Continental Automotive Systems, Inc.v.Wasica Finance GmbH

Patent Trial and Appeal Board

Feb 13, 2015

08137155 (P.T.A.B. Feb. 13, 2015)

Trials@uspto.gov Paper 14
Tel: 571-272-7822 Entered: February 13, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
CONTINENTAL AUTOMOTIVE SYSTEMS, INC.,
Petitioner,
v.
WASICA FINANCE GMBH & BLUEARC FINANCE AG,
Patent Owner.
_______________

Case IPR2014-01454
Patent 5,602,524
_______________

Before RAMA G. ELLURU, SCOTT A. DANIELS, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

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

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I. INTRODUCTION
A. Background
Continental Automotive Systems, Inc. (“Petitioner”) filed a Petition to
institute an inter partes review of claim 4 of U.S. Patent No. 5,602,524
(Ex. 1001, “the ’524 patent”). Paper 3 (“Pet.”). Wasica Finance GmbH and
BlueArc Finance AG (collectively, “Patent Owner”) filed a Preliminary
Response. Paper 10 (“Prelim. Resp.”). Pursuant to Board authorization
(Paper 11), Petitioner and Patent Owner each filed a supplemental briefing
on the application of 35 U.S.C. § 325(d) to the instant proceeding. Paper 12
(“Pet. 325(d) Br.”); Paper 13 (“PO 325(d) Br.”). We have jurisdiction under
35 U.S.C. § 314(a), 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.” For the reasons given below, we do not institute an inter partes
review in this proceeding.
B. Related Proceedings
Petitioner and Patent Owner indicate that the ’524 patent is the subject
of the following co-pending federal district court cases: Wasica Finance
GmbH v. Continental Automotive Systems US, Inc., Case No. 1-13-cv-01356
(D. Del.); and Wasica Finance GmbH v. Schrader International, Inc., Case
No. 1-13-cv-01353 (D. Del.). Pet. 1; Paper 9, 2. The parties also indicate
that the ’524 patent is involved in two additional inter partes review
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proceedings: IPR2014-00295 (“IPR ’295”)
1
; and IPR2014-00476 (“IPR
’476”)
2
. Pet. 1; Paper 9, 2.
C. Asserted Grounds of Unpatentability and Evidence of Record
Petitioner contends that claim 4 is unpatentable under 35 U.S.C. § 103
over the combination of Oselin
3
and Schultz
4
. Pet. 17–30. Petitioner also
provides testimony from Ray Mercer, Ph.D. (“the Mercer Declaration”).
Ex. 1007.

II. ANALYSIS
A. Background
In IPR ’295, Petitioner challenged claim 4 as obvious over Oselin in
combination with references other than Schultz. IPR ’295, Paper 6, 30–33,
41–43, 51. We did not institute inter partes review on those grounds for
claim 4 in IPR ’295. IPR ’295, Paper 11, 23, 30–31. Petitioner, however,
challenged other claims of the ’524 patent as obvious over the combination
of Oselin and Schultz. IPR ’295, Paper 6, 34–37, 39–41, 57–60. In
IPR ’476, a different petitioner challenged claim 4 of the ’524 patent as
obvious over the combination of Oselin and Schultz, and we instituted inter
partes review of claim 4 on that ground. IPR ’476, Paper 7, 20–21, 28. The
trial in IPR ’476 is in its final stages (the Patent Owner Response and the
Petitioner’s Reply have been filed).

1
Continental Automotive Systems, Inc. is the petitioner in IPR2014-00295.
2
Schrader International, Inc. is the petitioner in IPR2014-00476.
3
Italian Patent No. 121-9753, published May 24, 1990 (Ex. 1003, “Oselin”).
Citations to this reference refer to its English translation (Ex. 1004).
4
U.S. Patent No. 5,083,457, issued Jan. 28, 1992 (Ex. 1006, “Schultz”).
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B. Discussion
In the Preliminary Response, Patent Owner argues that the Board
should exercise its discretion to deny the Petition under 35 U.S.C. § 325(d).
Prelim. Resp. 4–11; PO 325(d) Br. 1–3. We have reviewed the Petition, the
Patent Owner Response, and the supplemental briefing on 35 U.S.C.
§ 325(d) provided by the parties, as well as the relevant evidence discussed
in those papers. Based on the specific facts of this case, we exercise our
discretion under 35 U.S.C. § 325(d) to deny institution of inter partes review
in this proceeding.
A petitioner is not entitled to unlimited challenges against a patent:
In determining whether to institute or order a proceeding under
. . . 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.
35 U.S.C. § 325(d). Further, in construing our authority to institute inter
partes review under 37 C.F.R. § 42.108, we are mindful of the guidance
provided in § 42.1(b): “[37 C.F.R. § 42] shall be construed to secure the just,
speedy, and inexpensive resolution of every proceeding.” Id.; 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.”).
Petitioner is requesting, essentially, a second chance to address
claim 4 in this proceeding. Petitioner argues, for example, that we should
not exercise our discretion to deny the Petition under 35 U.S.C. § 325(d)
because new arguments and art are presented in this case as follows:
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(1) claim 4 is obvious over a new combination of Oselin in
view of Schultz (Schultz was applied to claims 12, 16 and 17 in
the ‘295 IPR, not claim 4); (2) a new supporting declaration of
Dr. Mercer regarding the knowledge of a POSITA and
motivation to integrate the elements of claim 4; and (3) the new
prior art IEEE article (Ex. 1009).
Pet. 325(d) Br. 1–2. As indicated above, and acknowledged by Petitioner,
the combination of Oselin and Schultz was asserted in IPR ’295 against
claims other than claim 4. Thus, Petitioner was aware of the combination of
Oselin and Schultz as of its filing the petition in IPR ’295. Further, as
indicated above, the challenge to claim 4 presented in this proceeding is
based on the combination of Oselin and Schultz, on which we have already
instituted trial in IPR ’476. Petitioner waited until after our decision in IPR
’476 issued to file the Petition in this proceeding (more than two months
after inter partes review of claim 4 was denied in IPR ’295).
We determine that Petitioner’s asserted art and arguments are
substantially similar to the art and arguments asserted in IPR ’476. In
addition to the features in claim 1, claim 4 recites “a signal amplifier and a
filter device, the comparison device and the memory for storing the
identification reference signal of the receiver are contained in an integrated
chip.” In this proceeding, Petitioner does not allege that the combined
teachings of Oselin and Schultz relied upon for the challenge to claim 4 are
different in a meaningful way than those relied upon in the challenge to
claim 4 over the same combination instituted in IPR ’476. After review of
the challenge presented in this proceeding, we note that Schultz is relied on
for teachings similar to those presented in IPR ’476. For example, in this
proceeding, Petitioner cites Schultz as teaching the signal amplifier and filter
device recited in claim 4. Pet. 26–28. Specifically, Petitioner contends that
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Schultz teaches these limitations because “Schultz discloses that display unit
12 contains amplifier circuit 58 containing capacitor C1 and a resistor R2,
amplifier U1, and comparator U2A.” Id. at 26–27 (citing Ex. 1006, 3:60–63,
4:56–5:3). In IPR ’476, we instituted trial on the challenge to claim 4 based
on similar teachings in Schultz. See IPR ’476, Paper 7, 20–21, 28; IPR ’476,
Paper 1, 41–42 (citing Schultz, 3:60–63, 4:56–67).
As for the new testimony (Ex. 1007) and Exhibit 1009 (“the IEEE
Article”), Petitioner offers no persuasive explanation as to why these
exhibits could not have been presented in IPR ’295 or why their assertion in
this proceeding makes Petitioner’s challenge to claim 4 meaningfully
different than the challenge to claim 4 in IPR ’476. We note that although
Petitioner argues that “the present Petition involves different prior art and
arguments than those presented in Schrader’s ’476 IPR” (Pet. 325(d) Br. 3),
the challenge to claim 4 presented in the Petition is based only on the
combination of Oselin and Schultz (not the combination of Oselin, Schultz,
and the IEEE Article)—the same combination asserted against claim 4 in
IPR ’476 (See Pet. 2–3, 26–30).
With respect to the alleged “different arguments,” Petitioner offers no
persuasive explanation as to how the arguments regarding claim 4 presented
in this proceeding differ from those presented in IPR ’476 in a meaningful
way. After review of the challenge presented in this proceeding, we note,
for example, that Petitioner contends “[a] POSITA would have been
motivated to integrate the amplifier and filter on the same chip as Oselin’s
comparison device and memory given the explicit disclosure in each
reference that components of the respective receivers could be integrated.”
Pet. 28–29 (citing Ex. 1007 ¶ 115). Petitioner additionally contends that “a
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POSITA would have found it to be well-known in the relevant field of art
well before the filing date of the ’524 patent that the elements of claim 4
could be provided on a single integrated chip” and that such a combination
would have been “a mere design choice that was well-known in the relevant
field of art and should be given no patentable weight.” Id. at 29 (citing
Ex. 1007 ¶ 116). The Mercer Declaration cites the IEEE Article in support
of the proposition that “[t]he motivation for combining the[] elements on a
single integrated chip was well-known and recognized in the industry.”
Ex. 1007 ¶ 116 (citing Ex. 1009, 14). The petition in IPR ’476 includes
arguments similar to those discussed above. For example, in IPR ’476 the
petitioner contends that “[t]o modify the Oselin system with Schultz’s
teachings would be nothing more than combining prior art elements
according to known methods to yield predictable results.” IPR ’476, Paper
1, 41.
Finally, Petitioner’s concern that IPR ’476 can settle at any time
(Pet. 325(d) Br. 3) is unpersuasive. Petitioner had the opportunity, but did
not choose to file for joinder in IPR ’476. See 35 U.S.C. § 315(c); 37 C.F.R.
§ 42.122(b).
For the reasons set forth above, we are not apprised of a reason that
merits subjecting Patent Owner to further defense of claim 4 on a ground
that could have been brought in IPR ’295, and is currently under review in
IPR ’476. Accordingly, as indicated above, we exercise our discretion under
35 U.S.C. § 325(d) to deny the Petition and decline to institute inter partes
review with respect to the challenge asserted in the Petition, because it
presents merely “the same or substantially the same prior art or arguments”
already presented to us.
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III. ORDER
For the reasons given, it is
ORDERED that no trial is instituted.

For PETITIONER:

Gary Ropski
gropski@brinksgilson.com

James Cleland
jcleland@brinksgilson.com

John Lingl
jlingl@brinksgilson.com

Nicholas Restauri
nrestauri@brinksgilson.com

For PATENT OWNER:

Michael Hawkins
Hawkins@fr.com

Patrick Bisenius
IPR2014-01454@fr.com

Michael Kane
IPR2014-01454@fr.com