ZTE (USA), Inc.v.SPH America, LLCDownload PDFPatent Trial and Appeal BoardMar 20, 201510932227 (P.T.A.B. Mar. 20, 2015) Copy Citation 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 IPR2015-00028 Patent RE40,385 E 2 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). IPR2015-00028 Patent RE40,385 E 3 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. IPR2015-00028 Patent RE40,385 E 4 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). IPR2015-00028 Patent RE40,385 E 5 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 IPR2015-00028 Patent RE40,385 E 6 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 . . . . IPR2015-00028 Patent RE40,385 E 7 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. IPR2015-00028 Patent RE40,385 E 8 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 Copy with citationCopy as parenthetical citation