Takeaway: The Board does not consider arguments made in a declaration and not made in the Petition itself.

In its Decision, the Board denied institution of inter partes review of claims 58, 104, 111, 114, 194, 209, 226, 276-278, 290, and 306 of the ’507 Patent. In general, the ’507 Patent “relates to an orthogonal complex spreading method for a multichannel and an apparatus thereof.”

Petitioner supported its Petition with a Declaration by an expert. The Petition itself merely includes conclusory statements for several key issues, citing to the Declaration without any meaningful argument or explanation. For example, the Petition (1) contends an effective filing date for the ’507 Patent without explanation; (2) contends claim construction positions without explanation; and (3) omits a summary of the prosecution history. In each case, the Petition referred to the Declaration for further explanation. Additionally, the Petition omits any adequate explanation of how the references relied upon support Petitioner’s challenges, and instead merely includes claim charts that merely cite portions of the references together with citations to the Declaration.

Patent Owner directed the Board to its informative decision in Cisco Systems, Inc. v. C-Cation Techs., LLC, Case IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12) (informative), which explained that citations to “large portions of another document without sufficient explanation of those portions, amounts to incorporation by reference,” which is improper. Accordingly, the Board does not consider arguments not made in the Petition itself.

The Board agreed with Patent Owner that “standing on its own, the Petition lacks any ‘detailed explanation of the significance of the evidence,’ in violation of 37 C.F.R. § 42.22(a)(2).” Accordingly, the Board denied institution, because the Petition does not show that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims.

ZTE (USA), Inc. and Huawei Device USA, Inc. v. Electronics and Telecommunications Research Institute, IPR2015-00029
Paper 12: Decision on Institution of Inter Partes Review
Dated: March 20, 2015
Patent: RE44,507 E
Before: Rama G. Elluru, Patrick M. Boucher, and Kevin W. Cherry
Written by: Cherry
Related Proceedings: SPH America, LLC v. AT&T Mobility, LLC, Case No. 3:13-cv-02318-CAB (S.D. Cal.); SPH America, LLC v. Sprint Spectrum L.P., Case No. 3:13-cv-02319-CAB (S.D. Cal.); SPH America, LLC v. Research in Motion, Ltd., Case No. 3:13-cv-02320-CAB (S.D. Cal.); SPH America, LLC v. Huawei Technologies, Co., Ltd., Case No. 3:13-cv-02323-CAB (S.D. Cal.); SPH America, LLC v. T-Mobile US, Inc., Case No. 3:13-cv-02324-CAB (S.D. Cal.); SPH America, LLC v. Verizon Communications, Case No. 3:13-cv-02325-CAB (S.D. Cal.); and SPH America, LLC v. ZTE (USA), Inc., Case No. 3:13-cv-02326-CAB (S.D. Cal.)