Paper 14 Tel: Entered: February 13, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE

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1 Paper 14 Tel: 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 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

2 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 cv (D. Del.); and Wasica Finance GmbH v. Schrader International, Inc., Case No cv (D. Del.). Pet. 1; Paper 9, 2. The parties also indicate that the 524 patent is involved in two additional inter partes review 2

3 proceedings: IPR ( IPR 295 ) 1 ; and IPR ( 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 Petitioner also provides testimony from Ray Mercer, Ph.D. ( the Mercer Declaration ). Ex 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, 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, 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 IPR Schrader International, Inc. is the petitioner in IPR Italian Patent No , 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 ). 3

4 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 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 , 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 IPR , 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: 4

5 (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 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 Specifically, Petitioner contends that 5

6 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 (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, (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 (citing Ex ). Petitioner additionally contends that a 6

7 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 ). 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 (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 (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. 7

8 III. ORDER For the reasons given, it is ORDERED that no trial is instituted. For PETITIONER: Gary Ropski James Cleland John Lingl Nicholas Restauri For PATENT OWNER: Michael Hawkins Patrick Michael 8