Trials@uspto.gov
`571-272-7822
`
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`
`
`
`Paper 14
`Date: July 25, 2023
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`____________
`
`IPR2023-00133
`Patent 7,421,032 B2
`____________
`
`
`
`Before KEN B. BARRETT, JOHN A. HUDALLA, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request on Rehearing of Decision Denying
`Institution of Inter Partes Review
`37 C.F.R. § 42.71(d)
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 14
`Date: July 25, 2023
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`____________
`
`IPR2023-00133
`Patent 7,421,032 B2
`____________
`
`
`
`Before KEN B. BARRETT, JOHN A. HUDALLA, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request on Rehearing of Decision Denying
`Institution of Inter Partes Review
`37 C.F.R. § 42.71(d)
`
`
`
`
`IPR2023-00133
`Patent 7,421,032 B2
`
`
`INTRODUCTION
`I.
`Samsung Electronics Co., Ltd. (“Petitioner”) filed a Petition
`
`requesting inter partes review of claims 1–8 and 10–22 of U.S. Patent
`No. 7,421,032 B2 (“the ’032 patent,” Ex. 1001). Paper 1 (“Pet.”).
`California Institute of Technology (“Patent Owner”) filed a preliminary
`response to the Petition. Paper 7 (“Prelim. Resp.”). With our authorization,
`Petitioner filed a Preliminary Reply (Paper 8, “Pet. Reply”) and Patent
`Owner filed a Preliminary Sur-reply (Paper 9, “PO Sur reply”) directed to
`the issue of discretionary denial under 35 U.S.C. § 314.
`
`On May 4, 2023, we entered a Decision (Paper 10, “Dec.”) denying
`institution of inter partes review. As part of the Decision, we considered
`Patent Owner’s arguments (Prelim. Resp. 47–62; PO Sur-reply 1–3) that we
`should exercise our discretion to deny institution under 35 U.S.C. § 314(a)
`based on the advanced posture of the related case styled California Institute
`of Technology v. Samsung Electronics Co., No. 2-21-cv-00446 (E.D. Tex.
`filed Dec. 3, 2021) (“the underlying litigation”). Dec. 3, 11–20. We based
`our discretionary denial analysis on the Board’s precedential decision in
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`(precedential) (“Fintiv”) and the USPTO Director’s Memorandum issued on
`June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA
`Post Grant Proceedings with Parallel District Court Litigation” (“Interim
`Procedure”).1 After weighing the factors identified in Fintiv, we exercised
`
`
`1 Available at https://www.uspto.gov/sites/default/files/documents/
`interim_proc_discretionary_denials_aia_parallel_district_court_litigation_
`memo_20220621_.pdf
`
`2
`
`
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`IPR2023-00133
`Patent 7,421,032 B2
`
`our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes
`review. Dec. 33.
`
`Petitioner filed a Request for Rehearing (Paper 11, “Req. Reh’g”)
`asking us to reconsider our analysis of the sixth Fintiv factor and our
`decision to exercise discretion to deny institution. 2 For the reasons stated
`below, we deny the Request for Rehearing.
`
`II. ANALYSIS
`When reconsidering a decision on institution, we review the decision
`
`for an abuse of discretion. See 37 C.F.R. § 42.71(c) (2022). An abuse of
`discretion may be determined if a decision is based on an erroneous
`interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277,
`1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed.
`Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The
`party requesting rehearing has the burden of showing the decision should be
`modified, which includes specifically identifying all matters the party
`believes we misapprehended or overlooked. See 37 C.F.R. § 42.71(d)
`(2022).
`
`
`2 Petitioner also requested rehearing by the Precedential Opinion Panel
`(“POP”) to clarify “[w]hether Fintiv’s multi-factor balancing analysis and
`Director Vidal’s Interim Procedure . . . require a compelling merits showing
`under Fintiv’s sixth factor where an unpatentability challenge may be strong
`even if found not to reach the compelling standard.” Ex. 3001. POP denied
`Petitioner’s request for review. Paper 13. Notwithstanding, we consider
`Petitioner’s arguments regarding Fintiv Factor 6 below.
`3
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`IPR2023-00133
`Patent 7,421,032 B2
`
`Petitioner contends that we “erred in [our] overall balancing of the
`
`Fintiv factors” insofar as we interpreted the Interim Procedure for the sixth
`Fintiv factor “to mean that if a finding of compelling merits is not reached,
`then factor six cannot weigh against discretionary denial.” Req. Reh’g 1–2.
`According to Petitioner, our “erroneous analysis under Fintiv’s sixth
`factor . . . infected the overall multi-factor balancing assessment.” Id. at 2.
`Petitioner also asks us to hold its Request for Rehearing in abeyance “until
`the resolution of a pending Administrative Procedure Act (‘APA’) challenge
`to the validity of the Fintiv rule.” Id. We address Petitioner’s arguments in
`turn below.
`
`A. Petitioner’s Arguments Regarding the Sixth Fintiv Factor
`Petitioner contests the manner in which we evaluated the merits of its
`
`unpatentability challenges as part of our consideration of the sixth Fintiv
`factor. See Dec. 20–32. In particular, Petitioner contends that we wrongly
`considered only whether the merits were “compelling” as prescribed by
`certain guidance in the Interim Procedure. Req. Reh’g 4 (citing Interim
`Procedure 4–5). Petitioner further contends that we did not properly
`consider whether the merits “seem[ed] particularly strong” in accordance
`with Fintiv factor 6. Id. at 5 (quoting Fintiv, Paper 11 at 14–15). Petitioner
`also argues that we did not properly consider the testimony of its declarant,
`Dr. Valenti, which Petitioner notes is unrebutted in the preliminary record.
`Id. at 9–10.
`
`We do not agree with Petitioner’s arguments. As recognized by
`Petitioner (Req. Reh’g 5–6), our analysis of the merits for Fintiv factor 6
`may consider “strengths or weaknesses regarding the merits . . . as part of
`[our] balanced assessment.” Fintiv, Paper 11 at 15–16. For example, Fintiv
`
`4
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`IPR2023-00133
`Patent 7,421,032 B2
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`discusses merits that “seem particularly strong” and merits that might be “a
`closer call.” Id. at 14–15. Further, we do not understand the Interim
`Procedure to have changed this calculus. The Director herself notes that the
`Interim Procedure “affirms the PTAB’s current approach of declining to
`deny institution under Fintiv where the evidence of record so far in the case
`would plainly lead to a conclusion that one or more claims are
`unpatentable.” Interim Procedure 5 n.6. The Director also acknowledges a
`potential range of merits, from those that are “merely sufficient to meet the
`statutory institution threshold” to merits that “present a compelling
`unpatentability challenge.” Id. at 4–5. Thus, regardless of the descriptors
`employed to characterize the relative merits, the Fintiv factor 6 analysis
`ultimately involves an assessment of the merits along a spectrum of
`outcomes.
`
`Accordingly, our Decision addressed certain weaknesses in
`Petitioner’s unpatentability challenges. In particular, with regard to
`Petitioner’s showing regarding the component of the formula in the
`“generating a sequence of parity bits” step that “is the value of a sum of ‘a’
`randomly chosen irregular repeats of the message bits,” as recited in
`independent claim 1, and, according to Petitioner, as represented in the
`Tanner graphs of independent claims 11 and 18, we determined that
`Petitioner’s arguments and evidence rested “tenuously upon apparent logical
`leaps.” Dec. 26–27, 29 (emphasis added). As we noted, central to
`Petitioner’s argument was the contention that “any type of linear code using
`a non-zero generator matrix will ‘repeat’ input bits because the process of
`multiplying a vector of message bits by the generator matrix will necessarily
`involve multiplying input bits by ‘1’ bits.” Id. at 28 (quoting Pet. 15).
`
`5
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`IPR2023-00133
`Patent 7,421,032 B2
`
`Petitioner relied on that premise to argue that Kobayashi’s Hamming
`encoder repeated bits “because the process of multiplying each 4-bit block
`by generator matrix G involves multiplying each input bits by at least one
`‘1’ bit (i.e., repeating the input bits) and then summing the repeated bits to
`generate the codeword.” Pet. 16. Patent Owner pointed out, however, that
`Petitioner’s premise rested on shaky footing because it relied on a
`misinterpretation of the Federal Circuit’s construction and application of the
`term “repeat” in the Broadcom case. See Prelim. Resp. 20–21. We agreed
`with Patent Owner that Petitioner did not “justify its logical leap from a
`finding of infringement by a particular device that duplicated bits by passing
`them through a specific configuration of AND gates, as in Broadcom, to a
`conclusion that every implementation of a transformation that could be
`performed using binary multiplication must repeat bits.” Dec. 29. We
`further explained:
`In Broadcom, the expert testimony emphasized that certain bits
`were “repeated” because they were allowed to “flow through”
`an AND gate to an output gate. Broadcom, 25 F.4th at 987.
`Petitioner’s showing here is different—it is premised on
`multiplying certain data bits by 1 as an intermediate step in
`matrix multiplication. See Pet. 16–18 (purporting to depict
`Kobayashi’s generation of sequence I3). Petitioner’s general
`assertion that “[m]ultiplying a binary message bit by a ‘1’ bit is
`equivalent to passing the message bit through an AND gate
`with a ‘1’ bit” (id. at 15) does not fully account for the
`differences in these operations—information bits flowing
`through an AND gate to an output gate, as in Broadcom, versus
`message bits being subjected to matrix multiplication to
`generate an expanded sequence, as here.
`Id. at 29–30.
`
`We additionally noted other potential deficiencies in Petitioner’s
`showing, as raised by Patent Owner. See id. at 30–32. In particular, even
`
`6
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`
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`IPR2023-00133
`Patent 7,421,032 B2
`
`assuming Petitioner’s premise were correct—that multiplying bits by “1”
`constitutes repetition—we deemed Petitioner’s showing based on Kobayashi
`to be weak, as Kobayashi does not expressly disclose such multiplication for
`its outer encoder. Id. at 30–31 (citing Prelim. Resp. 22).
`
`We ultimately concluded that, on the record before us, Petitioner’s
`evidence did not “plainly lead[] to a conclusion that one or more claims are
`unpatentable by a preponderance of the evidence.” Id. at 32 (quoting
`Interim Procedure 4). We, therefore, found Petitioner’s showing as to the
`independent claims was not compelling. Id.
`
`Petitioner now suggests that we only considered whether the merits
`were “compelling” and did not consider whether they were “strong.”
`Req. Reh’g 9 (“[E]ven though the Board did not find the merits to be
`compelling, they are nevertheless strong.”). We disagree. Although we did
`consider the question of “compelling” merits in conjunction with the
`Director’s Interim Procedure, this question was based on our underlying
`assessment of Petitioner’s unpatentability contentions and Patent Owner’s
`arguments. See Dec. 24–32. And, as discussed therein, our analysis can
`scarcely be read to support “strong” merits.
`
`As Petitioner acknowledges (Req. Reh’g 5), situations such as this—
`where the merits are a “closer call” and other factors support discretionary
`denial—favor exercising discretion to deny institution. Fintiv, Paper 11
`at 15. We did not go that far in our Decision, and we instead (and somewhat
`generously for Petitioner) considered the merits to be neutral in our analysis.
`Dec. 19. Under these circumstances, we reasonably weighed the merits as
`part of our consideration of Fintiv factor 6 and our holistic view of whether
`
`7
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`
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`IPR2023-00133
`Patent 7,421,032 B2
`
`efficiency and integrity of the system are best served by denying or
`instituting review. See Fintiv, Paper 11 at 6.
`
`Petitioner also argues that we did not properly consider the testimony
`of its declarant, Matthew C. Valenti, Ph.D. Req. Reh’g 9–10. In particular,
`Petitioner asserts that the opinions of its expert were “unrebutted,” and urges
`that we should have credited this unrebutted testimony because it was only
`countered by Patent Owner’s attorney argument. Id. Petitioner further
`contends that the strength of Petitioner’s merits is buttressed by Patent
`Owner’s failure to dispute Petitioner’s construction of the term “repeat.” Id.
`at 10. Petitioner acknowledges the parties’ dispute over whether
`Kobayashi’s matrix generator discloses matrix multiplication to generate
`bits, but asserts that “those are issues better suited for trial given the claim
`construction is undisputed and [Petitioner’s] unrebutted evidence regarding
`unpatentability.” Id. at 11. Finally, Petitioner makes arguments in footnotes
`regarding our consideration for Fintiv factor 6 of past inter partes review
`challenges to the ’032 patent. Id. at 10–11 nn.4–5.
`
`In essence, Petitioner recapitulates the same factual circumstances that
`we considered in our Decision and argues that we should have weighed them
`differently. See id.; Dec. 19–20. As such, Petitioner’s arguments merely
`amount to rehashing our merits analysis and expressing disagreement with
`how we weighed Petitioner’s arguments and evidence, which is not a
`sufficient basis for rehearing.
`
`B. Petitioner’s Suggestion to Hold the Instant
`Request for Rehearing in Abeyance
`Petitioner argues that we should hold the instant Request for
`
`Rehearing in abeyance pending resolution of a case styled Apple Inc. v.
`Vidal, No. 5:20-cv-06128-EJD (N.D. Cal. filed Aug. 31, 2020). See Req.
`
`8
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`IPR2023-00133
`Patent 7,421,032 B2
`
`Reh’g 2–3, 11–15. That case is an APA challenge to instructions the
`Director has issued to the Board to inform it how to exercise, under
`delegation by the Director, the Director’s discretion whether to institute a
`requested inter partes review. See Apple Inc. v. Vidal, 63 F.4th 1, 6 (Fed.
`Cir. 2023). The precedential Fintiv decision is within the ambit of the Apple
`Inc. v. Vidal case. See id. at 8–9. Petitioner contends that “the Board should
`hold [Petitioner’s] rehearing request until this procedural challenge to Fintiv
`is resolved.” Req. Reh’g 12. Petitioner also presents certain arguments of
`its own under the APA regarding the propriety of the Director designating
`the Fintiv decision as precedential. See id. at 12–14.
`
`Petitioner has not previously presented arguments related to the Apple
`Inc. v. Vidal case. Nor has Petitioner previously challenged under the APA
`the Director’s decision to designate the Fintiv decision as precedential. As
`such, we could not have misapprehended or overlooked such arguments.
`Furthermore, to the extent Petitioner suggests that we should hold the instant
`Request for Rehearing in abeyance pending resolution of the Apple Inc. v.
`Vidal case, we decline to do so.
`
`III. CONCLUSION
`For the reasons above, we conclude that Petitioner has not met its
`
`burden of showing that we abused our discretion in evaluating and weighing
`the Fintiv factors as part of our decision to exercise discretion under
`35 U.S.C. § 314(a) to deny institution of inter partes review. Therefore, we
`deny Petitioner’s Request for Rehearing.
`
`IV.
`
` ORDER
`
`
`
`
`Accordingly, it is
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`9
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`
`
`IPR2023-00133
`Patent 7,421,032 B2
`
`PETITIONER:
`
`Robert A. Appleby
`Greg S. Arovas, P.C
`KIRLAND & ELLIS, LLP
`robert.appleby@kirkland.com
`greg.arovas@kirkland.com
`
`
`PATENT OWNER:
`
`Michael T. Rosato
`Matthew A. Argenti
`Patrick M. Medley
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`margenti@wsgr.com
`pmedley@wsgr.com
`
`
`
`10
`
`
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