Samsung Electronics Co. Ltd. v Fractus, S.A.

Patent Trial and Appeal Board

Feb 26, 2014

10963080 (P.T.A.B. Feb. 26, 2014)

Trials@uspto.gov Paper 22
571-272-7822 Date Entered: February 26, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAMSUNG ELECTRONICS CO. LTD.
Petitioner

v.

FRACTUS, S.A.
Patent Owner
____________

Case IPR2014-00008 (Patent 7,123,208)
Case IPR2014-00011 (Patent 7,397,431)
Case IPR2014-00012 (Patent 7,394,432)
Case IPR2014-00013 (Patent 7,015,868)
1

____________

Before GLENN J. PERRY, JENNIFER S. BISK, and
PATRICK M. BOUCHER, Administrative Patent Judges.

PERRY, Administrative Patent Judge.

DECISION
Request for Rehearing
37 C.F.R. § 42.71(d)

1
The parties should refrain from using a multiple case caption.

IPR2014-00008
IPR2014-00011
IPR2014-00012
IPR2014-00013

2

I. INTRODUCTION
This decision applies to, and is made of record in, each of the inter partes
reviews listed on the cover page of this Decision.
Petitioner Samsung Electronics Co. Ltd. requests rehearing
2
(“Req.”) of the
Decision dated January 2, 2014 denying Petitioner’s requests for inter partes
review
3
(“Decision Denying Institution”) of the claims and patents set forth in the
following table.
Case No. Patent Claims
IPR2014-00008 7,123,208 1, 7, 10, and 12
IPR2014-00011 7,397,431 1, 12-14, and 40
IPR2014-00012 7,394,432 1 and 6
IPR2014-00013 7,015,868 1, 26, 32-33, and 35
The applicable standard for granting a request for rehearing is abuse of
discretion. The requirements are set forth in 37 C.F.R. § 42.71(d), which provides
in relevant part:
A party dissatisfied with a decision may file a request for rehearing,
without prior authorization from the Board. The burden of showing a
decision should be modified lies with the party challenging the
decision. The request must specifically identify all matters the party
believes the Board misapprehended or overlooked, and the place
where each matter was previously addressed in a motion, an
opposition, or a reply.
Each of the four patents is involved in patent litigation captioned Fractus,
S.A. v. Samsung Elecs. Co., Ltd., No. 6:13-cv-00210 (E.D. Tex). Samsung was
served with a complaint alleging infringement in that proceeding on or about

2
IPR2014-00008 (Paper 21); IPR2014-00011 (Paper 18); IPR2014-00012
(Paper 16); IPR2014-00013 (Paper 21).
3
IPR2014-00008 (Paper 4); IPR2014-00011 (Paper 3); IPR2014-00012 (Paper 2);
IPR2014-00013 (Paper 2).
IPR2014-00008
IPR2014-00011
IPR2014-00012
IPR2014-00013

3

February 28, 2013. Each of the four patents was also involved in patent litigation
captioned Fractus, S.A. v. Samsung Elecs. Co., Ltd., No. 6:09-cv-203 (E.D. Tex)
(’203 litigation). Petitioner was served with a complaint in that proceeding on or
about May 5, 2009. In the ’203 litigation, Patent Owner asserted claims of
infringement of its patents by Petitioner, including the four patents at issue in these
Petitions.
4
A judgment against Samsung in that case is on appeal to the Court of
Appeals for the Federal Circuit. Fractus, S.A. v. Samsung Elecs., No. 12-1633
(Fed. Cir.).
We denied Petitioner’s inter partes review petitions based on 35 U.S.C.
§ 315(b) and 37 C.F.R. § 42.101(b), which are reproduced below.
Section 315(b) of Title 35 of the United States Code provides:
(b) PATENT OWNER’S ACTION.—An inter partes
review may not be instituted if the petition requesting the
proceeding is filed more than 1 year after the date on which the
petitioner, real party in interest, or privy of the petitioner is
served with a complaint alleging infringement of the patent. The
time limitation set forth in the preceding sentence shall not apply
to a request for joinder under subsection (c). (Emphasis added).

The USPTO rule implementing section 315(b) is set forth in 37 C.F.R.
§ 42.101 (b), which provides:
§ 42.101 Who may petition for inter partes review.
A person who is not the owner of a patent may file with
the Office a petition to institute an inter partes review of
the patent unless:

4
IPR2014-00008 (Ex. 1010); IPR2014-00011 (Ex. 1010); IPR2014-00012
(Ex. 1010); IPR2014-00013 (Ex. 1010).
IPR2014-00008
IPR2014-00011
IPR2014-00012
IPR2014-00013

4

. . .
(b) The petition requesting the proceeding is filed more
than one year after the date on which the petitioner, the
petitioner's real party-in-interest, or a privy of the
petitioner is served with a complaint alleging
infringement of the patent;
. . . .
Petitioner argues that the use of the present tense “is served” in § 315(b)
does not include service of a complaint occurring prior to enactment of the
America Invents Act. Req. 1. For reasons set forth below, we disagree.
II. DISCUSSION
Petitioner argues that the Board ignores Supreme Court and Federal Case
Law. Petitioner points to language in Carr v. United States indicating that use of
present tense in a statute “reinforces the conclusion that pre[-]enactment travel falls
outside the statute’s compass” (emphasis added). See Carr v. U. S., 560 U.S. 438,
447-48 (2010). Req. 2.
In Carr, a criminal case, the Supreme Court held that an Indiana sex
offender statute could not place in jeopardy an accused whose interstate travel
occurred before the effective date of the statute. The majority reasoned that the
plain language and legislative history of the statute suggest that the statute does
not apply to travel of the accused that predates its enactment.
Petitioner cites Carr as requiring a construction in which “a statute’s
temporal reach is limited to post-enactment activity when the statute is written in
the present tense.” Req. 2. Petitioner over-applies Carr’s reasoning. Carr
considered a statute that imposes a penalty on an individual who meets certain,
separately defined (present tense), conditions: is required to register under
IPR2014-00008
IPR2014-00011
IPR2014-00012
IPR2014-00013

5

SORNA; travels; and knowingly fails to register. The Court held that use of the
present tense thus sets forth the conditions only prospectively, i.e. that an
individual who traveled before enactment does not meet the travel condition.
The dissent in Carr explains that unlike § 315(b), the statute confronting the
Court in Carr had no explicit temporal requirement. Thus, the Court had to
identify the event relative to which the present tense must be evaluated—it chose
that event to be the enactment of the statute. Carr at 458. The dissent identifies
the implicit premise in the majority’s reasoning: “The unspoken premise of
petitioner’s argument is that 2250(a) speaks of the time when it became law.” Id.
at 463.
Petitioner argues (Req. 4-5) that it would be inconsistent for § 315(b) to
apply different temporal meanings to “is served” and “is filed” appearing in the
same section. We are, however, not presented with the ambiguity that confronted
the Carr Court. Petitioner’s argument that “is filed” and “is served” must both be
evaluated relative to the enactment date of the America Invents Act is flawed
because the two verb phrases are not given parallel grammatical treatment in the
statute. Consistent with Carr, “is filed” should be construed relative to the
enactment date because it defines the condition for barring institution. But “is
served” is part of a prepositional phrase that defines “the date,” and should
therefore be construed relative to the date of service, not relative to the statute’s
enactment date. Thus, contrary to Petitioner’s assertion (Req. 3), there is no
inconsistency with the Dictionary Act because both the present and future of “is
served” are evaluated relative to the act of service, not to enactment of the statute.
We note that the Carr dissent expressed a preference for use of the present tense in
drafting statutes.
IPR2014-00008
IPR2014-00011
IPR2014-00012
IPR2014-00013

6

Petitioner also cites Frederick v. Shinseki, 684 F.3d 1263 (Fed. Cir. 2012)
(Req. 3), a Federal Circuit case in which the condition for receiving Veterans
surviving-spouse benefits was set forth explicitly in the statute in the present tense:
“. . . only if the individual submits an application for such benefits . . . .” The
Court held that “the statutory language ‘submits an application for such benefits’ in
the present tense connotes that a post-enactment application is necessary to secure
DIC benefits.” Frederick at 1270. Although § 315(b) similarly requires that a
post-enactment filing is necessary for there to be a bar, as explained above,
§ 315(b) does not require a post-enactment service of the complaint because “is
served” is used only as part of a prepositional phrase that defines “the date.”
We agree with Petitioner that there are no legislative comments that speak
directly to Petitioner’s argument. Req. 5-9. However, we are not persuaded that
the legislative history supports Petitioner’s theory that the one year § 315(b) time
period may only be based on a complaint served prior to the availability of inter
partes review.
As explained in our Decision denying institution of the petitions in these
cases, the plain meaning of § 315(b) is that an inter partes review may not be
instituted if the petition is filed more than one year after the date on which a party
serves Petitioner (or real party-in-interest or privy) with a complaint. The only
exception created by the statute is in the case of joinder.
III. DECISION ON REHEARING
Having fully considered Petitioner’s arguments regarding construction of
§ 315(b), Petitioner’s sought-after relief is denied.

IPR2014-00008
IPR2014-00011
IPR2014-00012
IPR2014-00013

7

For PETITIONER:

James Murphy
Henry Petri
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
james.murphy@novakdruce.com
henry.petri@novakdruce.com

For PATENT OWNER:
Patrick Finnan
Michael Heim
HEIM, PAYNE & CHORUSH LLP
pjf@usiplaw.com
mheim@hpcllp.com