HTC Corporationv.NFC Technology, LLCDownload PDFPatent Trial and Appeal BoardJul 6, 201511302291 (P.T.A.B. Jul. 6, 2015) Copy Citation 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 IPR2015-00384 Patent 7,665,664 B2 2 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). IPR2015-00384 Patent 7,665,664 B2 3 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: IPR2015-00384 Patent 7,665,664 B2 4 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: IPR2015-00384 Patent 7,665,664 B2 5 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. IPR2015-00384 Patent 7,665,664 B2 6 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 IPR2015-00384 Patent 7,665,664 B2 7 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). IPR2015-00384 Patent 7,665,664 B2 8 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 IPR2015-00384 Patent 7,665,664 B2 9 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 IPR2015-00384 Patent 7,665,664 B2 10 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 IPR2015-00384 Patent 7,665,664 B2 11 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 IPR2015-00384 Patent 7,665,664 B2 12 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. IPR2015-00384 Patent 7,665,664 B2 13 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 Copy with citationCopy as parenthetical citation