Paper 7
`Trials@uspto.gov
`571-272-7822 Entered: May 29, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INVUE SECURITY PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`MOBILE TECH, INC.,
`Patent Owner.
`____________
`
`Case PGR2019-00019
`Patent 10,026,281 B1
`____________
`
`
`
`Before RAMA G. ELLURU, TERRENCE W. McMILLIN, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`McMILLIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: May 29, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INVUE SECURITY PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`MOBILE TECH, INC.,
`Patent Owner.
`____________
`
`Case PGR2019-00019
`Patent 10,026,281 B1
`____________
`
`
`
`Before RAMA G. ELLURU, TERRENCE W. McMILLIN, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`McMILLIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`
`
`
`
`
`
`PGR2019-00019
`Patent 10,026,281 B2
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`I. INTRODUCTION
`
`InVue Security Products, Inc. (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) to institute an post-grant review of claims 1–30 of U.S. Patent No.
`10,026,281 B2 (Ex. 1001, “the ’281 patent”). Mobile Tech, Inc. (“Patent
`Owner”) filed a Preliminary Response (Paper 5, “Prelim. Resp.”).
`A post-grant review may not be instituted unless “the information
`presented in the petition . . . , if such information is not rebutted, would
`demonstrate that it is more likely than not that at least 1 of the claims
`challenged in the petition is unpatentable.” 35 U.S.C. § 324(a); see also 37
`C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”).
`Section 324(b) further provides that “[t]he determination required under
`subsection (a) may also be satisfied by a showing that the petition raises a
`novel or unsettled legal question that is important to other patents or patent
`applications.” Upon consideration of the Petition, the Preliminary Response,
`and the supporting evidence, we conclude that the information presented in
`the Petition does not demonstrate that it is more likely than not that any of
`the claims challenged in the Petition is unpatentable and that the Petition
`does not raise a novel or unsettled legal question. Accordingly, we do not
`institute a post-grant review as to the challenged claims of the ’281 patent.
`
`A. Related Matters
`The parties indicate that the ’281 patent has been asserted in Mobile
`Tech., Inc. v. InVue Security Products, Inc., 3:18-cv-00052 (W.D.N.C.). Pet.
`91;1 Paper 4, 2. In addition, the Patent Owner states, “U.S. Patent
`
`1 The Petition states the case number is 3:18-cv-00505. However, the case
`with this number was consolidated with 3:18-cv-00052 and closed.
`2
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`Application Serial Nos. 12/351,837 and 15/826,017, pending before the U.S.
`Patent and Trademark Office, are related to the ’281 Patent.” Paper 4, 2.
`
`B. The ’281 Patent
`The ’281 patent is titled, “Display for Hand-Held Electronics.”
`Ex. 1001, (54). “The invention disclosed here is a display system for
`managing power and security for a plurality of hand-held electronic devices
`sold to consumers in a retail location.” Id. at (57) (Abstract). Figure 1 of the
`’281 patent is reproduced below.
`
`
`
`Figure 1 depicts “a ‘post’ position for mounting an electronic hand-held
`device to a retail display.” Id. at 8:25–26. “The post assembly 10 includes a
`base assembly portion (indicated generally at 12) and a puck assembly
`portion (indicated generally at 14).” Id. at 9:55–57. Spring-loaded steel
`cable 28 or tether “is drawn from and returned to the retractor housing 30 as
`the puck assembly 14 is lifted from and returned to the base assembly 12.”
`Id. at 9:66–10:3. Figure 22 of the ’281 patent is reproduced below.
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`Figure 22 depicts “a display system having a plurality of post positions
`along with a display monitor that shows media content depending on which
`device is examined by a consumer.” Id. at 8:64–67. “Post assembly
`position 10B in FIG. 22 represents a typical puck ‘lift’ condition.” Id. at
`13:46–47. “[W]hen the puck at post position 10B is lifted, the controller 102
`detects the lift signal and communicates it to the media player. The UIM
`[user interface] module 122, in essence translates the signal and instructs the
`media player 128 to play content that has been uniquely mapped to post
`position 10B.” Id. at 14:1–6.
`
`C. Illustrative Claims
`Petitioner challenges claims 1–30 (all claims) of the ’281 patent.
`Pet. 1. Claims 1 and 25 are independent apparatus claims and claim 30 is an
`independent method claim. Independent apparatus claim 1 is reproduced
`below.
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`1. A cable management apparatus for use in mounting an
`electronic device to a display, the apparatus comprising:
`a puck assembly adapted to receive the electronic device;
`a base assembly; and
`a tether assembly adapted to connect the puck assembly with the
`base assembly;
`wherein the puck assembly is adapted to be moveable between
`(1) a rest position in which (i) the puck assembly is in
`engagement with the base assembly and (ii) the puck assembly
`and the base assembly are connected to the tether assembly,
`and (2) a lift position in which (i) the puck assembly is
`disengaged from the base assembly and (ii) the puck assembly
`and the base assembly are connected to the tether assembly;
`wherein the base assembly comprises a base assembly electrical
`contact, the base assembly electrical contact configured to
`receive power from a power source;
`wherein the puck assembly comprises (1) a puck assembly
`electrical contact, (2) a power storage device, and (3) puck
`assembly circuitry connected to the puck assembly electrical
`contact and the power storage device;
`wherein the base assembly electrical contact and the puck
`assembly electrical contact are adapted to contact each other
`when the puck assembly is in the rest position to form an
`electrical connection between the puck assembly circuitry and
`the power source;
`wherein the puck assembly circuitry is configured to, when the
`puck assembly is in the rest position, draw power from the
`power source through the electrical connection and provide
`the drawn power to the power storage device to charge the
`power storage device; and
`wherein the base assembly electrical contact and the puck
`assembly electrical contact are adapted to lose contact with
`each other in response to movement of the puck assembly
`from the rest position to the lift position to thereby break the
`electrical connection.
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`Ex. 1001, 18:49–19:19. Independent method claim 30 is reproduced below.
`
`30. A method for using an apparatus, the apparatus comprising
`(1) a puck assembly that includes a rechargeable storage
`device, (2) a base assembly on which the puck assembly rests,
`and (3) a tether assembly that connects the puck assembly with
`the base assembly, wherein the tether assembly includes a
`tether, the method comprising:
`the base assembly receiving power from a power source;
`the puck assembly receiving power from the base assembly via
`an electrical connection between a plurality of base assembly
`electrical contacts and a plurality of puck assembly electrical
`contacts that contact each other when the puck assembly is in
`the rest position;
`connecting an electronic device to the puck assembly via a cable;
`the puck assembly providing power received via the electrical
`connection between the base assembly electrical contacts and
`the puck assembly electrical contacts to the connected
`electronic device via the cable;
`the puck assembly charging the rechargeable power storage
`device with power received via the electrical connection
`between the base assembly electrical contacts and the puck
`assembly electrical contacts;
`lifting the puck assembly from the rest position to a lift position
`in which the puck assembly does not rest on the base
`assembly, wherein the tether assembly remains connected to
`the puck assembly and the base assembly when the puck
`assembly is in the lift position; and
`in response to the lifting, (1) breaking the electrical connection
`between the base assembly electrical contacts and puck
`assembly electrical contacts, and (2) operating circuitry in the
`puck assembly with power from the rechargeable storage
`device.
`Id. at 22:35–66.
`
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`D. Asserted Grounds of Unpatentability2
`Petitioner challenges claims 1–12, 22, 23, 25–27, and 30 of the ’281
`patent as obvious in view of Deconinck (Ex. 1002)3 “in combination with
`Hotelling (X1003)[4] and/or Chatterjee (X1004).[5]” Pet. 2.
`Petitioner challenges claims 13–21, 24, 28, and 29 of the ’281 patent
`as obvious in view of Deconinck “in combination with Hotelling and/or
`Chatterjee.” Pet. 2.
`Petitioner challenges claims 13–21, 24, 28, and 29 of the ’281 patent
`as obvious in view of Deconinck “in combination with Hotelling/Chatterjee
`and further in view of Darwinkel (X1006)[6] and/or Taylor (X1007).[7]”
`Pet. 2.
`Petitioner challenges claims 1–30 of the ’281 patent as anticipated by
`Wheeler. 8 Pet. 2.
`Petitioner challenges claims 1–30 of the ’281 patent as anticipated by
`and/or obvious in view of MTI 2009 Video. 9 Pet. 3.
`Petitioner relies on the Declaration of Harry Direen, Ph.D., P.E.
`(Ex. 1005) to support its challenges to the claims of the ’281 patent.
`
`
`2 In the analysis below, we shall refer to the first 3 challenges as the
`“Obviousness Challenges” and the last 2 challenges as the “Anticipation and
`Alternative Challenges.”
`3 US 7,327,276 B1, issued February 5, 2008.
`4 US 7,352,567 B2, issued April 1, 2008.
`5 US 2010/0081473 A1, filed September 26, 2008.
`6 WO 2009/001273 A1, published December 31, 2008.
`7 US 6,314,236 B1, issued November 6, 2001.
`8 US 2014/0159898 (Ex. 1008), filed November 27, 2013.
`9 Exhibit 1014.
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`
`II. ANALYSIS
`A. Obviousness Challenges
`1. Challenges Not Stated With Particularity
`In a petition for post-grant review, a petitioner is required to
`“identif[y], in writing and with particularity, each claim challenged, the
`grounds on which the challenge to each claim is based, and the evidence that
`supports the grounds for the challenge to each claim.” 35 U.S.C.
`§ 322(a)(3). Each of the Obviousness Challenges uses the phrase “and/or”
`in identifying the relied-upon references. Pet. 2.
`Patent Owner contends that, based on the way Petitioner set forth its
`Obviousness Challenges using “and/or” as a connector for the cited art,
`Petitioner identifies at least 15 obviousness grounds. Prelim. Resp. 23.
`Patent Owner also points out that Petitioner relies on “Knowledge in the
`Art” in setting forth its Obviousness Challenges (see Pet. 26 (“Claims 1–12,
`22–23, 25–27, and 30 are Rendered Obivous by Deconinck in View of
`Hotelling/Chatterjee and the Knowledge in the Art”) (emphasis added)), 44
`(“Dependent Claims 13–21, 24, 28–29 are Obvious in View of Deconinck
`and Hotelling/Chatterjee (Ground 2) and in further view of
`Darwinkel/Taylor (Ground 3), along with the Knowledge in the Art”)
`(emphasis added)), and that Petitioner identifies at least 12 different
`references as “Known Prior Art.” Prelim. Resp. 21–22 (citing Pet. 14–26).
`Patent Owner argues:
`Even scouring through the Petition’s claim charts (see
`Paper 1, at 28–90), it is difficult if not impossible to identify the
`combinations used for each challenged claim. For individual
`limitations, the claim chart repeatedly refers back to subsections
`of Section IV or Section V (which in turn refer to subsections of
`Section IV), thus potentially incorporating one or more
`
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`(unidentified) references from the “Knowledge in the Art.” See,
`e.g., Paper 1, at 29–30, 32–33, 34, 36–37, 40, 43, 47, 50
`(referencing Sections V.A and IV.B, which references at least 10
`pieces of prior art); id. at 34–35 (referencing Sections IV.B and
`V.B); id. at 37 (referencing Section IV.A); id. at 39, 48–49, 52–
`53, 56–57, 59, 61–68, 83 (referencing Section IV.B). And other
`limitations reference individual pieces of prior art that aren’t
`ostensibly listed as part of the grounds. See Paper 1, at 33, 35,
`41 (referencing Marszalek, Ex. 1023); id. at 83 (referencing LP3
`Manual, Ex. 1024).
`
`Prelim. Resp. 24–25.
`We agree with Patent Owner that the Obviousness Challenges are not
`set forth with particularity because it is unclear what each challenge
`encompasses and what evidence Petitioner relies upon to establish
`unpatentability under each challenge. For example, Petitioner’s first
`purported “ground” of unpatentability is that “Deconinck (X1002) renders
`obvious claims 1-12, 22-23, 25-27, and 30 in combination with Hotelling
`(X1003) and/or Chatterjee (X1004) under 35 U.S.C. §103.” Pet. 2
`(emphases omitted). As Patent Owner notes in the passage of the
`Preliminary Response quoted above, Petitioner’s discussion of this “ground”
`repeatedly refers to Section IV.B of the Petition, which itself discusses
`numerous references. See Pet. 26–44 (discussion of “Ground 1”); Pet. 16–
`23 (Section IV.B). Furthermore, in its claim chart for claim 25, Petitioner
`asserts the following:
`Deconinck discloses circuitry in the housing 30 for
`receiving power from the stand assembly and providing it to the
`electronic device (X1002, 9:30-34; FIGS. 15-18, Ref. 150). If
`not expressly disclosed, it would have been obvious to pass
`power directly or indirectly to the power cable connected to the
`electronic device in the rest position (X1005, ¶¶64-68). For
`example, Marszalek illustrates that passing power directly to the
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`power cable when resting for charging the electronic device
`would have been one design option known to a POSITA (X1023,
`¶[0076]).
`
`Pet. 33 (emphases omitted). Marszalek is one of the references discussed in
`Section IV.B of the Petition (Pet. 17), but it is not identified as forming the
`basis for unpatentability in Petitioner’s identification of “Ground 1.” Pet. 2,
`26. Yet, Petitioner expressly relies on Marszalek for its obviousness
`contentions in “Ground 1.” Pet. 33.
`Thus, Petitioner has not set forth grounds of unpatentability with the
`requisite specificity. See 35 U.S.C. § 322(a)(3). However, as explained
`below, we do not deny institution solely on this basis.
`
`2. Element Not Shown in Cited Art: Tether Assembly
`Connected to the Base and Puck Assemblies
`All the independent claims of the ’281 patent require that the tether
`assembly be connected to both the base assembly and the puck assembly.
`Patent Owner argues that Petitioner fails to explain how Deconinck, the
`primary reference cited in the Obviousness Challenges, or any other prior art
`reference teaches a tether apparatus with these connections. Prelim. Resp.
`32–36.
`Each independent claim of the ’281 patent recites that the puck
`assembly, when lifted and at rest, is connected to the tether assembly, and
`the base assembly is connected to the tether assembly. Ex. 1001, 18:53-62
`(Claim 1: “a tether assembly adapted to connect the puck assembly with the
`base assembly; wherein the puck assembly is adapted to be moveable
`between (1) a rest position…and (2) a lift position in which…the puck
`assembly and the base assembly are connected to the tether assembly”),
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`21:9-62 (Claim 25: “a tether assembly adapted to connect the puck assembly
`with the base assembly; wherein the puck assembly is adapted to be
`moveable between (1) a rest position…and (2) a lift position in which…the
`puck assembly and the base assembly are connected to the tether
`assembly”), 22:38-39, 22:59-61 (Claim 30: “tether assembly that connects
`the puck assembly with the base assembly…wherein the tether assembly
`remains connected to the puck assembly and the base assembly when the
`puck assembly is in the lift position”). Thus, all the claims require that the
`puck assembly be connected to the base assembly via the tether assembly.
`Petitioner contends “Deconinck discloses a retractable cable assembly
`that tethers a puck to the base assembly.” Pet. 28, 31, 34 (citing Ex. 1002,
`6:38–39, Fig. 1). However, this contention is not sufficiently explained or
`supported by the citations. Figure 1 of Deconinck is reproduced below.
`
`
`Figure 1 depicts “a security system for displaying a handheld electronic
`device.” Ex. 1002, 6:32–33. Petitioner contends that stand assembly 10 in
`Figure 1 corresponds to the claimed base assembly in the ’281 patent and
`that housing 30 in Figure 1 corresponds to the claimed puck assembly. See,
`e.g., Pet. 14 (“Deconinck discloses a device for displaying electronics
`comprising a stand assembly 10 (‘base’) that supports a housing 30 (‘puck’)
`
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`in the rest position.”) (footnote omitted). Figure 1, however, does not depict
`a connection between the tether assembly and the base and puck assemblies.
`
`The cited passage in Deconinck states, “Stand assembly 10 supports
`housing 30 and displayed handheld electronic device 200 and conceals a
`retractable cable 20 which is routed to housing 30.” Ex. 1002, 6:37–39.
`This passage does not teach or suggest that stand assembly 10 and
`housing 30 are connected by the tether.
`
`Furthermore, with regard to the claimed “lift position,” the Petition
`states, “In Deconinck, when the housing 30 is lifted from the stand
`assembly, the housing and stand assemblage disengage while the tether
`remains connected.” Pet. 28–29, 31, 36 (citing Ex. 1002, 6:38–39, 12:31–
`35, Fig. 1). Figure 1 and 6:38–39 of Deconinck, however, do not depict the
`lift position or the tether connecting the stand assembly and housing. The
`additional passage states: “Retractable cable 20 may be a single or
`multiconductor cable and may be flat, round or any suitable shape.
`Retractable cable 20 may have a suitable connection element at one or both
`terminal ends adapted to couple retractable cable 20.” Ex. 1002, 12:31–35.
`This passage does not teach or suggest that the stand assembly and housing
`are connected by the tether.
`
`Figure 1 and the two above-quoted passages from Deconinck are all
`the evidence Petitioner cites for the limitations in the independent claims
`that require that the tether assembly connect the puck assembly and the base
`assembly. Petitioner’s cited evidence fails to sufficiently show that the cited
`art (Deconinck) teaches or suggests these limitations. For this reason alone,
`the Petitioner’s Obviousness Challenges are not likely to succeed.
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`3. Summary
`Petitioner has failed to set forth its Obviousness Challenges with
`particularity. And, Petitioner has failed to show that all of the elements of
`any of the challenged claims are taught or suggested by the cited art.
`Therefore, the Obviousness Challenges in the Petition do not support
`institution of past-grant review.
`
`B. Anticipation and Alternative Challenges
`1. Challenges Not Stated With Particularity
`a. Challenge Based on Wheeler
`Petitioner challenges all the claims of the ’281 patent as anticipated by
`Wheeler. Pet. 3, 69–90. Petitioner contends, “[b]ecause the substance of the
`Wheeler specification is identical to the ’281 patent (see X1031), the
`disclosures in Wheeler either anticipate Claims 1–30 as shown in Ground 4
`or the claims are invalid under 35 U.S.C. § 112.” Id. at 69 (emphasis
`added). In a footnote to its reference to Section 112, Petitioner states,
`“[s]hould [Patent Owner] assert that Wheeler fails to anticipate any claims,
`[Petitioner] reserves the right to challenge those claims on that basis.”10 Id.
`at 69 n.16. Thus, Petitioner purports to allege unpatentability based on
`alternative, contingent grounds.
`
`
`10 Patent Owner does assert that Wheeler fails to anticipate the claims. See,
`e.g., Pet. 1 (“[N]either Wheeler nor the [MTI 2009] Video are prior art to the
`’281 patent.”). It is unclear whether Patent Owner’s assertion that Wheeler
`does not anticipate because it does not qualify as prior art satisfies
`Petitioner’s contingency for asserting the alternative stated in the Petition
`(i.e., that all the claims of the ’281 patent are invalid under Section 112).
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`The rules governing post grant review provide that a petition must
`state “the specific statutory grounds permitted under 35 U.S.C. 282(b)(2) or
`(3) on which the challenge to the claim is based” and “must identify the
`specific part of the claim that fails to comply with the statutory grounds
`raised and state how the identified subject matter fails to comply with the
`statute.” 37 C.F.R. § 42.204(b)(2), (4). Petitioner fails to do so. For
`example, Petitioner’s attempted reservation of the right to challenge the
`claims on an alternative ground under Section 112 is unavailing. Petitioner
`fails to present argument or support a challenge to the claims under Section
`112. Indeed, Petitioner fails to even specify the nature of the Section 112
`challenge. Specifically, Petitioner does not specify whether the claims are
`invalid for lack of written description support, lack of an enabling
`disclosure, or some other unspecified ground under Section 112. We, thus,
`decline to institute trial on alternative and undeveloped grounds.
`Moreover, the rules governing post-grant review require that a petition
`contain “a detailed explanation of the significance of the evidence including
`material facts” (id. at § 42.22(a)(2)) and identify “the relevance of the
`evidence to the challenge raised” (id. at § 42.204(b)(5)). With regard to the
`challenge to the claims as anticipated by Wheeler, Petitioner fails to support
`the challenge with adequate reasoning or explanation. In the claim charts
`presented by Petitioner to support its challenge to all the claims based on
`Wheeler, there is no explanation of the significance of the cited paragraphs
`in Wheeler. See Pet. 69–90. In each instance, the references to Wheeler
`include only two or more numbers, the exhibit number and one or more
`paragraph numbers. Id. An example of such cite is “(X1008, ¶105).” Id. at
`69. Petitioner does not provide sufficient explanation as to the significance
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`of the cited evidence. See id. at 69–90. Without any explanation from
`Petitioner, we are left to discern on our own, based on the cited passages in
`Wheeler, how the disclosure is relevant to the recited elements. We decline
`to do so.
`In light of the foregoing, we determine that the challenge based on
`Wheeler is not stated with particularity.
`
`b. Challenge Based on MTI 2009 Video
`Petitioner challenges all the claims of the ’281 patent as anticipated by
`and/or obvious over the MTI 2009 Video. Pet. 3, 69–90. For the reasons
`stated below, we determine that this challenge to the claims is not set forth
`with particularity because it is unclear what evidence Petitioner is relying
`upon to establish unpatentability.
`In the heading to this section of the Petition, Petitioner states, “Claims
`1-30 are Anticipated by Wheeler and Obvious in View of the MTI Video
`and the Knowledge in the Art.” Pet. 69. Notably, this heading does not state
`that the claims are anticipated by the MTI 2009 Video. However, in this
`regard, the heading is contradicted by the statement of this challenge on page
`3 of the Petition and the third sentence in the paragraph immediately below
`this heading which states, “the Video anticipates and/or renders obvious
`each limitation of Claims 1-30.” Id. At page 3, and outside of the heading
`on page 69, Petitioner does not refer to “Knowledge in the Art’ in reference
`to this challenge. This discrepancy in the way this challenge is set forth in
`the Petition contributes to the lack of particularity.
`And, although Petitioner contends the MTI 2009 Video anticipates all
`the claims of the ’281 patent, Petitioner relies on another document, the LP3
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`Manual (Ex. 1024), as disclosing or rendering obvious elements of the
`claims. Pet. 72; see also, id. at 78, 81, 83. For example, as to limitations in
`several claims, Petitioner asserts that “[t]he LP3 Manual shows that it
`would have been obvious to place two sets of contacts diametrically opposed
`(180º from one another) and circumferentially spaced about a ring on the
`base and puck.” Pet. 83 (claim chart for limitations of claims 13, 15, 19, 20,
`21, 24, 28, and 29). Petitioner, however, does not explain how the MTI
`2009 Video describes this subject matter, as required for anticipation. “[T]o
`demonstrate anticipation, the proponent must show ‘that the four corners of
`a single, prior art document describe every element of the claimed
`invention.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed.
`Cir. 2008) (quoting Xerox Corp. v. 3Com Corp., 458 F.3d 1310, 1322 (Fed.
`Cir. 2006)). Thus, the challenge to the claims as anticipated by the MTI
`2009 Video is legally and factually deficient, and it is unclear what evidence
`the Petitioner is relying upon.
`With regard to the alternative challenge based on obviousness in view
`of the MTI 2009 Video, the Petition also lacks particularity. See Pet. 3, 69.
`For example, in the claim charts (id. at 69–90), Petitioner states:
`The LP3 Manual confirms that it would have been obvious
`for the LP3 to receive power from a power source and have “four
`metal contacts inside each base [to] . . . contact the set of contacts
`on each puck.”
`
`
`* * *
`
`It would have been obvious to a POSITA to have had circuitry in
`the puck to pass power from the electrical contacts on the puck
`to the rechargeable battery and/or to pass power directly from the
`electrical contacts to the Smart Cable for charging the electronic
`device.
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`* * *
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`It would have been obvious for the LP3 to operate circuitry to
`communicate an alarm signal externally from the puck to trigger
`an alarm via its wireless transmitter in order to signal an alarm
`relating to the removal of the electronic device from the puck.
`
`
`* * *
`
`The LP3 Manual shows that it would have been obvious to place
`two sets of contacts diametrically opposed (180° from one
`another) and circumferentially spaced about a ring on the base
`and puck. . . . Such placement of contacts was further a trivial
`modification and obvious design choice in view of the prior art.
`
`
`* * *
`
`Various contacts, including outwardly extending ones, would
`have been obvious to use with the LP3 product.
`
`Id. at 72–73, 78, 83, 87 (footnote and citations omitted). These conclusory
`statements as to obviousness of separate elements of the claims are not
`supported by sufficient explanation or reasoning in the Petition to establish
`how or why the claimed invention as a whole would have been obvious.
`
`2. Improper Revival of Priority Application
`It is not in dispute that the ’837 application was abandoned and
`revived. Pet. 6–7; Prelim. Resp. 9–10. Petitioner contends that revival of
`the ’837 application was in error and cannot support Patent Owner’s priority
`claim. Pet. 5–9. The improper revival of the ’837 application is not within
`the limited statutory scope of a post-grant review. Therefore, we decline to
`consider this theory of unpatentability and to institute a post-grant review on
`
`17
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`this basis.
`Pursuant to 35 U.S.C. § 321(b), post-grant reviews are limited in
`scope to “any ground that could be raised under paragraph (2) or (3) of
`section 282(b) (relating to invalidity of the patent or any claim).” In a case
`directly on point, Aristocrat Technologies Australia PTY Ltd. v.
`International Game Technology, 543 F.3d 657 (Fed. Cir. 2008), the Federal
`Circuit determined that ‘“improper revival’ is not a cognizable defense in an
`action involving the validity or infringement of a patent” under 35 U.S.C.
`§ 282(b). Aristocrat, 543 F.3d at 659.
`Petitioner argues based on comments in a concurring opinion to a later
`Federal Circuit decision, Exela Pharma Sciences, LLC v. Lee, 781 F.3d 1349
`(Fed. Cir. 2015) (per curiam), that we should consider improper revival in
`the context of this post-grant review. Pet. 10. Contrary to Petitioner’s
`argument, Exela Pharma supports rejection of Petitioner’s improper revival
`argument. In Exela Pharma, the Federal Circuit held “that PTO revival
`actions are not subject to third party challenge under the APA
`[Administrative Procedure Act].” 781 F.3d at 1353. In a concurring
`opinion, Judge Dyk wrote that reconsideration of the Aristocrat decision was
`warranted, but Judge Dyk also noted that “[a]s we hold today, there is no
`APA review for improper revivals and no alternative mechanism for
`review.” Exela Pharma, 781 F.3d at 1355. In a separate concurrence, Judge
`Newman addressed Judge Dyk’s criticism of Aristocrat and specifically
`explained that consideration of improper revival is not a ground that can
`support institution of a post-grant review. Exela Pharma, 781 F.3d at 1353–
`1354. Judge Newman wrote:
`The Patent Act is explicit as to the grounds for challenges
`
`18
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`Patent 10,026,281 B2
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`
`to issued patents; these grounds do not include challenge to PTO
`discretionary actions
`in
`revival of deemed-abandoned
`applications. A PTO decision to excuse a tardy filing is not a
`statutory ground of invalidity or defense to infringement under
`35 U.S.C. § 282, nor is it a ground on which third persons can
`initiate and participate in post-issuance disputes, see Chapter 30
`(prior art citations and requests for reexamination), Chapter 31
`(inter partes review), and Chapter 32 (post-grant review).
`Rather it is an irregularity in prosecution that “becomes
`irrelevant after the patent has issued.” . . . The recently enacted
`America Invents Act (AIA), which provides new mechanisms for
`third party attacks on issued patents, did not change the principle
`that internal PTO procedures are not subject to third party
`collateral attack.
`
`Id. (citations omitted, emphasis added).
`
`Petitioner argues that we may consider its improper revival argument
`under 35 U.S.C. § 324(b), which provides that a post-grant review may be
`instituted if “the petition raises a novel or unsettled legal question that is
`important to other patents or patent applications.” Pet. 9. However, in light
`of controlling authority in Aristocrat and Exela Pharma, we do not believe
`that Petitioner’s argument presents a novel or unsettled legal question.
`In view of the above, we decline to reconsider the Office’s decision
`reviving the ’837 application.
`
`3. Summary
`Petitioner has failed to set forth the Anticipation and Alternative
`Challenges with particularity. In addition, Petitioner’s argument based on
`the alleged improper revival of the ’837 application is not properly before us
`in this proceeding. Therefore, institution of past-grant review based on the
`Anticipation and Alternative Challenges in the Petition is not warranted.
`
`19
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`C. Exercise of Discretion to Deny Institution
`If trial is instituted, the Board institutes as to all claims and all
`challenges or not at all. USPTO Guidance on the Impact of SAS on AIA
`Trial Proceedings (April 26, 2018) (“[T]he PTAB will institute as to all
`claims or none . . . if the PTAB institutes a trial, the PTAB will institute on
`all challenges raised in the petition.”). However, in circumstances under
`which instituting a trial would be an inefficient use of Board resources, the
`Board can exercise its discretion not to institute trial. NHK Spring Co., Ltd.
`v. Intri-Plex Techs., Inc., Case IPR2018-00752 (PTAB Sept. 12, 2018)
`(Paper 8) (precedential). Therefore, even if there is merit in one or more of
`the challenges in the Petition based on one or more of the references cited as
`evidence, in light of the deficiencies in the Petition discussed above, we
`exercise our discretion not to institute post-grant review.
`
`III. CONCLUSION
`Based on our discussion above of all the deficiencies in the Petition,
`we exercise our discretion not to institute post-grant review. Therefore, we
`do not institute post-grant review on any claims or any challenge to the
`claims.
`
`
`
`IV. ORDER
`Upon consideration thereof,
`it is ORDERED that:
`the Petition for post-grant review of claims 1–30 of U
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