Samsung Electronics Co. Ltd.v.Rembrandt Wireless Technologies, LP

Patent Trial and Appeal Board

Jun 19, 2015

13198568 (P.T.A.B. Jun. 19, 2015)

Trials@uspto.gov Paper 20
571-272-7822 Date Entered: June 19, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
AMERICA, INC., SAMSUNG TELECOMMUNICATIONS AMERICA,
LLC, and SAMSUNG AUSTIN SEMICONDUCTOR, LLC,

Petitioner,

v.

REMBRANDT WIRELESS TECHNOLOGIES, LP,
Patent Owner.
____________

Case IPR2015-00555
Patent 8,457,228 B2
____________

Before JAMESON LEE, HOWARD B. BLANKENSHIP, and
JUSTIN BUSCH, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION
Denial of Institution of Inter Partes Review
37 C.F.R. § 42.108
Denial of Motion for Joinder
37 C.F.R. § 42.122

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I. BACKGROUND
Samsung Electronics Co. Ltd., Samsung Electronics America, Inc.,
Samsung Telecommunications America, LLC, and Samsung Austin
Semiconductor, LLC (collectively, “Petitioner”) filed a petition requesting
inter partes review of claim 21 of U.S. Patent No. 8,457,228 B2 (“the ’228
patent”) (Ex. 1301) under 35 U.S.C. §§ 311–319. See Paper 1 (Petition, or
“Pet.”). With the Petition, Petitioner filed a motion for joinder (Paper 3,
“Mot. Join.”), seeking to join with Samsung Electronics Co. v. Rembrandt
Wireless Technologies, LP, Case IPR2014-00892 (“IPR ’892”). Patent
Owner Rembrandt Wireless Technologies, LP filed an opposition to the
motion for joinder (Paper 9, “Opp.”) and a preliminary response (see Paper
19, “Prelim. Resp.”). Petitioner filed a reply to Patent Owner’s opposition to
the motion for joinder. Paper 10 (“Reply”). We have jurisdiction under 35
U.S.C. § 314.
For the reasons that follow, we deny the motion for joinder and do not
institute an inter partes review as to the challenged claim of the ’228 patent.

A. Related Proceedings
According to Petitioner, the ’228 patent is involved in the lawsuit
Rembrandt Wireless Technologies, LP v. Samsung Electronics Co, No. 2:13-
cv-00213 (E.D. Tex. 2013). Pet. 1. The ’228 patent also has been
challenged in the following cases: Samsung Electronics Co. v. Rembrandt
Wireless Technologies, LP, IPR2014-00889; Samsung Electronics Co. v.
Rembrandt Wireless Technologies, LP , IPR2014-00890; Samsung
Electronics Co. v. Rembrandt Wireless Technologies, LP , IPR2014-00891;
Samsung Electronics Co. v. Rembrandt Wireless Technologies, LP ,
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IPR2014-00892; Samsung Electronics Co. v. Rembrandt Wireless
Technologies, LP, IPR2014-00893; and Samsung Electronics Co. v.
Rembrandt Wireless Technologies, LP, IPR2014-00895.

B. The ’228 Patent
The ’228 Patent issued from an application filed August 4, 2011,
which claimed priority under 35 U.S.C. § 120 through a chain of intervening
applications to an application filed December 4, 1998, and which further
claimed priority under 35 U.S.C. § 119 to a provisional application filed
December 5, 1997.
The technical field of the patent relates to data communications and
modulators/demodulators (modems), and in particular to a data
communications system in which a plurality of modems use different types
of modulation in a network. Ex. 1301, col. 1, ll. 21–25; col. 1, l. 58 – col. 2,
l. 23.

C. Challenged Claim
Claim 21, the sole claim that is challenged, is reproduced below along
with base claim 1.
1. A master communication device configured to
communicate with one or more slave transceivers according to
a master/slave relationship in which a slave communication
from a slave device to the master communication device occurs
in response to a master communication from the master
communication device to the slave device, the master
communication device comprising:
a master transceiver configured to transmit a first
message over a communication medium from the master
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transceiver to the one or more slave transceivers, wherein the
first message comprises:
first information modulated according to a first
modulation method,
second information, including a payload portion,
modulated according to the first modulation method, wherein
the second information comprises data intended for one of the
one or more slave transceivers and
first message address information that is indicative
of the one of the one or more slave transceivers being an
intended destination of the second information; and
said master transceiver configured to transmit a second
message over the communication medium from the master
transceiver to the one or more slave transceivers wherein the
second message comprises:
third information modulated according to the first
modulation method, wherein the third information comprises
information that is indicative of an impending change in
modulation to a second modulation method, and
fourth information, including a payload portion,
transmitted after transmission of the third information, the
fourth information being modulated according to the second
modulation method, the second modulation method being of a
different type than the first modulation method, wherein the
fourth information comprises data intended for a single slave
transceiver of the one or more slave transceivers, and
second message address information that is
indicative of the single slave transceiver being an intended
destination of the fourth information; and
wherein the second modulation method results in a
higher data rate than the first modulation method.
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21. The master communication device as in claim 1,
wherein the first information that is included in the first
message comprises the first message address data.

D. Prior Art
Boer US 5,706,428 Jan. 6, 1998 (Ex. 1304)

Siwiak US 5,537,398 July 16, 1996 (Ex. 1324)

E. Asserted Ground of Unpatentability
Petitioner asserts the following ground of unpatentability as to claim
21 (Pet. 3): obviousness under 35 U.S.C. § 103(a) over Admitted Prior Art
(“APA”)1, Boer, and Siwiak.

II. ANALYSIS
A. Background
In IPR ’892, Petitioner asserted that claims 1–3, 5, and 10–21
of the ’228 patent were unpatentable over APA and Boer. IPR ’892, Paper 2
at 20–70. We did not institute an inter partes review of claim 21 based on
that ground in IPR ’892. We explained as follows:
Claim 21, which depends directly from claim 1, recites
that the first information that is included in the first message
“comprises the first message address data.” Petitioner maps the
claimed “first information” as corresponding to header 218 of
message 200 depicted in Figure 4 of Boer. Petitioner admits
that Boer does not teach placing its address information in
header 218 (Ex. 1304, Fig. 4). Boer teaches that DATA field

1 Petitioner asserts that Patent Owner made admissions in the ’228 patent
disclosure and in the prosecution history of a parent application regarding
prior art. Pet. 12–14.
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214 (Fig. 4), which is deemed to correspond to the “second
information,” contains a destination address.
Petitioner submits that the ’228 patent “admits” that
placing address information in the training sequence of a
message is prior art. Petitioner does not indicate how such an
admission might be relevant to claim 21. The ’228 patent
teaches that in a multipoint system the address of the trib with
which the master is establishing communication is also
transmitted during the training interval. The “training signals”
that are exchanged during the training interval, however, are
“sequences of signals of particular subsets of all signals that can
be communicated via the agreed upon common modulation
method.” Petitioner does not identify any teaching of placing
address data in the message header.
Petitioner concludes that “[a] person having ordinary
skill in the art would have been motivated to combine the APA
with Boer due to the similarities between the packet structures
and because where the address fields are placed is a matter of
design choice.” Petitioner has not identified a teaching in the
applied prior art of placing address data in the header of a
message. Nor has Petitioner provided evidence sufficient to
demonstrate that the ordinary artisan would have considered
placing the address data as claimed to be a mere matter of
“design choice.” Petitioner’s conclusory allegation of “design
choice” does not provide the required “articulated reasoning
with some rational underpinning to support the legal conclusion
of obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
418 (2007).

IPR ’892, slip op. at 13–15 (PTAB Dec. 10, 2014) (Paper 8) (citations to
record omitted).
We do not reach the merits of Petitioner’s additional reasoning in the
instant Petition as to why Petitioner asserts that the subject matter of claim
21 would have been obvious over the combination of APA, Boer, and
Siwiak. Instead, for the reasons discussed below, we exercise our discretion
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under 35 U.S.C. § 325(d) to deny institution of inter partes review in this
proceeding.

B. Principles of Law
A petitioner is not entitled to multiple 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) (titled: “MULTIPLE PROCEEDINGS”). 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.”

C. Discussion
The difference between what Petitioner presents in this proceeding
and what Petitioner presented in IPR ’892 with respect to claim 21 of the
’228 patent is that Petitioner now offers Siwiak as support for the asserted
obviousness of placing address data in a message header as taught by Boer.
Pet. 24–57; Mot. Join. 5–6. Petitioner, however, presents no argument or
evidence that Siwiak was not known or available to it at the time of filing
IPR ’892. In fact, Petitioner applied Siwiak in proposed grounds of rejection
against claim 21 of the ’228 patent in another petition filed the same day as
that in the IPR ’892 proceeding. See IPR2014-00889, Paper 2 at 58–60. On
this record, we exercise our discretion and “reject the petition” because “the
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same or substantially the same prior art” previously was “presented to the
Office” in the IPR ’892 proceeding. 35 U.S.C. § 325(d); see also Unilever,
Inc., v. The Proctor & Gamble Co., Case IPR2014-00506, slip op. at 6
(PTAB July 7, 2014) (Paper 17) (informative) (seven new references added
to six that were applied in earlier petition).
Petitioner is requesting, essentially, a second chance to challenge the
claims. We, however, are not persuaded that a second chance would help
“secure the just, speedy, and inexpensive resolution of every proceeding.”
37 C.F.R. § 42.1(b). Permitting second chances in cases like this one ties up
the Board’s limited resources; we must be mindful not only of this
proceeding, but 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.”); cf.
Ariosa Diagnostics v. Isis Innovation, Ltd., Case IPR2013-00250, slip op. at
2, 4 (PTAB Sept. 8, 2013) (Paper 25) (granting joinder when a new product
was launched, leading to a threat of new assertions of infringement) and
Paper 4 at 3; Microsoft Corp. v. Proxyconn, Inc., Case IPR2013-00109, slip
op. at 3 (PTAB Feb. 25, 2014) (Paper 15) (granting joinder when additional
claims had been asserted against petitioner in concurrent district court
litigation).
In this proceeding, however, we are not apprised of a reason that
merits a second chance. Petitioner simply presents arguments now that it
could have made in IPR ’892, had it merely chosen to do so. In view of the
foregoing, and especially in light of the fact that, barring joinder, this
petition is time-barred under 35 U.S.C. § 315(b), we exercise our discretion
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under 35 U.S.C. § 325(d) to deny the petition, because it presents merely
“the same or substantially the same prior art or arguments” presented to us in
IPR ’892. As a consequence, Petitioner’s motion for joinder is dismissed as
moot.

III. ORDER
In view of the foregoing, it is
ORDERED that Petitioner’s motion for joinder is dismissed; and
FURTHER ORDERED that no trial is instituted.
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PETITIONER:
J. Steven Baughman
Gabrielle E. Higgins
Daniel Cardy
ROPES & GRAY LLP
steven.baughman@ropesgray.com
gabrielle.higgins@ropesgray.com
cardyd@dicksteinshapiro.com

PATENT OWNER

Thomas Engellenner
Reza Mollaaghababa
George Haight
Lana Gladstein
PEPPER HAMILTON LLP
engellennert@pepperlaw.com
mollaaghababar@pepperlaw.com
haightg@pepperlaw.com
gladsteinl@pepperlaw.com