United States District Court, N.D. Texas, Dallas Division
MEMORANDUM OPINION AND ORDER
C. GODBEY UNITED STATES DISTRICT JUDGE
Memorandum Opinion and Order addresses Plaintiff Fundamental
Innovation Systems International, LLC's
(“FIS”) motion for partial summary judgment of no
invalidity of three patents . For the reasons below, the
Court denies FIS's motion.
Origins of the Dispute
parties' dispute centers on several patents, the rights
to which are owned by FIS, that relate to technologies
enabling USB charging of mobile devices. Pltf.'s Brief
Mot. Partial Summary Judgment 5 . In February 2017, FIS
filed suit against Defendants ZTE Corporation, ZTE (USA),
Inc., and ZTE (TX), Inc. (collectively, “ZTE”).
Id. FIS alleged that ZTE's mobile devices,
tablets, and charging adaptors infringed multiple FIS
patents, including patent numbers 8, 624, 550 (‘550
patent); 7, 239, 111 (‘111 patent); and 8, 232, 766
(‘766 patent). Id.
this litigation, ZTE filed two petitions for inter partes
review (“IPR”) on claims of the ‘550 patent
with the Patent Trial and Appeals Board (“PTAB”),
both filed on October 26, 2017. Id. at 6-7. The PTAB
instituted a review of all claims and grounds in the first
petition. Id. at 6. The PTAB declined to institute
the second petition, which raised as grounds anticipation
based on references to patent 7, 360, 004
(“Dougherty”) and obviousness based on a
combination of the Dougherty and 6, 625, 738
(“Shiga”) patents. Id. at 7.
Subsequently, ZTE raised the arguments asserted in its second
IPR petition in its invalidity expert report during this
litigation. Id. at 6-7. FIS now seeks partial
summary judgment of no invalidity of its ‘550,
‘111, and ‘766 patents.
“shall grant summary judgment if the movant shows that
there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.”
Fed.R.Civ.P. 56(a); Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 247 (1986). In making this determination,
courts must view all evidence and draw all reasonable
inferences in the light most favorable to the party opposing
the motion. United States v. Diebold, Inc., 369 U.S.
654, 655 (1962).
moving party bears the initial burden of informing the court
of the basis for its belief that there is no genuine issue
for trial. Celotex Corp. v. Catrett, 477 U.S. 317,
323 (1986). Once the movant has made the required showing,
the burden shifts to the nonmovant to establish that there is
a genuine issue of material fact such that a reasonable jury
might return a verdict in its favor. Matsushita Elec.
Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87
(1986). Factual controversies are resolved in favor of the
nonmoving party “‘only when an actual controversy
exists, that is, when both parties have submitted evidence of
contradictory facts.'” Olabisiomotosho v. City
of Houston, 185 F.3d 521, 525 (5th Cir. 1999) (quoting
McCallum Highlands, Ltd. v. Washington Capital Dus,
Inc., 66 F.3d 89, 92 (5th Cir. 1995)).
Inter Partes Review Estoppel
may challenge the validity of an issued patent via an
administrative review process, inter partes review, conducted
by the PTAB. 35 U.S.C. § 311(a). Section 315(e)(2)
provides that parties who petition for inter partes review by
the PTAB and are granted institution will be estopped from
subsequently asserting grounds in litigation that they either
raised or “reasonably could have raised during that
inter partes review.” 35 U.S.C. § 315(e)(2).
Shaw Industries Group, Inc. v. Automated Creel Systems,
Inc., the Federal Circuit interpreted section 315(e)(2)
to estop only grounds that were granted institution by the
PTO because the Court determined that “IPR does not
begin until it is instituted.” Shaw Indus. Grp.,
Inc. v. Automated Creel Syst., Inc., 817 F.3d 1293, 1300
(Fed. Cir. 2016). The Court rendered this decision during a
time when a Patent and Trademark Office (“PTO”)
regulation permitted the PTAB to partially institute IPR by
instituting some but not all the grounds raised by a
petitioner in their IPR petition. 37 C.F.R. § 42.108(a),
(b); see also Shaw Indus. Grp., Inc., 817 F.3d at
1298. Shaw thus applied its section 315(e)(2)
interpretation to the specific question whether section
315(e)(2) estoppel barred all grounds raised in a partially
instituted IPR petition, but the Shaw court did not
limit its interpretation to these circumstances. Id.
at 1300. The Supreme Court later invalidated the practice of
partial institution and held that the PTAB must grant leave
to proceed on the entirety of an IPR petition or not
institute at all. SAS Inst., Inc. v. Iancu, 138
S.Ct. 1348, 1353 (2018).
patent for a claimed invention is invalid as obvious
“if the differences between the claimed invention and
the prior art are such that the claimed invention as a whole
would have been obvious before the effective filing date of
the claimed invention to a person having ordinary skill in
the art to which the claimed invention pertains.” 35
U.S.C. § 103. A court's obviousness inquiry is not
limited to comparisons to isolated teachings of individual
prior art patents. See KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 417-18 (2007). “Often, it will
be necessary for a court to look to interrelated ...