelim. Resp.”) to the Petition. Paper 9.
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020) (permitting the
`Board to institute trial on behalf of the Director). To institute an inter partes
`review, we must determine that the information presented in the Petition
`shows “a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`For the reasons set forth below, upon considering the Petition, Preliminary
`Response, and evidence of record, we institute an inter partes review.
`B. Real Parties in Interest
`Petitioner identifies Ameristar Perimeter Security USA Inc., ASSA
`ABLOY Inc., and ASSA ABLOY AB as real parties-in-interest. Pet. 1.
`Patent Owner identifies itself as the real party-in-interest. Paper 6, 1.
`C. Related Matters
`Patent Owner lists four open litigations, two stayed litigations, and
`three dismissed litigations related to the ’865 patent, including an open
`litigation involving Petitioner and a stayed litigation involving Los Angeles
`International Airport (“LAX”). Paper 6, 1–2; see also Pet. 1 (“In the District
`of Delaware (D. Del.), Ameristar Perimeter Security USA Inc. and Barrier1
`Systems, Inc. filed a declaratory judgment action (case nos.: 1:20-cv-00340,
`1:20-cv-00341) on March 6, 2020[,] involving the ’865 [p]atent.”), id.
`(identifying the LAX litigation). Other open litigations include a matter
`involving Delta Scientific Corporation in the Central District of California,
`filed July 12, 2019, and a matter involving Gibraltar Perimeter Security, LP
`in the District of Delaware, filed August 26, 2020.
`
`2
`
`
`
`IPR2020-01369
`Patent 8,215,865 B2
`The parties indicate that the ’865 patent was challenged in IPR2019-
`01161, IPR2019-01162, and ex parte reexamination control number
`90/014,483. Paper 6, 2; Pet. 2.
`D. ‘865 Patent
`The ’865 patent, titled “Anti-Ram System and Method of
`Installation,” issued July 10, 2012, from an application filed January 27,
`2010. Ex. 1001, codes (54), (45), (22). The ’865 patent is directed “to the
`assembly and installation of bollard systems for use in protecting building
`and other structures from being rammed by vehicles.” Id. at 1:40–42. We
`reproduce Figure 3 from the ’865 patent below.
`
`
`Figure 3 depicts “an embodiment of th[e] invention with four bollards
`mounted on the framework for the pad or base of the anti-ram system.”
`Ex. 1001, 6:1–3. Bollards 14 are mounted on framework 23 for the base,
`which includes transversely-extending tubular members 24, longitudinally-
`extending tubular members 26, and longitudinally-extending angular
`members 28. Id. at 7:51–55. Apertures 31 allow the tubular members to be
`filled with concrete or other material to add strength and weight to the base.
`
`3
`
`
`
`IPR2020-01369
`Patent 8,215,865 B2
`Id. at 8:7–10. A rebar cage may be added to the base framework. Id. at
`8:11–16, Fig. 4.
`With the bollard system of the ’865 patent, “the striking forces from
`the crash vehicle are transmitted from the bollard down to the shallow mount
`pad (5[ inches] to 14[ inches] in depth) in a way that is different from
`standard deep trench foundations (4[ feet] to 6[ feet]).” Ex. 1001, 2:42–45.
`Also, “[t]he shallow base system makes for a much more effective and
`efficient load transfer into the soil which reduces the overall volume of
`displacement of soil by the base, as compared to the standard deep trench
`foundation systems.” Id. at 2:49–52. “In the shallow mount bollard system
`of [the ’865 patent], the resistive forces are all at the base of the bollard (at
`the top of the trench) and therefore reduce the likelihood of the bollard
`rotating and vehicle breaching the security system.” Id. at 2:60–64.
`E. Illustrative Claims
`Of the Challenged Claims, claims 1, 16, and 33 are independent
`claims. Claim 1, reproduced below, are representative.
`1. A bollard structure comprising:
`at least one bollard; and
`a base comprising opposed ends and a plurality of
`structural members which intersect and are tied together, for each
`bollard of the bollard structure at least one first structural
`member extending from a first of the opposed ends of the base to
`a second of the opposed ends of the base in a first direction
`intersecting with the opposed ends, and at least one structural
`member extending to intersect with the at least one first structural
`member;
`each bollard being secured to at least one of the at least
`one first structural member and the at least one structural member
`of the base for the respective bollard and extending upwardly
`from the base so as to transmit forces applied to the at least one
`bollard to the base;
`
`4
`
`
`
`IPR2020-01369
`Patent 8,215,865 B2
`wherein the base is configured to be mounted in a shallow
`excavation with the at least one bollard extending above grade;
`and
`
`wherein the at least one first structural member or the at
`least one structural member or both are configured or tied
`together to retain within the base supporting media introduced
`into the base when the base is mounted in the excavation such
`that the rotation is resisted of a bollard or bollards and the base
`from an impact against the bollard or bollards.
`Ex. 1001, 9:17–41. Claim 16 is similar to claim 1 and recites “a
`plurality of bollards.” Id. at 10:5–31. Claim 33 is similar to claims 1
`and 16, but adds the requirement that “at least one of the plurality of
`members that extend parallel to the ends of the base extending between
`a structural member to which a first bollard is secured and a structural
`member to which a second bollard adjacent to the first bollard is
`secured.” Id. at 11:8–12:13.
`F. Prior Art and Asserted Grounds
`Petitioner asserts that the Challenged Claims are unpatentable based
`on two grounds:
`Claim(s) Challenged
`1–4, 12–20, 28–35
`1–35
`
`35 U.S.C. §
`103
`103
`
`References/Basis
`Sniedze,1 Masuda2
`Sniedze, Masuda, Le Clercq3
`
`
`1 Sniedze, AU 200071449 A1, published May 10, 2001 (Ex. 1005,
`“Sniedze”).
`2 Masuda, JP 2002-115324, published April 19, 2002 (Ex. 1007, “Masuda”).
`Ex. 1007 is an English translation of Ex. 1006. See Ex. 1007, 1 (providing a
`certification of translation), Ex. 1006 (providing Japanese version of
`Masuda).
`3 Le Clercq, US 4,018,055, issued April 19, 1977 (Ex. 1008, “Le Clercq”).
`
`5
`
`
`
`IPR2020-01369
`Patent 8,215,865 B2
`Petitioner relies on declaration testimony of Mr. Donald L. Moffett
`(Ex. 1003) in support of these grounds. See Ex. 1004 (providing
`Mr. Moffett’s curriculum vitae).
`The following subsections provide a brief description of the asserted
`prior art references.
`1. Sniedze
`Sniedze, titled “An Energy Absorbing Safety Bollard,” published
`May 10, 2001. Ex. 1005, codes (54), (43). Sneidze is directed “to an energy
`absorbing safety bollard . . . that is designed to absorb a significant
`percentage of the energy” of a vehicle impact. Id. at 6:2–4.4
`We reproduce an annotated version of Sniedze’s Figure 4, below.
`
`
`Pet. 22. Figure 4 depicts “a perspective view of a safety bollard,” with
`annotations added by Petitioner to identify anchor I-beams. Ex. 1005, 9:3.
`“[B]ars 26 [are designed to] deform and buckle under an impact,” and major
`member 22, depicted as an I-beam, is designed to “remain[] relatively
`
`
`4 We use the pagination indicate at the bottom, center of the pages of Exhibit
`1005 when citing the reference.
`
`6
`
`
`
`IPR2020-01369
`Patent 8,215,865 B2
`unchanged” from an impact. Id. at 10:26–31. “This [design] ensures that a
`person . . . behind the member 22 is relatively protected.” Id. at 10:31–11:1.
`“I-beam 22 may be fixedly connected to anchor 28 defined by two
`angled arms 30 and 32 extending in a direction away [from] the expected
`impact.” Ex. 1005, 11:1–3. The beams that form the embodiment of
`Figure 4 may be “co-located with bores in the concrete base.” Id. at 11:7–8;
`see id. at Fig. 1 (depicting base 18), 12:25–13:10 (describing the base).
`We reproduce annotated versions of Sniedze’s Figures 11 and 12,
`below.
`
`
`Pet. 21. Figure 11, at left, and Figure 12, at right, depict an embodiment of
`Sniedze’s invention where corrugated wall 56 forms chambers that absorb
`energy impact, with annotations identifying major member 22, corrugated
`wall 56, and the bollard. Ex. 1005, 12:4–6. “The corrugations provide for
`chambers that by their configuration absorb energy” following a vehicle
`impact. Id. at 12:6–7. The embodiment of Figures 11 and 12 is attached to
`anchor 60. Id. at 12:7–12.
`2. Masuda
`Masuda, titled “Footer Unit, Column-Integrated Column Footer
`Securing Base Structure Using Said Column Footer Unit, and Construction
`
`7
`
`
`
`IPR2020-01369
`Patent 8,215,865 B2
`Method Thereof,” published April 19, 2002. Ex. 1007, codes (54), (43).
`Masuda is directed to “foundation structure that is suitable as a foundation
`for a building such as a steel-frame home . . . where the design has freedom
`in response to the state of the construction site, and where no reduction in
`strength is caused by the column beam junction portion.” Id. at ¶ 1.
` We reproduce annotated versions of Masuda’s Figures 1 and 6,
`below.
`
`
`
`8
`
`
`
`IPR2020-01369
`Patent 8,215,865 B2
`
`
`Pet. 23, 25. Figure 1 depicts “a plan view depicting transparently a column-
`integrated column footer securing foundation structure” and Figure 6 depicts
`“the state of the footer excavation into which the column footer unit has
`been delivered.” Ex. 1007, 9. Annotations identify structural components
`and emphasize the beam structure of the footer.
`As depicted in Figure 1, underground beam 2 connects to column
`footer unit 1. Ex. 1007 ¶ 20. Underground beam 2 is configured as an H-
`beam or I-beam and is made of steel. Id. at ¶ 25. Web 23 is perpendicular
`to top flange 21 and bottom flange 22 of beam 2. Id.; see also id. at Fig. 1
`(depicting beam 2 interfacing footer unit 1 in the enlarged inset shown in the
`figure).
`The end portions of top flange 21, bottom flange 22, and web 23
`connect to diaphragm 11, base plate 12, and web 13 of column footer unit 1
`through splices 3, forming column footer beam frame F. Ex. 1007 ¶ 27.
`Column footer 1 includes column 10, which is divide into upper column 10a
`and a lower column 10b by diaphragm 11. Id. at ¶ 21. Base plate 12
`attaches to the bottom end portion of lower column 10b. Id.
`
`9
`
`
`
`IPR2020-01369
`Patent 8,215,865 B2
`Within an excavation, concrete 7 is added to the excavation,
`integrating the concrete with column footer beam frame F into a single unit
`(column-integrated column securing foundation structure S). Ex. 1007 ¶ 20.
`“[F]ooter excavation 6 depth is shallow.” Id. at ¶ 36. When completed,
`concrete covers frame F such that column 10 protrudes upward. Id. at ¶ 45.
`3. Le Clercq
`Le Clercq, titled “Steel Caissons,” issued April 19, 1977. Ex. 1008,
`codes (54), (45). Le Clercq is directed to “steel caissons for use in the
`construction of posts (columns) or piles.” Id. at 1:5–7.
`We reproduce Le Clercq’s Figures 4 and 6, below.
`
`
`
`
`Figures 4 and 6 depict sectional views of caissons. Ex. 1008, 1:41–45. A
`caisson is made of steel sectional components, connected by weld bead 7.
`Id. at 1:65–68, 2:16–20. Bolts 3 are welded perpendicular to the steel
`sectional components and concrete reinforcements 4 are welded to the ends
`
`10
`
`
`
`IPR2020-01369
`Patent 8,215,865 B2
`of bolts 3. Id. at 1:54–59. The caissons are filled with concrete 14. Id. at
`2:26.
`“The caissons can be . . . positioned in shafts formed in the ground, so
`as to serve as supports for basement and/or above-ground structures, . . .
`rammed into the ground and then filled with concrete, or . . . simply used as
`columns.” Ex. 1008, 1:16–22.
`
`
`II. PROCEDURAL CONSIDERATIONS
`A. Our Discretion under 35 U.S.C. § 314(a)
`The Board has discretion not to institute an inter partes review. See
`35 U.S.C. § 314(a) (authorizing institution of an inter partes review under
`particular circumstances, but not requiring institution under any
`circumstances); 37 C.F.R. § 42.108(a) (stating “the Board may authorize the
`review to proceed”) (emphasis added); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is
`a matter committed to the Patent Office’s discretion.”); Harmonic Inc. v.
`Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under
`§ 314(a), “the PTO is permitted, but never compelled, to institute an IPR
`proceeding”).
`Patent Owner asks us to exercise discretion under our precedential
`decisions in General Plastic Indus. Co. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential) (“General
`Plastic”), and Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB
`Mar. 20, 2020) (precedential) (“Fintiv I”), to deny the Petition. Prelim.
`Resp. 36–46. We address Patent Owner’s arguments below.
`
`11
`
`
`
`IPR2020-01369
`Patent 8,215,865 B2
`1. General Plastic
`General Plastic provides a non-exhaustive list of factors the Board
`considers when multiple petitions have been filed directed to the same patent
`and, particularly, when one petition is filed after another petition—a follow-
`on petition. General Plastic, Paper 19 at 15–16. These factors include:
`1. whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
`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.
`General Plastic at 16.
`a) Factor 1. whether the same petitioner previously filed a
`petition directed to the same claims of the same patent.
`As an initial point, the application of the General Plastic factors is not
`limited to the situation where the same petitioner files a follow-on petition.
`Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 at 2
`(PTAB Apr. 2, 2019) (precedential) (“Valve Corp.”). “[W]hen different
`petitioners challenge the same patent, we consider any relationship between
`
`12
`
`
`
`IPR2020-01369
`Patent 8,215,865 B2
`those petitioners when weighing the General Plastic factors.” Id.; see also
`id. at 10 (finding a “significant relationship” between the different parties
`that filed the petitions at issue).
`Patent Owner identifies two previous petitions that challenged claims
`of the ’865 patent—IPR2019-01161 and IPR2019-01162—both filed by
`Guardiar Solutions, Inc. Prelim. Resp. 38. Patent Owner does not allege
`any relationship between Petitioner and Guardiar Solutions, Inc. Instead,
`Patent Owner argues that
`Petitioner has known for two years that its products were
`believed to infringe the ’865 patent, yet intentionally waited until
`it had the benefit of the two prior IPR petition denials to bring its
`own Petition, in which there is a complete overlap of the
`challenged claims with
`the
`two Guardiar petitions and
`cumulative arguments and art.
`Id. at 42. Patent Owner alleges that Petitioner was put on notice that its
`products infringe the ’865 patent when Patent Owner informed LAX
`that its bollards allegedly infringe the ’865 patent, in March 2018. Id.
`at 38 (referencing Ex. 2012). Patent Owner identifies Petitioner as “an
`LAX indemnitor.” Id.
`Exhibit 2012 includes an email string between Joseph Saphia,
`representing Patent Owner, and D. Timothy Daze, Assistant General
`Counsel of LAX. See also Ex. 2013 (providing a letter from Saphia to Daze
`and identifying the parties). One email, from Daze to Saphia, states that “I
`have sent the contract for the bollards at LAX to my patent attorney to
`review.” Ex. 2012, 4. Nothing in the email string identifies Petitioner,
`indicates that LAX had notified or will notify Petitioner, or that either
`Petitioner or LAX had a relationship with Guardiar Solutions, Inc.
`
`13
`
`
`
`IPR2020-01369
`Patent 8,215,865 B2
`The Board’s decision in Valve Corp. is instructive. In that case, the
`Board found that Valve Corporation and a previous petitioner challenging
`the same patent were co-defendants in a litigation that involved the same
`product, and Valve Corporation was the licensor of the allegedly infringing
`technology to the earlier petitioner. Valve Corp., Paper 11 at 9–10. These
`facts established that the two petitioners had a significant relationship. Id. at
`10. Based on our review of the record here, we see no evidence of such a
`relationship, or any relationship, between Petitioner and Guardiar Solutions,
`Inc. Cf. Pet. 4–9 (addressing the General Plastic factors). Indeed, Petitioner
`and Guardiar Solutions, Inc. were not even both sued by Patent Owner for
`infringing the ’865 patent.
`We determine that the Petition is not a “follow-on” petition as
`contemplated by General Plastic and Valve Corp. Accordingly, this factor
`weighs strongly against exercising our discretion to deny the Petition.
`b) Other General Plastic factors
`Petitioner alleges that it first became aware of the ’865 patent and the
`prior inter partes review proceedings when Patent Owner filed suit against
`LAX. Pet. 5; see also Prelim. Resp. 38 (indicating that Patent Owner filed
`suit against LAX on December 6, 2019). Petitioner states that “Petitioner’s
`lack of awareness of prior proceedings is a consequence of Patent Owner’s
`intentional omission of Petitioner as a party to the prior proceedings.” Pet. 5
`n.1. Petitioner contends that “upon learning of the complaint, Petitioner
`diligently took steps to defend its interests despite Patent Owner not naming
`Petitioner as a defendant in its complaint against LAX.” Id. at 5–6.
`Petitioner indicates that it learned of the prior art asserted in the
`Petition in May 2020, and identified supporting evidence in July 2020.
`
`14
`
`
`
`IPR2020-01369
`Patent 8,215,865 B2
`Pertinent to the third factor, Patent Owner argues that Petitioner
`benefitted from our decisions on Guardiar’s petitions while “l[ying] in the
`weeds,” which favors our exercising discretion to not institute the present
`Petition. Prelim. Resp. 38, 42.
`Patent Owner argues that “[a] reasonable petitioner would have
`investigated the prior art as of the time its indemnitee, LAX, informed it of
`RSA’s infringement allegations in March 2018.” Prelim. Resp. 42. Patent
`Owner argues that “[i]t is just not believable that Petitioner was not aware of
`them, however, until December 6, 2019, when LAX was formally sued by
`RSA, and that it was only then that Petitioner ‘diligently took steps to defend
`its interests.’” Id. at 43. Patent Owner also argues that Petitioner does not
`adequately explain why it did not file the Petition when we denied the
`petitions in IPR2019-01161 and IPR2019-01162 or when LAX was sued.
`We have considered these arguments and determine that they weigh
`against us exercising discretion to deny the Petition. Patent Owner provides
`no persuasive evidence that Petitioner was aware of the ’865 patent, or our
`decisions in IPR2019-01161 and IPR2019-01162, prior to December 6,
`2019. Indeed, the timing of the current Petition appears to be driven by
`when Patent Owner sued LAX, rather than Petitioner lying in wait to gain an
`unfair advantage. We determine that Petitioner worked diligently after
`December 6, 2019, to file the present Petition.
`Even though Petitioner acknowledges that it became aware of the
`prior proceedings before the Board in December 2019, Patent Owner does
`not provide persuasive evidence that Petitioner is attempting to strategically
`stage its prior art and arguments in multiple petitions in order to gain an
`unfair advantage—a concern in General Plastic. See General Plastic at 17.
`Rather, the record indicates that Petitioner searched for prior art after
`
`15
`
`
`
`IPR2020-01369
`Patent 8,215,865 B2
`learning of the litigation against LAX and prepared the Petition in light of
`that art. We determine that Petitioner adequately explains the timing of the
`Petition relative to our decisions in IPR2019-01161 and IPR2019-01162.
`c) Conclusion
`For the reasons above, we, upon weighing the General Plastic factors,
`decline to exercise our discretion and deny the Petition under General
`Plastic and Valve Corp.
`2. Fintiv I
`Our precedential and informative decisions make clear that the Board
`may exercise discretion to not institute an inter partes proceeding in light of
`the advanced state of ongoing, parallel litigation, involving the challenged
`patent. See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752,
`Paper 8 (PTAB Sept. 12, 2018) (precedential) (“NHK Spring”); Fintiv I; see
`also Snap, Inc. v. SRK Technology LLC, IPR2020-00820, Paper 15 (PTAB
`Oct. 21, 2020) (precedential (§II.A)) (instituting review where district court
`litigation was stayed); Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15
`(PTAB May 13, 2020) (informative) (denying institution in light of an
`ongoing, parallel district court proceeding) (“Fintiv II”); Sand Revolution II,
`LLC v. Continental Intermodal Group – Trucking LLC, IPR2019-01393,
`Paper 24 (PTAB June 16, 2020) (informative) (applying Fintiv I factors in
`light of ongoing, parallel district court litigation and instituting trial). These
`decisions promote efficient use of resources and the integrity of the patent
`system by avoiding potentially conflicting decisions. See, e.g., Fintiv I at 6
`(“[T]he Board takes a holistic view of whether efficiency and integrity of the
`system are best served by denying or instituting review.”).
`In NHK Spring, the Board considered the advanced state of a parallel
`district court proceeding as a factor favoring denial of institution of an inter
`
`16
`
`
`
`IPR2020-01369
`Patent 8,215,865 B2
`partes review proceeding. NHK Spring at 19–20. The Board later identified
`a non-exclusive list of factors to consider when applying NHK Spring to
`determine if we should exercise discretion to not institute an inter partes
`review in light of a parallel proceeding in an advanced state. Fintiv I at 5–6.
`We address these factors below.
`Factor 1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted.
`Subsequent to the filing of the Petition, Petitioner and Patent Owner
`stipulated to a stay in the District of Delaware litigation between Petitioner
`and Patent Owner until our institution decision. Ex. 1047. If trial is
`instituted, the stay will be in place pending our final written decision. Id. at
`2.
`
`Patent Owner argues that summary judgment motions are due in
`January 2021, in the litigation in the Central District of California, litigation
`that does not include Petitioner. Patent Owner argues that we “should deny
`institution and let the Central District of California make a determination on
`the validity of the ’865 patent.” Prelim. Resp. 45–46.
`This factor weighs against denying institution. The litigation between
`Patent Owner and Petitioner is stayed, which typically strongly weighs
`against exercising discretion to deny a petition. See Snap, Inc., Paper 15 at
`9. The fact that other pending litigation involving the ’865 patent is ongoing
`counterbalances the stay to some extent.
`Factor 2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision.
`The Delaware litigation involving Petitioner is stayed and, as such,
`our final written decision would issue before that litigation resumes. See
`Ex. 1047, 2. The order Patent Owner provides for the Central District of
`California litigation does not include a trial date—the order identifies, as the
`
`17
`
`
`
`IPR2020-01369
`Patent 8,215,865 B2
`last specified date, January 18, 2021, as the “[l]ast day to file motions
`(including discovery motions).” Ex. 2016, 2.
`Factor 2 weighs against exercising discretion to deny institution. The
`Delaware litigation is stayed and we have no evidence as to a trial date for
`the Central California litigation.
`Factor 3. investment in the parallel proceeding by the court and the
`parties.
`The Delaware litigation was stayed early in its proceeding. See
`Ex. 1047 (indicating that claim construction briefing has not begun nor has
`discovery been completed). The Central District of California litigation is in
`a more advanced state, but, again, Petitioner is not involved in that
`proceeding. See Ex. 2016.
`We weigh this factor as neutral. We recognize that the District Court
`for the Central District of California has invested in litigation involving the
`’865 patent. This fact is tempered somewhat by Petitioner not being
`involved in that litigation or otherwise related to the defendant in that case.
`Factor 4. overlap between issues raised in the petition and in the
`parallel proceeding.
`The Delaware proceeding is stayed and final invalidity contentions
`have not yet been filed in that case. Ex. 1047. Patent Owner argues that, in
`the Central District of California litigation, the defendant in that case added
`the prior art relied on by Petitioner here to that case. Prelim. Resp. 45.
`Patent Owner indicates, however, that the defendant and its expert do not
`include this prior art in its expert report on invalidity, and instead rely on
`other grounds for proving the claims of the ’865 patent invalid. See id.
`This factor weighs against denial. The Delaware litigation is stayed
`and the Central District of California litigation includes other invalidity
`contentions from those we will decide here.
`
`18
`
`
`
`IPR2020-01369
`Patent 8,215,865 B2
`Factor 5. whether the petitioner and the defendant in the parallel
`proceeding are the same party.
`Petitioner is a defendant in the parallel Delaware litigation, but is not
`a party to the Central California litigation. See Pet. 1.
`We weigh this factor as neutral.
`Factor 6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Patent Owner argues that equity should favor our exercising discretion
`to deny the Petition, stating that “Petitioner’s behavior prejudices . . . Patent
`Owner.” Prelim. Resp. 46. Patent Owner argues that it did not sue
`Petitioner, such that “Petitioner will suffer no prejudice if [the] Petition is
`denied.” Patent Owner also argues that the ’865 patent has been challenged
`numerous times and we should take this opportunity to quiet title. Id.
`Petitioner contends that the merits of this case warrant not exercising our
`discretion to deny the Petition. Pet. 11.
`We weigh this factor as neutral. We sympathize with Patent Owner
`that the ’865 patent has undergone numerous challenges. However, this fact
`is tempered by the fact that Patent Owner brought suit against different
`parties at different times, triggering the earlier challenges. Also, to the
`extent that the “behavior” to which Patent Owner alludes is the alleged time
`between when Patent Owner informed LAX of the patent and Petitioner filed
`this Petition, as we discuss above, the current record has no persuasive
`evidence of any significant time delay.
`Determination
`In weighing the Fintiv I factors, we do not merely treat them as a
`scorecard, totaling up the individual outcomes. Instead, we take a holistic
`view of the factors. See, e.g., Fintiv II at 17 (“On balance, these facts, when
`viewed holistically, lead us to determine that efficiency is best served by
`
`19
`
`
`
`IPR2020-01369
`Patent 8,215,865 B2
`denying institution.”). After weighing all of the factors and taking a holistic
`view of the relevant circumstances of this proceeding, we determine that
`exercising our discretion to deny institution under 35 U.S.C. § 314(a)
`because of the parallel litigation involving the ’865 patent is not warranted.
`We weigh heavily that fact that the parallel Delaware litigation
`involving Petitioner is stayed (a stay joined by Patent Owner) and the
`litigation was in its early stages. As such, there is no risk of inconsistent
`decisions or a duplication of efforts between the Delaware court and us.
`With respect to the Central District of California case, we do not have
`sufficient evidence that the validity issues in that case significantly overlap
`the grounds asserted in the Petition. These facts favor a determination that
`instituting this proceeding would be an efficient use of resources and that the
`likelihood that our final written decision may affect the integrity of the
`patent system through a potentially conflicting decision is low.
`B. Our Discretion under 35 U.S.C. § 325(d)
`Patent Owner contends that we should exercise our discretion under
`35 U.S.C. § 325(d) to deny the Petition, applying our precedential decisions
`in Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential) (“Advanced
`Bionics”) and Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5,
`first paragraph) (“Becton, Dickinson”). Prelim. Resp. 40–42. Specifically,
`Patent Owner argues that the Petition “relies on cumulative art that fails for
`the same reasons that challengers failed” in IPR2019-01161, IPR2019-
`001162, and ex parte reexamination control no. 90/014,483. Id. at 40. Id. at
`11‒18. For the reasons provided below, we do not exercise our discretion to
`deny institution under § 325(d).
`
`20
`
`
`
`IPR2020-01369
`Patent 8,215,865 B2
`1. Applicable Framework
`Section 325(d) provides that, 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)
`(2018). The Board uses a two-part framework in determining whether to
`exercise its discretion under § 325(d), specifically:
`(1) whether the same or substantially the same art previously was
`presented to the Office or whether the same or substantially the
`same arguments previously were presented to the Office; and
`(2) if either condition of [the] first part of the framework is
`satisfied, whether the petitioner has demonstrated that the Office
`erred in a manner material to the patentability of challenged
`claims.
`Advanced Bionics at 8.
`In applying the two-part framework, we consider several non-
`exclusive factors from Becton, Dickinson, which provide “useful insight into
`how to apply the framework” (Advanced Bionics at 9): (a) the similarities
`and material differences between the asserted art and the prior art involved
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
