HTC Corporationv.NFC Technology, LLC

Patent Trial and Appeal Board

Jul 6, 2015

11302291 (P.T.A.B. Jul. 6, 2015)

Trials@uspto.gov Paper 11
Tel: 571-272-7822 Entered: July 6, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

HTC CORPORATION and HTC AMERICA, INC.,
Petitioner,

v.

NFC TECHNOLOGY, LLC,
Patent Owner.
_______________

Case IPR2015-00384
Patent 7,665,664 B2
_______________

Before JAMES B. ARPIN, NEIL T. POWELL, and
BART A. GERSTENBLITH, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
A. Background
HTC Corporation and HTC America, Inc. (“Petitioner”) filed a
Petition (Paper 1, “Pet.”) to institute an inter partes review of claims 13–15
and 19 of Patent No. US 7,665,664 B2 (Ex. 1001, “the ’664 patent”)
pursuant to 35 U.S.C. §§ 311–319. Pet. 1, 60. NFC Technology, LLC
(“Patent Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
We have jurisdiction under 35 U.S.C. § 314,1 which provides that an inter
partes review may not be instituted “unless . . . there is 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).
Petitioner relies upon the following references, document, and
declaration in support of its grounds for challenging claims 13–15 and 19 of
the ’664 patent:
Exhibit Nos. References, Document, and Declaration
1003 Declaration of Dr. Emmanouil Tentzeris, executed Dec. 5,
2014
1004 Patent No. US 7,261,240 B2 to Akiho et al. (“Akiho”)
1005 Patent No. US 7,603,090 B2 to Amtmann et al.
(“Amtmann”)
1006 ECMA International, Near Field Communication Interface
and Protocol (NFCIP-l) (Dec. 2002) (“ECMA-340”)
1007 Patent Application Publication No. US 2003/0169152 A1 to
Charrat et al. (“Charrat”)
1008 Patent No. US 8,384,519 B2 to Kuhl et al. (“Kuhl”)
1012 Patent Application Publication No. US 2003/0141989 A1 to
Arisawa et al. (“Arisawa”)

1 See Section 6(a) of the Leahy-Smith America Invents Act (“AIA”), Pub. L.
No. 112-29, 116 Stat. 284, 300 (2011).
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Petitioner challenges dependent claims 14, 15, and 19 (Pet. 3), but
Petitioner also argues that claim 13 is rendered unpatentable under Akiho
(id. at 12–26), Amtmann (id. at 31–39), Amtmann and ECMA-340 (id. at
44–46), and Charrat and Kuhl (id. at 49–57). See id. at 60 (“This Petition
demonstrates that there is a reasonable likelihood that Petitioners will prevail
in their challenge of the patentability for Claims 13, 14, 15, and 19.”
(emphasis added)). In view of the same or substantially the same arguments
presented and references applied in an earlier Petition for inter partes
review, filed by the same Petitioner against the same patent, we do not
institute inter partes review on any challenged claim.
B. Related Proceedings
Petitioner indicates that the ’664 patent is the subject of the following
co-pending U.S. district court case: NFC Tech., LLC v. HTC Corp.,
No. 2:13-cv-1058 (E.D. Tex.), filed December 5, 2013. Pet. 1. In addition,
on July 22, 2014, Petitioner filed an earlier Petition, in IPR2014-01199, for
inter partes review of challenged claim 13 of the ’664 patent against Patent
Owner. On February 4, 2015, we instituted inter partes review with respect
to claim 13 in IPR2014-01199. HTC Corp. v. NFC Tech., LLC, Case
IPR2014-01199, slip op. at 17 (PTAB Feb. 4, 2015) (Paper 10). Petitioner
filed the present Petition on December 5, 2014.
C. The ’664 Patent
The ’664 patent is directed to a method for supplying a power supply
voltage to a contactless integrated circuit reader when the reader is in a
passive operating mode. Ex. 1001, Abstract. Figure 6 of the ’664 patent,
including our annotations, is reproduced below:
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Ex. 1001, Fig. 6. As depicted in annotated Figure 6, reader RD1 is provided
with auxiliary supply voltage Vccr that is produced “using an alternating
voltage taken off at a higher impedance point of the antenna circuit,
preferably using the voltage Vcd taken off on terminals C and/or D of the
antenna coil L1, instead of producing the voltage Vccr using the voltage Vab
present on the [input] terminals A, B of the antenna circuit.” Id. at col. 8, ll.
27–32 (emphasis added). Thus, the auxiliary supply circuit is configured to
supply the auxiliary supply voltage, e.g., Vccr, using an alternating supply
voltage induced in the antenna circuit, e.g., at terminal C and/or D, as recited
in claim 13.
D. Challenged Claims
As noted above, Petitioner challenges independent apparatus claim 13
of the ’664 patent, as well as claim 14, which depends directly from claim
13, and claims 15 and 19, which depend from claim 14. Pet. 3, 60.
Claims 13–15 and 19 of the ’664 patent are reproduced below with disputed
limitations emphasized:
13. An inductive coupling reader having an active operating
mode and a passive operating mode, the inductive coupling
reader comprising:
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an antenna circuit substantially tuned to a working
frequency, the antenna circuit having at least one input
terminal, at least one capacitor, and an antenna coil having two
end terminals, the capacitor and the coil being chosen so that
the antenna circuit is substantially tuned to the working
frequency and has, at the working frequency and as measured
with respect to the at least one input terminal, a first
impedance;
an emitter circuit that applies to the input terminal of the
antenna circuit, when the reader is in the active operating mode,
an excitation signal oscillating at the working frequency, so that
the antenna coil emits a magnetic field, and that modulates the
excitation signal to send data; and
an auxiliary supply circuit coupled to the antenna circuit
and configured to supply an auxiliary supply voltage of the
reader using an alternating voltage induced in the antenna
circuit by an external magnetic field.
14. The reader according to claim 13, comprising a circuit
for applying to the input terminal of the antenna circuit, in the
passive operating mode, a control signal having an electric
potential by default such that the antenna circuit has a higher
impedance point at which its impedance is higher than the first
impedance, and wherein the auxiliary supply circuit is coupled
to the higher impedance point without going through the input
terminal of the antenna circuit.
15. The reader according to claim 14, wherein the auxiliary
supply circuit is coupled to at least one terminal of the antenna
coil.
19. The reader according to claim 14, wherein the auxiliary
supply circuit comprises at least one rectifying diode that
rectifies the alternating voltage and a capacitor that low-pass
filters the rectified voltage.
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Ex. 1001, col. 16, l. 40–col. 17, l. 3, col. 17, ll. 14–17 (emphases
added).
E. Claim Construction
Petitioner proposes constructions for only two terms: “active
operating mode” and “passive operating mode” from independent claim 13.
Pet. 9. Petitioner does not propose constructions for any additional terms of
challenged claims 14, 15, or 19. Moreover, Petitioner proposes the same
constructions for these terms that the panel did not adopt in IPR2014-01199
(HTC Corp. v. NFC Tech., LLC, Case IPR2014-01199, slip op. at 8–10
(PTAB Feb. 4, 2015) (Paper 10)), but provides here little or no argument in
support of its constructions. Pet. 9–10. Patent Owner contends that we
should use the same constructions that Patent Owner proposed and the panel
adopted in IPR2014-01199, and reproduces its contentions from its
Preliminary Response in the earlier case here. Prelim. Resp. 23–33.
Because we do not reach the merits of Petitioner’s arguments with
respect to challenged claims 13–15 and 19, we determine that no claim terms
require express construction.
II. ANALYSIS
A. 35 U.S.C. § 325(d)
We have discretion to decline to institute inter partes review. See 35
U.S.C. § 314(a). In particular, according to 35 U.S.C. § 325(d),
[i]n determining whether to institute or order a proceeding
under this chapter, chapter 30, or chapter 31, 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.
(emphasis added). In the present Petition, Petitioner seeks an inter partes
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review of claim 13 of the ’664 patent for a second time. Pet. 60; see HTC
Corp. v. NFC Tech., LLC, Case IPR2014-01199, slip op. at 17 (PTAB Feb.
4, 2015) (Paper 10) (review of claim 13 granted). Petitioner does not
address 35 U.S.C. § 325(d) directly in the present Petition, but acknowledges
that it previously challenged claim 13 in the earlier Petition. Pet. 1, 10–11.
Nevertheless, Petitioner challenges claims 13–15 and 19 based on the
references applied in the earlier petition, with the addition of Arisawa, and
argues that:
Akiho, Amtmann and Arisawa each describe all features of
Claim 13, including the feature of an auxiliary supply circuit
that was alleged by Patent Owner to be missing from the prior
art. All features of dependent Claims 14, 15 and 19 are no
more than commonly known electrical engineering concepts
applied to Claim 13.

Id. at 10–11 (emphases added). Patent Owner disagrees. Prelim. Resp. 11–
23.
1. The Earlier Petition—IPR2014-01199
In its earlier Petition in IPR2014-01199, Petitioner’s grounds of
unpatentability with respect to claim 13 were based on Akiho; Amtmann,
alone or in combination with ECMA-340; and Charrat and Kuhl. IPR2014-
01199, Paper 1, slip op. at 3. In particular, Petitioner challenged the
patentability of claim 132 of the ’664 patent based only on the following four
grounds of unpatentability:

2 In the earlier Petition, Petitioner challenged, and the panel instituted inter
partes review of, independent claims 13 and 29. In particular, we instituted
review as to both claims 13 and 29 as unpatentable over Amtmann and
ECMA-340 and over Charrat and Kuhl. HTC Corp. v. NFC Tech., LLC,
Case IPR2014-01199, slip op. at 17 (PTAB Feb. 4, 2015) (Paper 10).
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HTC Corp. v. NFC Tech., LLC, Case IPR2014-01199, slip op. at 3 (PTAB
Feb. 4, 2015) (Paper 10).
In IPR2014-01199, we were persuaded that Petitioner demonstrated a
reasonable likelihood of prevailing in showing claim 13 is unpatentable over
Amtmann and ECMA-340, and Charrat and Kuhl. Id. at 14, 16.
Nevertheless, we exercised our discretion under 37 C.F.R. § 42.108(a) and
denied institution on the additional grounds of unpatentability with respect
to claim 13 based on Akiho and on Amtmann, alone. Id. at 16.
2. The Present Petition—IPR2015-00384
In its Petition in IPR2015-00384, Petitioner challenges claims 13–15
and 19 of the ’664 patent. Pet. 3, 60. Petitioner asserts that the challenged
claims are unpatentable under 35 U.S.C. § 103(a) on the following specific
grounds (id. at 10–60):3

3 Although Petitioner does not include claim 13 in its table in IPR2015-
00384 identifying its grounds for challenging the claims of the ’664 patent,
as discussed above, Petitioner’s challenges are more accurately described in
the table here.
Ground Reference(s)
35 U.S.C. § 103(a) Akiho
35 U.S.C. § 103(a) Amtmann
35 U.S.C. § 103(a) Amtmann and ECMA-340
35 U.S.C. § 103(a) Charrat and Kuhl
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Ground Reference(s) Challenged Claim(s)
35 U.S.C. § 103(a) Akiho 13–15 and 19
35 U.S.C. § 103(a) Amtmann 13
35 U.S.C. § 103(a) Amtmann and Arisawa 14, 15, and 19
35 U.S.C. § 103(a) Amtmann and ECMA-340 13
35 U.S.C. § 103(a) Amtmann, ECMA-340, and
Arisawa
14, 15, and 19
35 U.S.C. § 103(a) Charrat and Kuhl 13–15
35 U.S.C. § 103(a) Charrat, Kuhl, and Arisawa 19

B. Analysis
We have considered the papers filed in the present Petition, as well as
the papers filed in the request for inter partes review in IPR2014-01199.
Based on the circumstances before us, we decline to institute review. See 35
U.S.C. § 314(a) (institution is discretionary, not mandatory). We approach
our discretion to decline review on a case-by-case basis. Conopco, Inc. v.
Procter & Gamble Co., Case IPR2014-00628, slip op. at 10 (PTAB Oct. 20,
2014) (Paper 21).
As noted above, according to 35 U.S.C. § 325(d), we may reject the
present Petition because “the same or substantially the same prior art or
arguments previously were presented to the Office” in the earlier Petition
(emphasis added). Here, Petitioner applies the same references by the same
arguments against claim 13 in the present Petition that it applied against
claim 13 in the earlier Petition. Pet. 12–26 (Akiho), 31–39 (Amtmann), 44–
46 (Amtmann and ECMA-340), 49–57 (Charrat and Kuhl). On that basis
alone, we may exercise our discretion and decline to institute inter partes
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review under 35 U.S.C. § 325(d).
Moreover, in both the earlier and the present Petitions, Petitioner
asserts that claim 13 is rendered obvious over Akiho and that claim 13 is
rendered obvious over Charrat and Kuhl. IPR2014-01199, Paper 1, 10–25
(Akiho), 45–57; Pet. 12–26 (Akiho), 49–57 (Charrat and Kuhl). In the
present Petition, Petitioner relies on Akiho and/or Charrat and Kuhl to teach
the additional limitations of claims 14, 15, and 19. Pet. 26–30 (Akiho), 57–
58 (Charrat and Kuhl). Despite the additional reliance on Arisawa (Pet. 39–
43 (Amtmann and Arisawa), 46 (Amtmann, ECMA-340, and Arisawa), 59–
60 (Charrat, Kuhl, and Arisawa)), Petitioner provides no explanation as to
why the challenges to dependent claims 14, 15, and 19 were not or could not
have been raised in the earlier Petition based on Akiho and/or Charrat and
Kuhl. Because the references applied against claims 14, 15, and 19 in the
present Petition are substantially the same as those applied in the earlier
Petition, we may exercise our discretion and decline to institute inter partes
review on these grounds against the challenged claims.
Despite Petitioner’s reliance on an additional reference, Arisawa, in
some grounds in the present Petition, we also are persuaded that Petitioner
asserts substantially the same arguments in the earlier and the present
Petitions. First, although it does not assert Arisawa individually here and
did not assert Arisawa in the earlier Petition, Petitioner argues that each of
Akiho, Amtmann, and Arisawa describes all limitations of at least claim 13.
Pet. 10–11. Petitioner provides no explanation, however, as to why Arisawa
was not or could not have been applied in the earlier Petition. See Conopco,
Inc. v. Procter & Gamble Co., Case IPR2014-00628, slip op. at 11 (PTAB
Oct. 20, 2014) (Paper 21). Second, Petitioner asserts the identical grounds
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of unpatentability based on Akiho and on Charrat and Kuhl in the earlier
Petition against claim 13 and the present Petition against some or all of the
challenged claims. Pet. 3. Third, with respect to Ground 1 in the present
Petition, Petitioner argues that Akiho teaches all of the limitations of
independent claim 13 and dependent claims 14, 15, and 19. Id. at 11–30;
cf. IPR2014-01199, Paper 1, 3 (Ground 1). Thus, in the present Petition,
Petitioner asserts that Akiho teaches all of the limitations of claims 14, 15,
and 19 that Petitioner alternatively relies on Arisawa to teach in other
grounds, e.g., in combination with Amtmann or Amtmann and ECMA-340.
Similarly, with respect to Ground 4 in the present Petition, Petitioner
argues that Charrat and Kuhl teach all of the limitations of independent
claim 13 and dependent claims 14 and 15. Id. at 46–58; cf. IPR2014-01199,
Paper 1, 3 (Ground 4). Thus, in the present Petition, Petitioner asserts that
Charrat and Kuhl teach all of the limitations of claims 14 and 15 that
Petitioner alternatively relies on Arisawa to teach in other grounds, e.g., in
combination with Amtmann or with Amtmann and ECMA-340. Therefore,
we also are persuaded that the present Petition presents arguments that are
substantially the same as those presented in the earlier Petition.
In addition, with respect to the grounds challenging claim 13 as
allegedly unpatentable over Akiho or over Amtmann, the present Petition
amounts to a second bite at the apple for Petitioner. We did not institute on
either of these grounds in IPR2014-01199, but Petitioner now asks us to
reconsider our earlier decision by adding challenges to claims 14, 15, and
19, which depend directly or indirectly from claim 13. We construe our
rules to ensure “the just, speedy, and inexpensive resolution of every
proceeding.” 37 C.F.R. § 42.1(b). The present Petition was filed over four
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months after the filing of the earlier Petition and after Patent Owner had
filed a Preliminary Response in the earlier Petition. Moreover, Patent
Owner filed its Patent Owner Response in IPR2014-01199 on May 20, 2015.
IPR2014-01199, Paper 18. Consequently, consolidation of IPR2015-00384
with the inter partes review instituted in IPR2014-01199 is not practical. To
the extent that the present Petition asserts grounds of the earlier Petition,
upon which we declined to institute review, or grounds based on “the same
or substantially the same prior art or arguments previously . . . presented to
the Office,” institution on such grounds now would not ensure “the just,
speedy, and inexpensive resolution of every proceeding.” See Schrader-
Bridgeport Int’l v. Wasica Finance GmbH, Case IPR2015-00272, slip op. at
6 (PTAB June 1, 2015) (Paper 17); see also ZTE Corp. v. ContentGuard
Holdings, Inc., Case IPR2013-00454, slip op. at 5–6 (PTAB Sept. 25, 2013)
(Paper 12) (“The Board is concerned about encouraging, unnecessarily, the
filing of petitions which are partially inadequate.”).
Under these circumstances, we exercise our discretion under
35 U.S.C. §§ 314(a) and 325(d) to reject the Petition because the same or
substantially the same arguments or references, or both, were presented
previously to the Board.
III. CONCLUSION
For the foregoing reasons, we reject the Petition under 35 U.S.C.
§ 325(d).
IV. ORDER
Accordingly, it is:
ORDERED that the Petition is denied as to all challenged claims; and
FURTHER ORDERED that no inter partes review is instituted.
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PETITIONER:

Bing Ai
Thomas N. Millikan
PERKINS COIE LLP
Ai-ptab@perkinscoie.com
TMillikan@perkinscoie.com
Perkins-Service-HTC-NFC-IPR@perkinscoie.com

PATENT OWNER:

Jon E. Wright
John H. Curry
Amirali Sharifi
STERNE, KESSLER, GOLDSTAIN & FOX P.L.L.C.
Jwright-PTAB@skgf.com
jcurry-PTAB@skgf.com
asharifi-PTAB@skgf.com

Robert Auchter
MCKOOL SMITH, P.C.
rauchter@McKoolSmith.com