Trials@uspto.gov
`571-272-7822
`
`Paper 31
`Date Entered: December 20, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTSINC.,
`Petitioner,
`
`V.
`
`BRADIUM TECHNOLOGIESLLC,
`Patent Owner.
`
`Case IPR2018-00952
`Patent 9,253,239 B2
`
`Before BRYAN F. MOORE, BRIAN J. MCNAMARA,and
`MINN CHUNG,Administrative Patent Judges.
`
`Opinion ofthe Boardfiled by Administrative Patent Judge MOORE
`
`Opinion Dissenting filed by Administrative Patent Judge CHUNG
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`

`

`IPR2018-00952
`Patent 9,253,239 B2
`
`BACKGROUND
`
`Unified Patents, Inc. (“Petitioner”) filed a petition, Paper 2 (“Pet.”), to
`
`institute an inter partes review of claims 1-25 (the “challenged claims”) of
`
`U.S. Patent No. 9,253,239 B2 (“the 239 Patent”). 35 U.S.C. § 311.
`
`Bradium Technologies LLC (‘Patent Owner’) timely filed a Preliminary
`
`Response, Paper 20 (“Prelim. Resp.””), contending that the Petition should be
`denied as to all challenged claims. We have authority to determine whether
`
`to institute an inter partes review under 37 C.F.R. § 42.4(a) and 35 U.S.C.
`§ 314, which provides that an inter partes review may not beinstituted
`unless the information presented in the Petition “showsthat there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least
`
`1 of the claims challengedin the petition.” Having considered the
`arguments andthe associated evidence presentedin the Petition and the
`Preliminary Response,for the reasons described below,weinstitute inter
`
`partes review.
`In its Preliminary Response, Patent Ownerasserted Petitioner had not
`namedall real parties-in-interest. Prelim. Resp. 1. In accordance with our
`authorization (see Papers 23 and 27) Petitonerfiled a Reply (Paper 26, “RPI
`Reply”) and Patent Ownerfiled a Sur-Reply (Paper 29, “RPI Sur-Reply”) on
`
`that the real parties-in-interest issue.
`
`REAL PARTIES IN INTEREST
`
`Patent Owncrargues that the Petition should be denied because
`Petitioner failed to identify all real parties-in-interest (RPIs). Prelim. Resp.
`9, In accordance with 35 U.S.C. § 312(a)(2) and 37 C.F.R. § 42.8(b)(1),
`
`Petitioneridentifies itself, Unified Patents, Inc., as the only real-party-in-
`
`2
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`

`

`IPR2018-00952
`Patent 9,253,239 B2
`
`interest (“RPI”). Pet. 2. Petitioner Unified Patents’s business model
`
`includes membership by companies. Prelim. Resp. 7. Patent Ownerasserts
`
`that two membersofPetitioner are RPIs that should have been namedin the
`
`Petition. RPI Sur-Reply 2. Specifically, Patent Owner does not contend that
`all membersofPetitioner are RPIs, rather Patent Owner“contendsonly that
`
`two specific members of Unified... are RPIs.” /d. Based onthatfailure to
`namethose alleged RPIs, Patent Owner requests that we dismissthe Petition.
`
`Prelim. Resp. 1, 10. Even if the members of Petitioner that Patent Owner
`cites as potential RPIs should be named RPIs,failure to identify them as
`such atthe time the Petition wasfiled does not require us to terminate the
`proceeding. This is because Patent Owner does notallege that inclusion of
`any specified memberofPetitioner as an RPI would have barredthe Petition
`under 35 U.S.C. § 315. RPI Sur-Reply 6.
`|
`Aside from a bar defense, under the Board’s precedential decision in
`
`Lumentum Holdings, Inc. v. Capella Photonics, Inc., our jurisdiction to
`consider a petition does not require a “correct” identification of all RPIs ina
`petition. Case IPR2015-00739,slip op. at 6 (PTAB Mar.4, 2016) (Paper
`38) (precedential); see also Blue Coat Sys., Inc. v. Finjan, Inc., Case
`IPR2016—01444,slip op. at 10 (PTAB July 18, 2017) (Paper 11) (“Evidence
`[of failure to identify all RPIs] is, at best, suggestive of an issue that is not
`jurisdictional.”).
`Indeed, later PTAB decisionsindicate that a petition may
`be corrected afterinstitution oftrial to adda real party in interestif
`warranted without assigning a newfiling date to the petition. E.g., Axon EP,
`Inc.v. Derrick Corp., Case IPR2016—-00642,slip op. at 3 (PTAB Nov.21,
`
`2016) (Paper 17).
`
`

`

`IPR2018-00952
`Patent 9,253,239 B2
`
`Principles ofLaw
`
`A petition for inter partes review “maybe considered onlyif... . the
`petition identifies all real parties-in-interest.” 35 U.S.C. § 312(a)(2). When
`a patent ownerprovidessufficient evidencepriorto institution that
`reasonably brings into question the accuracyofa petitioner’s identification
`of RPIs, the overall burden remains with the petitioner to establish that it has
`
`complied with the statutory requirementto identify all RPIs. Zerto, Inc. v.
`EMCCorp., Case No. TPR2014-01295, slip op. at 6-7 (PTABFeb. 12,
`
`2015) (Paper 31).
`“{A]t a general level, the ‘real party-in-interest’ is the party that
`desires review of the patent.” Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48,756, 48,759 (Aug. 14, 2012) (“Trial Practice Guide”). “Whether a
`party whois not a namedparticipantin a given proceeding nonetheless
`constitutes a ‘real party-in-interest’ .
`.
`. to that proceedingis a highly fact-
`dependentquestion” with no “brightline test,” and is assessed “on a case-
`by-case basis.” Trial Practice Guide, 48,759 (citing Taylor v. Sturgell, 553
`U.S. 880, 893-95 (2008)). A commonconsideration is whether the non-
`party exercised or could have exercised control over the proceeding. Trial
`Practice Guide, 48,759 (citing Charles Alan Wright, Arthur R. Miller &
`Edward H. Cooper, Federal Practice & Procedure (“Wright & Miller’)
`§ 4451). The conceptof control generally meansthat “the nonparty has the
`actual measure of control or opportunity to control that might reasonably be
`
`expected betwecn two formal coparties.” Jd.
`Actual controlis not the only measure— “[d]etermining whether a
`non-party is a ‘real party in interest’ demandsaflexible approachthat takes
`into account both equitable and practical considerations, with an eye toward
`
`4
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`IPR2018-00952
`Patent 9,253,239 B2
`
`determining whetherthe non-party is a clear beneficiary that has a
`
`preexisting, established relationship with the petitioner.” Applications in
`Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed. Cir. 2018)
`
`(“AIT’). Relevant factors in the RPI analysis include “Party A’s relationship
`with the petitioner; Party A’s relationshipto the petition itself, including the
`
`nature and/or degree of involvementin the filing; and the nature of the entity
`
`filing the petition.” Trial Practice Guide, 48,760.
`
`. We acknowledgethat, prior to AJT, Board decisionscited by Patent
`Owner found Petitioner’s members were not RPIs primarily due to a lack of
`control over the IPR by the member.’ Prelim. Resp. 10. Wealso
`
`acknowledge two Board cases decided post-AJ/Tcited by Patent Ownerfind
`Petitioner’s members are not RPIs under the broader A/T rubric.’ RPI Sur-
`
`Reply 4. Patent Ownerasserts these cases were wrongly decided. Jd. None
`of those cases is designated precedential and we decide this case on its own
`
`merits.
`
`Arguments
`There appears to be no dispute to Petitioner’s assertion thatit
`
`“controlled, directed and fundedthis petition, did not communicate with any
`
`' For example, Patent Ownercites Unified Patents Inc. v. Qurio
`Holdings, Inc., IPR2015-01940, Paper 7 at 26 (PTABApr.13, 2016)
`(Comcastnot real party-in-interest due to lack of “actual proof that Comcast
`exerted control over the Petition.”) and Unified Patents Inc. v. American
`Vehicular Sciences, LLC, IPR2016-00364, Paper 13 at 6 (PTAB June 27,
`2016) (‘Patent Owner provides no evidence that any other entity actually is
`controlling this particular proceeding, or is providing direct financing for
`this particular proceeding.”’)
`* Patent owner cites Unified Patents Inc. v. Realtime Adaptive
`Streaming, LLC, IPR2018-00883 (Oct. 11, 2018); Unified Patentv.
`Plectrum LLC, IPR 2017-01430 (Paper 30, Nov. 13, 2018).
`5
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`IPR2018-00952
`Patent 9,253,239 B2
`
`of its membersregardingfiling, and that none of Unified’s members have
`been sued by Braduim.” RPI Reply 2. As explained below, considering
`these facts andthetotality of the circumstances presented in the case, we do
`
`not find that the two membersofPetitioner cited by Patent Owner were
`
`RPIs.
`
`Patent Owner’s arguments are premised on its contention that
`
`In [AIT], the court took special note of the following facts, among
`others: (1) ‘RPX, unlike a traditional trade association, is a for-
`profit company whoseclients pay for its portfolio of ‘patent risk
`solutions’’ (/d.); (2) one of RPX’s strategies is ‘the facilitation of
`challenges to patent validity" to ‘reduce expenses for [RPX’ s]
`clients’ (/d. ); (3) the fact that RPX maynotdiscuss specific IPRs
`with clients may be for the purpose of circumventing the RPI
`requirement. /d., 1352, n.4. Collectively, these facts ‘imply that
`RPX can and does file IPRs to serve its clients’
`financial
`interests, and that a key reason clients pay RPX isto benefit from
`this practice in the event they are sued by an NPE.’ Jd.
`Prelim. Resp. 5. In other words, Patent Ownerasserts that the business
`model of RPX implies that RPX files IPRs to serve its clients’ financial
`interest. We consider additonal factors because A/T doesnotstate that filing
`
`RPIs to serve a clients (members) financial interest alone is a relationship
`
`that makes a client an RPI; rather, the court remandedfor the Board to
`
`consider that and other questions. A/T, 897 F.3d at 1352-54. Based onits
`reading of AIT Patent Ownerlists several similarities between RPX and
`Petitioner. Prelim. Resp. 5—9. For example, Patent Ownerasserts
`RPX wasa for-profit companyset up to help paying members by
`filing IPRs to help them avoid litigation and to reducc their
`expenses, and AIT found that this alone implied that “RPX can
`and doesfile IPRsto serveits clients’ financial interests, and that
`a key reasonclients pay RPXis to benefit from this practice... .’
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`

`

`IPR2018-00952
`Patent 9,253,239 B2
`
`AIT, 897 F.3d at 1352. There is no difference between Unified
`and RPXinsofar as this implication is concerned.
`
`RPI Sur-Reply 5 (emphasis omitted).
`
`Specifically, Patent Ownerasserts that, among other things: A
`
`“unique and importantpart of Unified Patents’ overall strategy is filing inter
`
`partes review petitions to undermine currentassertions based on invalid
`patents by large nonpracticing entities against companies in the technology
`
`industry ... and to deter future claims in the same space” (Prelim. Resp. 5
`
`(quoting Ex. 2025)); Unified Patents has Zones focused on a particular
`
`industry (id. at 6); members of Unified Patents benefit by avoiding statutory
`
`bar and estoppel (id. at 6-7); Unified Patents requested a license from
`
`Bradium (id. at 7); “Unified Patents tightly Aligns its deterrent solution with
`
`its participating companies” including Google (one of its two founding
`members) (id. at 8 (quoting Ex. 2020)); over half of Unified Patents’ filed
`
`IPRs were on patents asserted against its members (id.); members of Unified
`
`Patents such as Googleare potential licensees and had licensing dicussions
`
`with Bradium (id. at 9).
`
`In response, Petitioner argues that Patent Ownerinterprets A/T too
`broadly and ignores the manyfacts that distinguish the circumstances
`
`present here from those in AJT. RPI Reply 1. We agree. Patent Owner
`argues “A/T found that [RPXs business model alone] implied that ‘RPX can
`and doesfile IPRs to serveits clients’ financial interests, and that a key
`
`reason clients pay RPX isto benefit from this practice... .” RPI Sur-Reply
`5 (citing AIT, 897 F.3d at 1352). Nevertheless, in its Sur-Reply, Patent
`Ownerdid not quote the end of that sentence in which the court states “that a
`key reason clients pay RPXis to benefit from this practice in the event they
`
`

`

`IPR2018-00952
`Patent 9,253,239 B2
`
`are sued by an NPE.” AIT, 897 F.3d at 1352 (emphasis added). Here,
`
`neither of the alleged RPIs has been sued for infringement. Thus, even if
`
`Petitioner operates essentially the same as RPX, A/Tdid not find that RPX’s
`
`business model, without regard to any other facts, would create a real party
`
`in interest relationship with the two memberscited by Patent Owner.
`
`.
`Analysis
`Atthis stage of the proceeding, and based onthe facts in the current
`
`record, we are persuaded that Petitioner has carried its burden in complying
`
`with 35 U.S.C. § 312(a) and identifying all RPIs.
`
`Weagree with Petitioner that Patent Owner has not shownthat the
`
`facts involved here are sufficiently similar to the facts in AJT. While the
`
`court in AJT looked to the fact that RPX wasa “for-profit company whose
`
`clients pay for its portfolio of ‘patent risk solutions,’”it did notend its
`
`analysis there. AIT, 897 F.3d at 1351. Instead, it proceeded further to
`
`ascertain the nature of the relationship between Salesforce, RPX and the
`
`specific IPRsfiled, andthe nature of the benefit to Salesforce from RPX’s
`
`IPRs. Finding extensive and specific ties between the twoparties as they
`
`relate to the IPRs, the Federal Circuit ultimately vacated the Board’s
`
`decision and remandedfor further proceedings to consider “the full range of
`
`relationships under § 315(b) and the commonlaw that could make
`
`Salesforce a real party in interest.” AIT, 897 F.3d at 1358.
`Westart then by analyzing the nature and degreeofthe relationship
`between Petitioner, the memberscited by Patent Owner, and the filing of
`
`this IPR. As noted above,Petitioner’s business modeloffiling IPRs as a
`generalpractice to clear certain technology areas or “Zones” from non-
`practicingentity patents that are asserted in that technology area
`
`8
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`IPR2018-00952
`Patent 9,253,239 B2
`
`(specifically, over half of Unified Patent’s filed IPRs were on patents
`
`asserted against its members (Prelim. Resp. at 8)) is similar to RPX, whichis
`
`a for-profit companythatalso files IPRs to serve its members and claimsits
`
`interests are “100% aligned” with those members. A/T, 897 F.3d at 1343,
`
`1352. Additionally, we consider the fact that Petitioner, by filing IPRs, may
`
`defray costs to individual membersif they were forcedto file their own
`
`IPRs. As Patent Ownersuggests, Petitioner files IPRs to encourage
`
`members“to continue paying membership .
`
`.
`
`. so that Unified’s owners may
`
`continue to enjoy the profits derived from such fees.” Prelim. Resp. 9.
`
`Nevertheless, as we explained above, this business model aloneis not
`
`enough to make any individual member an RPI. Patent Ownerdoes not
`appear to argue thatit does becauseit does not arguethatall members of
`
`Petitioner are RPIs. RPI Sur-Reply2.
`
`Asto the relationship between the two membersatissue, Petitioner,
`
`and the filing of this IPR, Patent Ownerpoints to no evidence that any
`memberincluding the two at issue desired review of the challenged patent.
`RPI Reply 1. For example, although two members havehadlicensing
`discussions regarding the ’239 patent (RPI Sur-Reply 3), Patent Owner has
`
`not filed an infringementaction against any of Petitioner’s members. Thus
`
`no member would be time barred from filing its own IPR. RPI Reply 9.
`
`Patent Ownersuggests that, because it previously sued Microsoft on
`the ’239 patent, licensing discussions between the two members and Patent
`
`Ownercreate an intercst for Petitioner to file IPRs on behalf of those
`
`members andis a “clear benefit” recognized by A/T to those members for
`
`suchafiling. RPI Sur-Reply 3. We disagree. Those membersarefree to
`
`file their own IPR and donot needPetitioner to do so for them.
`
`9
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`

`

`IPR2018-00952
`Patent 9,253,239 B2
`
`Additionally, a benefit to a member from an IPRfiled by Petitoiner mustbe
`
`weighed against the benefit that memberreceives from filing its own IPR in
`which that membercan controlthe prior art references chosen, the counsel
`
`used, the amount of moneyspent, and whetherornotto settle the case.
`
`In AIT, Salesforce, the purported RPI, made a payment to RPX shortly
`
`before the filing of the IPR, Salesforce discussed the patent andrelated
`litigation with RPX and a shared board member, RPX negotiated a license
`on behalf of Salesforce, and more importantly, Salesforce was time barred
`from filing its own IPR. See AIT, 897 F.3d at 1340-42. Those
`circumstancesare not presentin this case.
`The only arguably unmitigated benefit that Petitioner’s members incur
`is the avoidance of the estoppel implicationsof an IPR. See RPI Sur-Reply
`9. We do notfind that avoidance of the estoppel implications of an IPR
`
`alone, without otherfacts, is sufficient to find that the two members would
`
`benefit from the present IPR such that they should be considered an RPI.
`Such a benefit speaks to a party being a general non-specific beneficiary,
`rather than a “clear beneficiary” under AIT (897 F.3d at 1351) and would
`apply to any entity seeking review of the ’239 patent, including members
`other than the two memberscited by Patent Owner, andalso to non-
`
`members of Petitioner.
`
`Similarly, Petitioner emphasizes that it does not work withits
`members to resolvetheir litigations; no significant payments were made
`shortly before the Petition was filed; Petitioner does not share any board
`membersand has no corporate relationships with any of its members
`(beyond membershipitself); there was no offer to, or request by, members
`for Petitioner to reach out to Patent Ownerregarding anylitigation;
`
`10
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`IPR2018-00952
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`
`Petitioner does not communicate with any memberregardingits desires or to
`coordinate strategies, and to Petitioner’s knowledge no members have been
`threatened with litigation. RPI Reply 8~9.
`
`Asnoted above,there is no evidencethat any of Petitioner’s members
`
`controlled, directed, or directly financed this proceeding. The members
`cited by Patent Owner havenot been accusedof infringing the ’239 Patent.
`RPI Reply 9; RPI Sur-Reply 3. There is no evidence that there was any
`communicationat all between Petitioner and the two memberscited by
`
`Patent Ownerregarding filing this Petition, or that the members even knew
`beforehandofPetitioner’s intentto file this Petition. Additionally, there is
`no evidence here, as there was in AJT, of communications between Petitioner
`and any of its members regarding the underlying litigations involving the
`239 Patent. See AIT, 897 F.3d at 1340-42.
`Similarly, there is no evidence here, as there was in A/T,that the two
`membersshare officers or board memberswith Petitioner, or have any
`corporate relationships with Petitioner aside from their membership.
`Id.
`There also is no evidence ofa “very significant paymentshortly before”this
`IPR wasfiled. A/T, 897 F.3d at 1342. Perhaps most significantly, there is
`no evidence that any member, including the two members, desires review of
`the ’239 Patent but is time-barred from filing an IPR—a fact that was crucial
`in AIT. Id. at 1353 (“Given that... any IPR petitions Salesforce might have
`wanted to file would have been time-barred,this evidenceat least suggests
`that RPX mayhave filed the three IPR petitions, in part, lo benefit
`Salesforce.”), 1355 (“{T]he evidence submitted indicates the company’s
`understanding that the very challenges to validity included in the IPR
`petitions were challenges Salesforce would like to have made if not time-
`
`11
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`IPR2018-00952
`Patent 9,253,239 B2
`
`barred from doing so.”), 1356 (no evidence contradicts “AIT’s theory that
`
`RPX filed IPR petitions challenging the two patents asserted in the
`
`Salesforce action to benefit Salesforce, where Salesforce itself was time-
`
`barred from filing petitions”).
`
`In AIT, these accumulated factors raised a concern that RPX’s actions
`
`appearedtailored to benefit Salesforce specifically. This, combined with the
`fact that RPX advertisesitself as an “extension of a client’s in-house legal
`
`team,” not only demonstrated a deep and extensive tie between RPX and
`
`Salesforce, but also raised the issue of whether RPX wasacting as an
`
`attorney-in-fact on behalf of Salesforce. AIT, 897 F.3d at 1357. Here, there
`is no assertion of an attorney-client relationship between Petitioner and the
`two members cited by Patent Owner. Unlike A/T, the circumstances here do
`
`not warrantcalling this into question. There is no evidence of any member
`having had communications with Petitioner regarding any underlying
`litigation involving the ’239 Patent. No memberhashadits petitions denied.
`No memberis time-barred from filing its own IPRs. Thus, the evidence
`
`does not point to any specific member whoseties with Petitioner are so
`extensive as to imply that Petitioner filed this IPR at the behest of that
`memberorthat it was acting as a proxy on behalf of that member.
`
`Thus, beyond the general benefit received from Petitioner’s common
`practice offiling IPRs in relevant technologyareas and, as explained above,
`the mixed,at best, benefit based on the fact that the two members have had
`
`licensing discussions with Patent Owner, the evidence doesnot point to any
`further specific benefits the two memberscited by Patent Owner would have
`
`received from Petitioner’s actions in return for the membership.
`
`12
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`IPR2018-00952
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`Finally, despite that fact that Patent Ownerstates that it does not argue
`that all of Petitioner’s members were RPIs, Patent Ownerasserts that
`
`Petitioner’s business modelitself showsthat it uses willful blindness to
`
`represent its members, thus, making those members RPIs. RPI Sur-Reply 5-
`6. The court in AITstated “[t]he evidence might actually indicate that RPX
`
`workedto ascertain, with a strong degree of confidence,its client’s desires,
`while taking last-minute efforts to avoid obtaining an express statement of
`such desires. The law has a label for this: willful blindness.” AJ7, 897 F.3d
`
`at 1355. AIT states “two basic requirements: (1) the defendant must
`
`subjectively believethat there is a high probability that a fact exists and (2)
`the defendant must take deliberate actions to avoid learning ofthat fact.” Jd.
`
`(in parenthetical, citation omitted)). Here, we do not find willful blindness
`applies because there is no evidence that Petitioner believed with a “high
`probability” that the two memberscited by Patent Ownerwishedtofile an
`IPR. The factof licensing discussions between Petitioner and a member,
`
`without more, does not suggest with a high probability that the member
`wantedto file an IPR but rather only suggests the member wasinterestedin
`
`or offered a license. Prelim Resp. 9; Ex. 2037 J{ 8-9. AJT focused on the
`
`fact that Salesforce was barred from filing an IPR. Jd. The two members
`
`cited by Patent Ownerare nottime barred.
`In sum, wefind the evidence on this record demonstrates the
`relationships between the two memberssingled out by Patent Owner and
`Petitioner to be far less extensive than between RPX and Salesforce in AIT,
`
`and we agree with Petitionerthat its particular members are not unnamed
`RPIs in this case. Accordingly, at this stage of the proceeding, we are
`
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`IPR2018-00952
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`persuadedthat Petitioner has carried its burden in complying with 35 U.S.C.
`
`§ 312(a).
`
`PRIOR AND PENDINGLITIGATION
`
`The Petition states that the °239 Patent and three other patents in the
`
`same family, U.S. Patent Nos. 7,139,794 B2 (’794 patent), 7,908,343 B2
`
`(343 patent), and 8,924,506 B2 (506 patent), are being asserted against
`
`Petitioner in a patent infringement lawsuit brought by Patent Owner,
`
`Bradium Technologies v. Microsoft, 1:15-cv-00031-RGA,dismissed
`
`October 18, 2017. Pet. 1-2. Petitioner states that Microsoft filed IPR2016-
`
`01897 challenging the ’239 patent. Jd. at 2. Petitioner also identifies
`
`petitions for inter partes review ofthe related patents. Jd.
`
`STATUTORY DISCLAIMER
`
`After the filing of the Petition, Patent Ownerfiled a statutory
`
`disclaimer of claims 1-19 and 21-25. Ex. 2027; see Prelim. Resp. 1.
`
`Patent Ownercontendsthat “only claim 20 remainsfor the Board’s
`
`consideration here.” /d. Based on this disclaimer, the ’239 patentis to be
`
`treated as though claims 1-19 and 21-25 never existed. Vectra Fitness, Inc.
`
`v. TINWK Corp., 162 F.3d 1379, 1383 (Fed. Circ. 1998) (“This court has
`
`interpreted the term ‘consideredaspart of the original patent’ in section 253
`
`to mean thatthe patentis treated as though the disclaimed claims never
`
`existed.”). We also observe that our rules state that “[n]Jo inter partes review
`
`will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e).
`
`In considering Federal Circuit precedent and ourrules, we conclude
`
`that we cannotinstitute a trial on claims that have been disclaimed, and,
`thus, no longer exist. That conclusion is consistent with other panel
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`IPR2018-00952
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`decisions in inter partes review proceedings that addressed nearly identical
`
`circumstances as we do here. See, e.g., Vestas-American Wind Tech., Inc.
`
`and Vestas Wind Sys. A/S v. Gen. Elec. Co., Case IPR2018-01015, Paper 9,
`
`12-14 (PTAB Nov. 14, 2018) (“the 71015 IPR”). We share the same view
`
`as the panel in the ’1015 IPR that such a conclusionis consistent with the
`
`statutory scope ofinter partes review aslaid out in 35 U.S.C. §§ 311(b) and
`318(a), and is not at odds with the Supreme Court’s recentdecision in SAS.
`
`See id. Accordingly, we treat claims 1-19 and 21-25 as having never been
`
`part of the ’239 patent, and Petitioner cannot seek inter partes review of
`
`those claims.
`
`DISCRETIONARY NON-INSTITUTION UNDER35 U.S.C.§ 314
`
`Patent Ownerasserts that “The Board should exercise its discretion
`
`under 35 U.S.C. §325(d) to deny Unified’s petition.” Prelimi Resp. 11. As
`
`background, Microsoft filed a petition IPR2016-01897, “Microsoft
`
`Petition’) challenging the following claims of the ’239 patent:
`
`
`
`
`
`1-20, 23-25
`
`35 U.S.C. § 103(a)
`
`21,22
`
`35 U.S.C. § 103(a)
`
`
`
`Challenge
`Obvious over Reddy
`and Hornbacker
`
`
`
`
`Hornbacker, and
`Loomans
`
`
`IPR2016-01897 (“Microsoft IPR”), Inst. Dec. 8, Paper 17. IPR2016-01897
`
`wasterminated by settlement of the parties on October 25, 2017. IPR2016-
`
`3 SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018) (PTAB may not
`use partial institutions) (“SAS”).
`
`15
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`

`

`IPR2018-00952
`Patent 9,253,239 B2
`
`01897, Paper 31. Here, Petitioner asserts a ground of obviousness against
`
`claim 20 of the ’239 patent over Reddy, Hornbacker, and Rosasco.
`
`In the Microsoft IPR, involving an entirely different Petitioner, prior
`to SAS, we deniedinstitution as to claim 20at issue here, and instituted on
`all other claims. Subsequently, we terminated the proceedingasto the other
`
`claims before issuing a final written decision, thus those grounds were not
`
`fully presented to the Office. We determine that 35 U.S.C. §325(d) is not
`implicated here where the ground andthe Petitioner are different than in the
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`Microsoft IPR.
`
`Nevertheless, Patent Ownerpresents arguments that are relevant to
`
`discretionary non-institution under 35 U.S.C. § 314(a), including that
`Petitioner presented a Petition obviously copied from a prior Petition and
`used that prior Petition as a roadmap to improve.andfile this Petition.
`
`Prelim. Resp 11-14.
`
`Institution of inter partes review is discretionary. See 35 U.S.C.
`§ 314(a) (authorizing institution of an inter partes review underparticular
`circumstances, but not requiring institution under any circumstances);
`37 C.E.R. § 42.108(a) (stating “the Board may authorize the review to
`proceed”) (emphasis added); 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”).
`When determining whetherto exercise our discretion under § 314(a),
`we considerthe followiny non-exhaustive factors:
`1.
`whether the samepetitioner previously filed a petition directedto the
`
`same claimsof the same patent; ©
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`16
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`IPR2018-00952
`Patent 9,253,239 B2
`
`2.
`whetheratthe time offiling of the first petition the petitioner knew of
`the priorart asserted in the second petition or should have knownofit;
`3.
`whetherat the time offiling of the secondpetition the petitioner
`already received the patent owner’s preliminary responsetothefirst petition
`or received the Board’s decision on whetherto institute review in the first
`
`petition;
`4.
`the length of time that elapsed betweenthe time the petitioner learned
`ofthe prior art asserted in the secondpetition andthe filing of the second
`
`petition;
`5.
`whetherthe petitioner provides adequate explanationfor 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
`
`the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`7.
`determination not later than 1 year after the date on which the Director
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`notices institution of review.
`
`Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357,
`slip op. 15-16 (PTAB Sept. 6, 2017) (Paper 19) (precedential)* (hereinafter,
`“General Plastic”) (citing NVIDIA Corp. v. Samsung Elec. Co., IPR2016-
`00134, slip op. 6-7 (PTAB May4, 2016) (Paper9)). 5
`
`4 General Plastic was designated precedential on October 18, 2017.
`5 These factors are “a non-exhaustivelist” and “‘additional factors may
`arise in other cases for consideration, where appropriate.” General Plastic
`slip op at 7, 8. For example, where a subsequentpetition is filed by a
`differentpetitioner, the Board has taken into account the following
`additional considerations, which may berelevant to determining whetherto
`exercise discretion based on § 314(a): potential prejudice to the subsequent
`petitionerif institution is denied and the pending instituted proceedings
`17
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`

`

`IPR2018-00952
`Patent 9,253,239 B2
`
`These General Plastic factors typically have been usedto analyze
`
`situations in which the sameparty files multiple petitions challenging the
`
`same patent. We recognize that our discretion under 35 U.S.C. § 314(a),
`however,is not limited to situations where the samepartyfiles multiple
`petitions. While only the first General Plastic factor presumes the petitions
`are filed by the same party, other factors also rely heavily on that fact.
`Nevertheless, we analyze the General Plastic factors’ applicationto the facts
`and circumstances presentin this case, in which a different petitioner filed a
`petition challenging a patent that had been challenged already by previous
`petitions. See, e.g., Shenzhen Silver Star Intelligent Tech. v. iRobot Corp.,
`Case IPR2018-00761, slip op. at 9-12, (dissent) 16-19 (PTAB Sept. 5,
`2018) (Paper 15) (weighing General Plastic factors for a denial ofinstitution
`in view ofan earlier challenge to the same patent by a different petitioner
`
`involving thefirst petitioner are terminated; and whether multiple petitions
`filed against same patentis a direct result of Patent Owner'slitigation
`activity. See Lowes Cos. Inc., v. Nichia Corp., Case IPR2017-02011, slip
`op. 19 (PTAB March 12, 2018) (Paper13) (“Denial of the Petition in part
`would prejudice the Petitioner in this proceeding should the Vizio Petitions
`be resolved by settlement.”); Samsung Elecs. Amer., Inc. v. Uniloc
`Luxembourg S.A., Case IPR2017-01797, slip op. 33-34 (PTAB Feb.6,
`2018) (Paper 8) (recognizing the purpose ofthe availability of inter partes
`review to parties accused of infringement, and finding Patent Owner's
`complaint about multiple petitions filed to challenge the same patent
`unpersuasive “when the volume appearsto be the direct result of its own
`litigation activity”). These factors, where present, generally weigh toward
`institution but do not appearto have becn uscd to weigh againstinstitution.
`For example, there is no requirementfor a Petitioner to be sued for
`infringementto file an IPR so the lack of a suit would not weigh against
`institution. Thus, these factors are not appropriate here where the prior IPR
`was denied as to the claim at issue here and this Petitioner has not been sued
`for infringement.
`
`18
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`

`IPR2018-00952
`Patent 9,253,239 B2
`
`whowassimilarly situated to the current Petitioner, e.g. the two Petitioners
`
`were co-defendants in a previously filed litigation) (Si/ver Star); Samsung
`
`Elecs. Co. v. Elm 3DS Innovations, LLC, Case IPR2017-01305, slip op. at
`
`16-23 (PTAB Oct. 17, 2017) (Paper 11) (weighing General Plastic factors
`
`to deny institution in view of fourteen prior challenges by the same
`
`Petitioner in which claim construction and other issues were decided by the
`
`Board andalso in view ofan earlier challenge to the same patent by a
`
`different petitioner).
`
`A central issue addressed by the General Plastic factors is balancing
`
`the equities between a petitioner and a patent owner wheninformation is
`
`available from prior Board proceedings for a subsequent proceeding.
`General Plastic, slip op. at 15-19. Accordingly, we use the non-exhaustive
`
`GeneralPlastic factors as a framework for assessing, under the specific
`
`circumstancesofthis case, the equities of allowing the Petition filed by the
`
`different Petitioner that challenges essentially the same claims of the ’239
`
`patent to proceed to trial. We address each of these factors in turn,