Toyota Motor Corporationv.Cellport Systems, Inc.

Patent Trial and Appeal Board

Dec 16, 2015

08586602 (P.T.A.B. Dec. 16, 2015)

Trials@uspto.gov Paper 8
571-272-7822 Entered: December 16, 2015

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

TOYOTA MOTOR CORPORATION,
Petitioner,

v.

CELLPORT SYSTEMS, INC.,
Patent Owner.
_______________

Case IPR2015-01422
Patent 5,732,074
_______________

Before JAMESON LEE, JAMES B. ARPIN, and SCOTT C. MOORE,
Administrative Patent Judges.

MOORE, Administrative Patent Judge.

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

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I. INTRODUCTION
Toyota Motor Corporation (“Petitioner”) filed a Petition to institute an
inter partes review of claims 1–21 (Paper 2, “Pet.”) of U.S. Patent No.
5,732,074 (Ex. 1001; “the ’074 Patent”). Cellport Systems, Inc. (“Patent
Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”). 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.”
On this record and for the reasons discussed below, we do not institute
an inter partes review of any claim of the ’074 Patent. The Petition is
denied.
II. BACKGROUND
A. Related Proceedings
This is the second petition for inter partes review of the ’074 Patent
filed by Petitioner. On February 2, 2015, Petitioner filed its Petition in
IPR2015-00633, seeking inter partes review of claims 1–21 of the ’074
Patent. IPR2015-00633, Paper 2. On August 14, 2015, we instituted an
inter partes review as to claims 12–21 of the ’074 Patent. IPR2015-00633,
Paper 11.
The ’074 Patent is also the subject of two patent infringement lawsuits
filed by Patent Owner: Cellport Systems, Inc. v. Toyota Motor Sales, U.S.A.,
Inc. , Case No. 14-cv-1632 (D. Colo.); and Cellport Systems, Inc. v. BMW of
North America, LLC , Case No. 14-cv-1631 (D. Colo.). Pet. 2; Paper 5.
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B. The ’074 Patent
The ’074 Patent is directed generally to facilitating the
communication of information between a remote computer and a vehicle.
Ex. 1001, Abstract. For example, the ’074 Patent describes a
communication system that is compatible with standardized network
communication links, such as the Internet and a controller area network used
in vehicles. Id. The system uses a controller inside the vehicle to facilitate
communication between the remote computer (which uses, e.g., an Internet-
based communication link) and the controller area network used within the
vehicle. Id.
Figure 1, reproduced below, illustrates an embodiment of the claimed
subject matter.

Figure 1 is a block diagram that depicts the general components of an
apparatus for bi-directional communication between one or more remote
stations 10a–10n and a vehicle. Ex. 1001, 5:26–29, 41–43. The remote
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stations communicate by way of a standardized remote network
communications link 14, such as the Internet. Id. at 5:49–62. The remote
stations transmit information to, and receive information from, the vehicle
over an airlink by way of remote airlink transfer protocol modem 20, which
may use a cellular digitized packet data (“CDPD”) configuration. Id. at
5:63–6:8.
Wireless device 18 is located at the vehicle and also has the capability
to receive and transmit information via the airlink. Ex. 1001, 6:3–5.
Wireless device 18 is associated operatively with modem 20, and
communicates with controller 30 (also contained within the vehicle) through
network protocol converter 26 using device interface 22. Id. at 6:5–14.
Controller interface 34 (mislabeled “14” in Figure 1) electrically links
controller 30 with vehicle standardized network 40. Id. at 6:37–39. Like
remote standardized network 14, vehicle standardized network 40 is an
established and previously developed type of network. Id. at 6:45–47.
Vehicle standardized network 40 interfaces with certain components in a
vehicle (i.e., physical vehicle devices 50a–50n), and provides message and
data-handling functions associated with sending and receiving data to or
from physical vehicle devices 50a–50n. Id. at 6:39–50.
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Figure 2 of the ’074 Patent further illustrates an embodiment of the
claimed subject matter and is reproduced below.

Figure 2 is a detailed block diagram that illustrates greater details of a
particular embodiment of the apparatus depicted in Figure 1. Ex. 1001,
5:29–30, 7:23–25, Fig. 2. In this embodiment, remote station 10a
communicates with modem 76 using the Internet 68 (the standardized
remote network communications link). See id. at 7:25–36. Controller 30
communicates with physical vehicle devices 50a–50n via controller area
network 124 (the vehicle standardized network), and controller area network
124 includes control network 122 and bus 126. See id. at 10:10–50. In this
embodiment, the network protocol converter (which was depicted as a
separate component in Figure 1) is integrated into controller 30. See id. at
8:1–8, 24–29, Fig. 2. Controller 30 also includes processor 90 and web
server 102. Id. Web server 102 is a commercially available Internet-related
product that services information related requests in http (hypertext
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transmission protocol) format. Id. at 8:40–45. Controller 30 further
includes CGI-bin (common gateway interface-binary) 110, which acts as a
link between the web server and a number of short executable programs
stored in program memory 114. Id. at 8:58–63.
C. Illustrative Claim
Challenged claims 1, 3, 4, 5, 7, 12, 16, and 21 are independent. Each
of the remaining challenged claims depends, directly or indirectly, from one
of these independent claims. Claim 1 is illustrative and is reproduced below.
1. An apparatus for information transmission involving one
or more remote stations and a vehicle, comprising:
at least a first remote station including computer means
located at a distance from a vehicle;
a wireless device for location in the vehicle for use in sending
and receiving information including data relative to said
first remote station over an airlink;
a plurality of different vehicle devices associated with the
vehicle and with each of said vehicle devices for at least
one of receiving and sending said information;
controller means including processing means in the vehicle
for controlling the sending and receiving of said
information using said wireless device between said first
remote station and the vehicle, said controller means
further including first standard network communication
means for use in presenting information for transmission
over the airlink in a first format that is acceptable to a first
standardized network that includes the airlink, wherein
said first network communication means enables said
information to be provided to multiple users that utilize
different makes of communication equipment, different
processing hardware and different applications software
executable by said processing means of said controller
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means, said first standard network communication means
including a web server in the vehicle for responding to a
plurality of service related requests and providing said
information in said first format for transmission to said
computer means at said first remote station using said
wireless device; and
a second standard network communication means, different
from said first standard network communication means, in
communication with said controller means for presenting
information in a second format that is acceptable to a
second standardized network, with said second
standardized network communication means
communicating with said vehicle devices for sending and
receiving said information relative thereto and in which
said controller means enables said information to be
properly communicated between said first and second
standardized networks.
Ex. 1001, 14:55–15:27.
D. References Relied Upon
Petitioner alleges that the challenged claims are unpatentable over the
following references:
References Exhibit Nos.
Jonathan Magid et al., THE WEB SERVER BOOK, TOOLS
& TECHNIQUES FOR BUILDING YOUR OWN INTERNET
INFORMATION SITE (Ventana Press, 1st ed. 1995)
(“Magid”)
1007
Y. U. Cao et al., A Remote Robotics Laboratory on the
Internet (UCLA Commotion Lab. 1995) (“Cao”)
1019
CAN Specification, Version 2.0 (Robert Bosch GmbH
1991) (“CAN”)
1023
US 5,309,351 (filed Sept. 2, 1992, issued May 3, 1994)
(“McCain”)
1029
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US 4,658,509 (filed Sept. 12, 1985, issued Apr. 21,
1987) (“Juengel”)
1030

E. Asserted Grounds of Unpatentability
References Statutory Basis Challenged Claims
Cao and CAN 35 U.S.C. § 103 21
Cao, CAN, and Magid 35 U.S.C. § 103 1–7, 9, 10, 12, 13,
and 16–19
Cao, CAN, Magid, and
McCain
35 U.S.C. § 103 8 and 15
Cao, Magid, and Juengel 35 U.S.C. § 103 11, 14, and 20

III. ANALYSIS
A. Claim Construction
1. Claim Construction Standard
The’074 Patent will expire on January 16, 2016, which is before any
final decision likely would be issued. Pet. 10; Prelim. Resp. 9. Both parties
have proposed that the claims be construed in accordance with the standard
used by U.S. district courts and set forth in Phillips v. AWH Corp., 415 F.3d
1303, 1314 (Fed. Cir. 2005) (en banc). Pet. 9–10; Prelim. Resp. 9.
Pursuant to 37 C.F.R. § 42.100(b), “[a] claim in an unexpired patent
shall be given its broadest reasonable construction in light of the
specification of the patent in which it appears.” But here, given the patent’s
pending expiration, we will analyze Petitioner’s arguments through the lens
of the claim construction standard that will apply to any final written
decision. Thus, we construe the claims in accordance with the standard set
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forth in Phillips.1 37 C.F.R. § 42.5(b); cf. In re Rambus Inc., 694 F.3d 42,
46 (Fed. Cir. 2012) (“While claims are generally given their broadest
possible scope during prosecution, the Board’s review of the claims of an
expired patent is similar to that of a district court’s review.”) (internal
citation omitted).
“In determining the meaning of the disputed claim limitation, we look
principally to the intrinsic evidence of record, examining the claim language
itself, the written description, and the prosecution history, if in evidence.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). The words of a
claim generally are given their ordinary and customary meaning, which is
the meaning the term would have to a person of ordinary skill at the time of
the invention, in the context of the entire patent including the specification.
See Phillips, 415 F.3d at 1312–13. Claims are not interpreted in a vacuum
but are a part of and read in light of the specification. See Slimfold Mfg. Co.
v. Kinkead Indus., Inc., 810 F.2d 1113, 1116 (Fed. Cir. 1987). Although it is
improper to read a limitation from the specification into the claims, the
claims still must be read in view of the specification. See Microsoft Corp. v.
Multi-Tech Sys., Inc., 357 F.3d 1340, 1347 (Fed. Cir. 2004).
2. “controller means”; “processing means”
Each of independent claims 1, 3, 4, 5, and 7 recites a “controller
means including processing means in the vehicle for controlling the sending

1 Our constructions of the disputed claim terms set forth below likely would
have been the same had we applied broadest reasonable interpretation
standard.
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and receiving of said information using said wireless device between said
first remote station and the vehicle” (emphasis added). Because the claim
terms “controller means” and “processing means” include the word
“means,” they are presumptively means-plus-function claim limitations
under 35 U.S.C. § 112, ¶ 6,2 and would be construed to cover the
corresponding structure, material, or acts described in the specification and
equivalents thereof. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348
(Fed. Cir. 2015) (en banc). This presumption, however, “can be rebutted if
the evidence intrinsic to the patent and any relevant extrinsic evidence so
warrant.” Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161
F.3d 696, 704 (Fed. Cir. 1998).
The parties propose the following constructions for these claim terms
(see Pet. 10–11; Prelim. Resp. 13–15):

2 Paragraphs 1 through 6 of 35 U.S.C. § 112 were replaced with §§ 112(a)
through 112(f) when § 4(c) of the Leahy-Smith America Invents Act
(“AIA”) took effect on September 16, 2012. Because the patent application
resulting in the ’074 Patent was filed before the effective date of the AIA,
we will refer to the pre-AIA version of 35 U.S.C. § 112.
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Claim
Term
Petitioner’s Construction Patent Owner’s
Construction
controller
means
35 U.S.C. § 112, ¶ 6, claim
limitation.

Identified Function:
Controlling the sending and
receiving of said information
using said wireless device
between said first remote
station and the vehicle.

Corresponding Structure:
Processor 90, TCP/IP stack 98,
data memory 106, and program
memory 114.
Not a 35 U.S.C. 112, ¶ 6,
claim limitation.

“A controller”
processing
means
35 U.S.C. § 112, ¶ 6, claim
limitation.

Identified Function:
Processing.

Corresponding Structure:
A microprocessor.
35 U.S.C. § 112, ¶ 6, claim
limitation.

Identified Function:
Controlling the sending and
receiving of said
information using said
wireless device between
said first remote station and
the vehicle.

Corresponding Structure:
Processor 90 in conjunction
with real time operating
system 94.
Patent Owner argues that the presumption that the “controller means”
is a means-plus-function limitation is overcome because this limitation lacks
an associated function. Prelim. Resp. 13. We agree. The grammatical
structure of the claim and, in particular, the fact that the functional language
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cited by Petitioner appears immediately after the recitation of the
“processing means” evidences an intent to associate this functional language
with the “processing means” claim limitation. Thus, for purposes of this
Decision, we construe “processing means” as a means-plus-function claim
limitation having a recited function of “controlling the sending and receiving
of said information using said wireless device between said first remote
station and the vehicle.”
“Structure disclosed in the specification qualifies as ‘corresponding
structure’ if the intrinsic evidence clearly links or associates that structure to
the function recited in the claim.” Williamson, 792 F.3d at 1352. The
Specification of the ’074 Patent indicates that the sending and receiving of
vehicle information between the remote station and the vehicle is controlled
by processor 90 in conjunction with real time operating system 94. See Ex.
1001, 8:1–23, 13:54–56. Data memory 106 is not linked clearly to the
recited function because data memory 106 merely stores information, and
does not control the sending and receiving of information. See id. 8:45–58,
9:31–45, 10:58–64, 13:8–10, 23–26. Thus, the structure in the Specification
that corresponds to the “processing means” is “processor 90 in conjunction
with real time operating system 94.”
Despite the rebuttable presumption, we do not construe “controller
means” as a means-plus-function claim limitation. The presumption is
overcome because the claim language does not link the “controller means”
to a specific recited function. See York Prod., Inc. v. Cent. Tractor Farm &
Family Ctr., 99 F.3d 1568, 1574 (Fed. Cir. 1996) (“Without a ‘means’
sufficiently connected to a recited function, the presumption in use of the
word ‘means’ does not operate.”). In addition, the presumption is overcome
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when the claim specifies detailed structure sufficient to perform any recited
or implicit function, e.g., controlling. See TriMed, Inc. v. Stryker Corp., 514
F.3d 1256, 1259–60 (Fed. Cir. 2008) (“Sufficient structure exists when the
claim language specifies the exact structure that performs the functions in
question without need to resort to other portions of the specification or
extrinsic evidence for an adequate understanding of the structure.”); Altiris,
Inc. v. Symantec Corp., 318 F.3d 1363, 1376 (Fed. Cir. 2003). Each of
independent claims 1, 3, 4, 5, and 7 recites that the “controller means”
includes the “processing means” and the “first standard network
communication means.” As discussed herein, the processing means and the
first standard network communication means are means-plus-function claim
limitations that are defined in terms of specific structures disclosed in the
Specification. Moreover, the recited “controller” is also a structure that is
sufficient to perform any recited or implicit function of the “controller
means.” The rebuttable presumption also is overcome because the controller
means claim limitation is associated with these structures. Thus, in
accordance with the ordinary and customary meaning of the claim language,
and consistent with the Specification (see Ex. 1001, 2:66–3:29, 6:11–37,
8:1–45), for purposes of this Decision, we construe “controller means” as “a
controller.”
3. “first standard network communication means”
Each of independent claims 1, 3, 4, 5, and 7 also recites a “controller
means further including first standard network communication means for
use in presenting information for transmission over the airlink in a first
format that is acceptable to a first standardized network that includes the
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airlink” (emphasis added). The parties propose the following constructions
for the “first standard network communication means” claim limitation (see
Pet. 11; Prelim. Resp. 15–17):
Claim Term Petitioner’s
Construction
Patent Owner’s
Construction
first standard
network
communication
means
35 U.S.C. § 112, ¶ 6,
claim limitation.

Identified Function:
Presenting information
for transmission over the
airlink in a first format
that is acceptable to a
first standardized
network that includes the
airlink.

Corresponding Structure:
A CDPD network
interface or two-way
paging interface in
conjunction with a
controller.
35 U.S.C. § 112, ¶ 6,
claim limitation.

Identified Function: Use
in presenting
information for
transmission over the
airlink in a first format
that is acceptable to a
first standardized
network that includes the
airlink.

Corresponding Structure:
Network protocol
converter 26.

The proper function associated with a means-plus-function limitation
is the function explicitly recited in the claim. In re Teles AG
Informationstechnologien, 747 F.3d 1357, 1367–68 (Fed. Cir. 2014) (“[t]he
statute does not permit limitation of a means-plus-function claim by
adopting a function different from that explicitly recited in the claim”)
(citation omitted). Each of independent claims 1, 3, 4, 5, and 7 recites the
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following function for the first standard network communication means:
“use in presenting information for transmission over the airlink in a first
format that is acceptable to a first standardized network that includes the
airlink.” Thus, for purposes of this Decision, this is the proper recited
function of the “first standard network communication means.”
The Specification of the ’074 Patent links network protocol converter
26 to the recited function of the first standard network communication
means claim limitation. See Ex. 1001, 6:19–31. Petitioner argues that the
CDPD paging interface and two way paging interface described at column 2,
lines 31–52, of the ’074 Patent are structures that correspond to this claim
limitation. Pet. 12. These structures, however, are not clearly associated or
linked in the Specification to the recited function of the first standard
network communication means limitation. See Ex. 1001, 2:31–52;
Williamson, 792 F.3d at 1352. Thus, the structure in the Specification that
corresponds to the “first standard network communication means” is
“network protocol converter 26.”
4. Other Disputed Claim Terms
Petitioner and Patent Owner have proposed constructions for several
other claim terms. However, “claim terms need only be construed ‘to the
extent necessary to resolve the controversy.’” Wellman, Inc. v. Eastman
Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (quoting Vivid Techs., Inc.
v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)); see also EMI
Grp. N. Am., Inc. v. Intel Corp., 157 F.3d 887, 895 (Fed. Cir. 1998) (holding
that the construction of a given claim term was “irrelevant” because it did
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not affect the underlying controversy between the parties). No express
constructions for the other claim terms are necessary at this time.
B. Asserted Grounds of Unpatentability
1. Overview
Petitioner argues that challenged claims 1–21 are unpatentable under
35 U.S.C. § 103. Pet. 9. A patent claim is unpatentable under 35 U.S.C.
§ 103 if the differences between the claimed subject matter and the prior art
are “such that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in the art to
which such subject matter pertains.” The question of obviousness under 35
U.S.C. § 103 is resolved on the basis of underlying factual determinations,
including: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of skill in
the art;3 and (4) objective evidence of nonobviousness, i.e., secondary
considerations.4 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
2. Obviousness of Claims 1–11
a. Overview of Cao
Cao is a technical paper that describes remote robotics laboratory
system that includes a base station and ten (10) small mobile robots. Ex.
1019, 1, 6. The mobile robots include on-board Unix-based workstations.
Id. at 1. The base station and the on-board Unix workstations of the robots

3 For purposes of this Decision, we consider the cited references to be
representative of the level of ordinary skill in the art. See Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
4 The current record does not contain arguments regarding secondary
considerations.
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communicate using Proxim radio modems and the TCP/IP protocol. See Ex.
1019, 6.
b. Overview of CAN
CAN is a technical specification for a Controller Area Network
(“CAN”). See Ex. 1023, 1, 8.
c. Overview of Magid
Magid is a book that describes tools and techniques for building
Internet information sites. Ex. 1007, 1. Magid describes the use of web
servers (Ex. 1009, 7–8) and common gateway interface (“CGI”) scripts (see
id. at 27–28), in order to implement an Internet website.
d. Overview of McCain
McCain is a U.S. patent that describes a data and communication
system that provides for the interchange of data between a host computer,
individual personal computers, a hand-held computing unit, and factory
machinery. Ex. 1029, Abstract.
e. Overview of Juengel
Juengel is a U.S. patent that describes a battery operated probe. Ex.
1030, Abstract. The probe detects a low-battery condition, and wirelessly
transmits information to a remote receiver indicating that the battery power
in the probe is low. Id.
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f. Analysis
For the reasons that follow, we are not persuaded that the information
presented in the Petition shows that there is a reasonable likelihood that the
Petitioner will prevail in its obviousness challenge to claims 1–11.
Each of independent claims 1, 3, 4, 5, and 7 recites the “first standard
network communication means” claim limitation. Claims 2, 6, and 8–11
depend from claim 1 and, thus, incorporate this limitation by way of
dependence. A petition for inter partes review “must specify where each
element of the claim is found in the prior art patents or printed publications
relied upon.” 37 C.F.R. § 42.104(b)(4). Because the “first standard network
communication means” is a means-plus-function claim limitation, Petitioner
is required to show that both the recited function of this claim limitation and
the corresponding structure or an equivalent are present in the applied
references. Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299
(Fed. Cir. 2009) (“[A] challenger who seeks to demonstrate that a means-
plus-function limitation was present in the prior art must prove that the
corresponding structure—or an equivalent—was present in the prior art.”).
The Petition does not identify any structure in the applied references
that is allegedly identical or equivalent to the corresponding structure of the
“first standard network communication means” claim limitation, i.e.,
network protocol converter 26. Petitioner’s entire argument concerning the
“first standard network communication means” of claims 1, 3, 4, 5, and 7, is
reproduced below:
Cao discloses a “first standard network communications
means” (i.e., wireless Proxim radio link with base station) that
uses Internet Protocol for “presenting information for
transmission over the airlink in a first format that is acceptable
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to a first standardized network that includes the airlink” (i.e.,
TCP/IP format). See Ex. 1019 at 6; see also supra Section
VIII.A.4.
Pet. 40. Though Petitioner alleges that the “wireless Proxim radio link with
base station” of Cao performs the recited function of the “first standard
network communication means,” Petitioner does not compare the structure
of the “wireless Proxim radio link with base station” of Cao to the structure
of network protocol converter 26. Cited Section VIII.A.4 of the Petition
similarly does not address the structure of the “wireless Proxim radio link
with base station” of Cao. See Pet. 18–20. Thus, the Petition does not
identify any structure in the applied references that is allegedly identical or
equivalent to the corresponding structure of the “first standard network
communication means” claim limitation.
For the foregoing reasons, the Petition fails to show persuasively that
the “first standard network communication means” claim limitation is found
in the references that Petitioner relies upon with respect to claims 1–11.
Thus, the information presented in the Petition is not sufficient to
demonstrate a reasonable likelihood that Petitioner will prevail in
demonstrating that claims 1–11 are unpatentable.
3. Obviousness of Claims 12–21
We already have instituted inter partes review as to claims 12–21 of
the ’074 Patent. IPR2015-00633, Paper 11. We have discretion to decline
to institute a second inter partes review as to these claims. See 35 U.S.C.
§ 314(a) & 37 C.F.R. § 108 (institution is discretionary); 35 U.S.C. § 325(d)
& 37 C.F.R. 42.122(a) (termination is discretionary where there are multiple
proceedings before the Office involving the same patent); see also Asustek
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Computer, Inc. v. Exotablet, Ltd., Case IPR2015-00043, slip op. at 9–10
(PTAB Apr. 23, 2015) (Paper 6) (declining to institute a second review
challenging the same claims on different grounds). We construe our rules to
secure the just, speedy, and inexpensive resolution of every proceeding. 37
C.F.R. § 42.1(a). We approach our discretion to decline review on a case-
by-case basis. See, e.g., Conopco, Inc. v. Procter & Gamble Co., Case
IPR2014-00628, slip op. at 10 (PTAB Oct. 20, 2014) (Paper 21).
The Petition in IPR2015-00633 was filed on February 2, 2015.
IPR2015-00633, Paper 1. The Patent Owner filed its Preliminary Response
in IPR2015-00633 on May 20, 2015. IPR2015-00633, Paper 8. The Petition
in this proceeding was not filed until June 19, 2015. Paper 2.
The 4½ month delay between Petitioner’s first and second Petitions is
problematic for several reasons. First, the timing of this Petition makes
consolidation impractical, and, thus, frustrates the interest of judicial
economy. The oral hearing in IPR2015-00633 is set for April 14, 2016.
IPR2015-00633, Paper 12. Thus, it would not be practical to institute a
second inter partes review and consolidate that proceeding with IPR2015-
00633. See 35 U.S.C. § 315(d). Assuming that Petitioner has shown here a
reasonable likelihood that claims 12–21 are unpatentable, two separate trials
would be necessary, requiring the parties, as well as the Board, to expend
significant additional resources. Second, even if we were to institute a
second inter partes review involving claims 12–21, Petitioner might be
unable to “maintain” the second inter partes review upon issuance of a final
written decision in IPR2015-00633. 35 U.S.C. § 325(e)(1) provides that any
final written decision in IPR2015-00633 on the patentability of claims 12–21
would preclude Petitioner from “maintain[ing] a proceeding before the
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Office . . . on any ground that the petition raised or reasonably could have
raised during [the earlier] post-grant review.” Thus, instituting a second
inter partes review may result in a significant waste of time and resources
for the parties and for Board. See 37 C.F.R. § 42.1(b) (“This part shall be
construed to secure a just, speedy, and inexpensive resolution of every
proceeding.”). Third, the timing of the second Petition raises the potential
for gamesmanship. Petitioner did not file this Petition until one month after
Patent Owner filed its Preliminary Response in IPR2015-00633. The timing
of the second Petition gave Petitioner the opportunity to preview the
arguments set forth in the Patent Owner Preliminary Response in IPR2015-
00633.
Petitioner also has not provided an adequate explanation for the 4½
month delay between the filing of this Petition and the filing of its previous
Petition. Though Petitioner alleges that it was not aware of Cao “at the time
it filed Petition No. 2015-00633” (Pet. 2), Petitioner does not state when and
under what circumstances, during the 4½ months that preceded the filing of
the current Petition, it became aware of Cao. Cao is a technical paper that
was published by a major research university in the United States, and, thus,
it is not clear on this record why Petitioner was unable to locate Cao at an
earlier date. See Ex. 1019, 1.
We further note that Petitioner has not identified any meaningful
distinctions between the arguments regarding claims 12–21 in this Petition
and the arguments Petitioner set forth in its earlier Petition. For instance,
Petitioner does not explain in what ways the grounds asserted against claims
12–21 in this proceeding are superior to the grounds against the same claims
and on the basis of which we instituted trial in IPR2015-00633.
IPR2015-01422
Patent 5,732,074

22

In view of the foregoing, we exercise our discretion and decline to
institute a second inter partes review as to claims 12–21 of the ’074 Patent.
IV. ORDER
Accordingly, it is
ORDERED that the Petition is denied, and no inter partes review is
instituted as to any claim of the ’074 Patent.

IPR2015-01422
Patent 5,732,074

23

For PETITIONER:
James R. Barney
Thomas W. Winland
Joshua L. Goldberg
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
james.Barney@finnegan.com
tom.winland@finnegan.com
joshua.goldberg@finnegan.com
Toyota-Cellport-IPR@finnegan.com

For PATENT OWNER:

Gregory M. Howison
Peter J. Thoma
HOWISON & ARNOTT, LLP
ipr@dalpat.com