ZTE (USA), Inc.v.SPH America, LLC

Patent Trial and Appeal Board

Mar 20, 2015

10932227 (P.T.A.B. Mar. 20, 2015)

Trials@uspto.gov Paper 12
571-272-7822 Entered: March 20, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ZTE (USA), INC., and HUAWEI DEVICE USA, INC.,
Petitioner,

v.

ELECTRONICS AND TELECOMMUNICATIONS
RESEARCH INSTITUTE,
Patent Owner.
____________

Case IPR2015-00028
Patent RE40,385 E
____________

Before RAMA G. ELLURU, PATRICK M. BOUCHER, and
KEVIN W. CHERRY, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

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

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Patent RE40,385 E

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On October 6, 2014, ZTE (USA), Inc., and Huawei Device USA, Inc.
(“Petitioner”) filed a Petition (Paper 1, “Pet.”) pursuant to 35 U.S.C. §§ 311–
319 to institute an inter partes review of claims 20, 31, 53, 58–61, 68, 77,
90, 118, 129, 177, 208, and 272–274 of U.S. Patent No. RE40,385 E (“the
’385 patent”). On January 16, 2015, SPH America LLC filed a Preliminary
Response (Paper 11, “Prelim. Resp.”) on behalf of Electronics and
Telecommunications Research Institute (“Patent Owner”).
1
Applying the
standard set forth in 35 U.S.C. § 314(a), we deny the Petition and decline to
institute an inter partes review.

I. BACKGROUND
A. The ’285 Patent
The ’ 385 patent “relates to an orthogonal complex spreading method
for a multichannel and an apparatus thereof.” Ex. 1001, 1:21–23.
Challenged claim 20 is illustrative:
20. A permuted orthogonal complex spreading method for
multiple channels allocating at least two input channels to first
and second groups, comprising the steps of:
multiplying a predetermined orthogonal code sequence
WM,n1 by first data group Xn1;
multiplying orthogonal code sequence MM,n2 by second
data group Xn2;

1
SPH America, LLC asserts that it is the exclusive license of the ’385
patent (Prelim. Resp. 1 n.1), and that it is authorized by Patent Owner to act
in this proceeding (Ex. 2001).
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summing output signals WM,n1Xn1 and WM,n2Xn2 in the
complex form of
∑(𝑊𝑀,𝑛1𝑋𝑛1 + 𝑗𝑊𝑀,𝑛2𝑋𝑛2);
𝐾
𝑛=1

and
complex-multiplying the received output signal
∑(𝑊𝑀,𝑛1𝑋𝑛1 + 𝑗𝑊𝑀,𝑛2𝑋𝑛2) by 𝑊𝑀,1
𝐾
𝑛=1
+ 𝑗𝑃𝑊𝑀,𝑄
wherein P is a predetermined sequence, and WM,I and
WM,Q are orthogonal code sequences.

B. References Relied Upon
Petitioner relies on the following references.
2

Ovesjö US 6,108,369 Aug. 22, 2000 Ex. 1006
Zehavi US 5,602,833 Feb. 11, 1997 Ex. 1007
KR ’510 KR 0155510 July 15, 1998 Ex. 1008

Kevin Laird, Peak-to-Average Power Reduction Method for the
3G Reverse Link, TIA TR45.5 submission (Jan. 26, 1998)
(“Laird”)

Ex. 1005
Seong R. Kim, Jeong G. Lee, Hun Lee, Byung S. Kang, and Jae
W. Jeong, A Coherent Dual-Channel QPSK Modulation for
CDMA Systems, IEEE 46th Vehicular Technology Conference,
pp. 1848–52 (May 1996) (“Kim”)

Ex. 1009
TTA Proposal I System Description: Draft 0.0 and TTA Ex. 1010

2
Petitioner also submits a copy of Agilent AN 1335: HPSK Spreading for
3G Application Note (1999) as Exhibit 1011, but does not rely on this
reference in its challenges.
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Proposal II: Asynchronous Wideband Direct-Sequence CDMA
System for IMT-2000 (Mar. 25, 1998) (“TTA”)

Prior art described in the ’385 patent Ex. 1001

C. Asserted Grounds of Unpatentability
Petitioner challenges claims 20, 31, 53, 58–61, 68, 77, 90, 118, 129,
177, 208, and 272–274 of the ’385 patent on the following grounds. Pet. 6–
7.
Reference(s) Basis
Laird § 102(a)
TTA § 102(a)
Ovesjö § 102(e)
TTA and Zehavi § 103(a)
Ovesjö, Zehavi, and KR ’510
3
§ 103(a)
Ovesjö, KR ’510, and Kim § 103(a)
Zehavi, KR ’510, and prior art described in the ’385 patent § 103(a)

D. Related Proceedings
Petitioner identifies the following matters involving the ’385 patent:
SPH America, LLC v. AT&T Mobility, LLC, Case No. 3:13-cv-02318-CAB
(S.D. Cal.); SPH America, LLC v. Sprint Spectrum L.P., Case No. 3:13-cv-

3
Petitioner presents two separate challenges of claims 20, 31, 53, 58–61, 68,
77, 90, 118, 129, 177, 208, and 272–274 based on these three references,
applying the references in a different order. Unlike an Examiner, we do not
consider the order in which prior art is applied to be significant. See, e.g., In
re Bush, 296 F.2d 491, 496 (CCPA 1961).
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02319-CAB (S.D. Cal.); SPH America, LLC v. Research in Motion, Ltd.,
Case No. 3:13-cv-02320-CAB (S.D. Cal.); SPH America, LLC v. Huawei
Technologies, Co., Ltd., Case No. 3:13-cv-02323-CAB (S.D. Cal.); SPH
America, LLC v. T-Mobile US, Inc., Case No. 3:13-cv-02324-CAB (S.D.
Cal.); SPH America, LLC v. Verizon Communications, Case No. 3:13-cv-
02325-CAB (S.D. Cal.); and SPH America, LLC v. ZTE (USA), Inc., Case
No. 3:13-cv-02326-CAB (S.D. Cal.). Pet. 1.

II. ANALYSIS
“The Director may not authorize an inter partes review to be instituted
unless the Director determines that the information presented in the petition
. . . shows that 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) (emphasis added). We determine that the Petition
includes insufficient information to meet this standard.
Petitioner supports its Petition with a Declaration by Dr. Timothy
Williams (“the Williams Declaration”) (Ex. 1003). The Petition itself
includes conclusory statements for several key issues, citing to the Williams
Declaration without otherwise providing meaningful argument or
explanation. Specifically, the Petition contends that the effective filing date
of the ’385 patent is April 4, 1998, but refers to the Williams Declaration for
“a detailed explanation.” Pet. 10–11. The Petition summarizes claim-
construction positions for several terms without explanation, indicating
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instead that those positions “are supported” by the Williams Declaration. Id.
at 11–14. The Petition similarly omits a summary of the prosecution history
of the ’385 patent in favor of referring to the Williams Declaration for “[a]
complete prosecution history of the [’]385 patent.” Id. at 10.
Most significantly, the Petition omits any adequate explanation of
how the references relied upon support Petitioner’s challenges. Instead, the
Petition includes claim charts that merely cite portions of the references,
together with citations to the Williams Declaration, indicating that the
“claim chart[s are] supported by the Expert Declaration of Dr. Tim
Williams.” Id. at 24–57.
Patent Owner properly directs our attention to the Board’s informative
decision in Cisco Systems, Inc. v. C-Cation Techs., LLC, Case IPR2014-
00454 (PTAB Aug. 29, 2014) (Paper 12) (informative). Prelim. Resp. 2. As
explained in Cisco, citations to “large portions of another document, without
sufficient explanation of those portions, amounts to incorporation by
reference.” Cisco, Case IPR2014-00454, slip op. at 8. Similarly, Cisco
explains that the “practice of citing [a] Declaration to support conclusory
statements that are not otherwise supported in the Petition also amounts to
incorporation by reference.” Id. at 9. Such incorporation by reference is
improper: “[a]rguments must not be incorporated by reference from one
document into another document.” 37 C.F.R. § 42.6(a)(3). See also DeSilva
v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (Incorporation by
reference “amounts to a self-help increase in the length of the [] brief . . . .
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A brief must make all arguments accessible to the judges, rather than ask
them to play archeologist with the record.”). Accordingly, we do not
consider arguments not made in the Petition itself.
“Each petition . . . must include . . . [a] full statement of the reasons
for the relief requested, including a detailed explanation of the significance
of the evidence including material facts, and the governing law, rules, and
precedent.” 37 C.F.R. § 42.22(a)(2). We agree with Patent Owner that
“standing on its own, the Petition lacks any ‘detailed explanation of the
significance of the evidence,’ in violation of 37 C.F.R. § 42.22(a)(2).”
Prelim. Resp. 1. Thus, we conclude that the Petition fails to meet the
statutory requirement of 35 U.S.C. § 314(a) because the information
presented in the Petition does not show that there is a reasonable likelihood
that Petitioner would prevail with respect to at least one of the challenged
claims.

III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition requesting an inter partes review is
denied.

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PETITIONER:
Steven A. Moore
Richard W. Thill
PILLSBURY WINTHROP SHAW PITTMAN LLP
steve.moore@pillsburylaw.com
richard.thill@pillsburylaw.com

Paul S. Hunter
Christopher C. Bolten
Troy Smith
FOLEY & LARDNER LLP
phunter@foley.com
cbolten@foley.com
tdsmith@foley.com

PATENT OWNER:
Wayne M. Helge
Donald Jackson
DAVIDSON BERQUIST JACKSON & GOWDEY, LLP
whelge@dbjg.com
djackson@dbjg.com