Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`Paper No. 10
` Entered: November 13, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
`_______________
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`_______________
`
`
`Before GEORGIANNA W. BRADEN, KEVIN W. CHERRY, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 314(a)
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`
`Paper No. 10
` Entered: November 13, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
`_______________
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`_______________
`
`
`Before GEORGIANNA W. BRADEN, KEVIN W. CHERRY, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 314(a)
`
`
`
`
`
`
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`
`I.
`
`INTRODUCTION
`
`A.
`
`Background
`
`Google LLC1 (“Petitioner”) filed a Petition requesting an inter partes
`
`review of claims 1, 3, 4, 7, 9, 16, 17, and 20–22 of U.S. Patent No. 9,769,477
`
`B2 (Ex. 1001, “the ’477 patent”). Paper 1 (“Pet.”). Realtime Adaptive
`
`Streaming LLC2 (“Patent Owner”) filed a Preliminary Response. Paper 6
`
`(“Prelim. Resp.”).
`
`Under the statute, an inter partes review may not be instituted unless
`
`the information presented in the petition and the preliminary response shows
`
`“there is a reasonable likelihood that the petitioner would prevail with respect
`
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`
`Moreover, the Supreme Court has held that a decision under § 314 may not
`
`institute review on fewer than all claims challenged in the petition. SAS Inst.,
`
`Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018); see also PGS Geophysical AS
`
`v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to
`
`require “a simple yes-or-no institution choice respecting a petition,
`
`embracing all challenges included in the petition”).
`
`After considering the Petition, the Preliminary Response, and
`
`associated evidence, we determine Petitioner has satisfied the threshold
`
`requirement set forth in 35 U.S.C. § 314(a). Thus, based on the information
`
`
`1 Petitioner identifies itself and YouTube LLC as the real parties-in-interest
`pursuant to 37 C.F.R. § 42.8. Pet. 1. Petitioner also indicates that Google
`LLC is a subsidiary of XXVI Holdings Inc., which itself is a subsidiary of
`Alphabet Inc., and further indicates that XXVI Holdings Inc. and Alphabet
`Inc. are not real parties-in-interest.
`
`2 Patent Owner identifies only itself as the real party-in-interest pursuant to
`37 C.F.R. § 42.8. Paper 4, 1.
`
`2
`
`
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`presented, and under SAS and PGS Geophysical AS, we institute an inter
`
`partes review of claims 1, 3, 4, 7, 9, 16, 17, and 20–22 of the ’477 patent.
`
`II. BACKGROUND
`
`A.
`
`Related Proceedings
`
`Petitioner informs us of multiple pending district court proceedings
`
`involving the ’477 patent, some of which involve Petitioner, and three
`
`pending inter partes review proceedings: IPR2018-01187; IPR2018-01630;
`
`and IPR2019-00786. Pet. 1–3. Patent Owner informs us of a prior pending
`
`inter partes review petition challenging the ’477 patent, IPR2018-01413.
`
`Prelim. Resp. 4. We note IPR2018-01413 was terminated prior to the
`
`issuance of a decision on institution. See IPR2018-01413, Paper 10.
`
`B.
`
`Background of Technology and the’477 Patent
`
`The ’477 patent was filed on October 6, 2015, and is titled “Video
`
`Data Compression Systems.” Ex. 1001, Title. It describes systems and
`
`methods directed to a “compressing and decompressing based on the actual
`
`or expected throughput (bandwidth) of a system employing data compression
`
`and a technique of optimizing based upon planned, expected, predicted, or
`
`actual usage.” Ex. 1001, 7:66–8:3, 9:27–31. The ’477 patent states that
`
`“dynamic modification of compression system parameters so as to provide an
`
`optimal balance between execution speed of the algorithm (compression rate)
`
`and the resulting compression ratio, is highly desirable.” Id. at 1:64–67. The
`
`’477 patent also states that it seeks to “provide[] a desired balance between
`
`execution speed (rate of compression) and efficiency (compression ratio).”
`
`Id. at 8:24–27. For example, where the speed of the encoder causes a
`
`“bottleneck” because “the compression system cannot maintain the required
`
`or requested data rates,” “then the controller will command the data
`
`3
`
`
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`compression system to utilize a compression routine providing faster
`
`compression . . . so as to mitigate or eliminate the bottleneck.” Id. at 14:14–
`
`24. The ’477 patent discloses that it can resolve “bottlenecks” in the
`
`throughput of a system by switching between different compression
`
`algorithms applied to data. Id. at 10:3–8.
`
`One embodiment of the ’477 patent is shown in Figure 2, reproduced
`
`below.
`
`
`
`Figure 2, above, illustrates a method for providing bandwidth sensitive data
`
`compression. Id. at 13:25–27. The data compression system is initialized
`
`during a boot-up process after a computer is powered on and a default
`
`compression/decompression routine is initiated (step 20). Id. at 13:31–34.
`
`According to the ’477 patent, the default algorithm comprises an
`
`asymmetrical algorithm, because asymmetric algorithms provide “a high
`
`compression ratio (to effectively increase the storage capacity of the hard
`
`disk) and fast data access (to effectively increase the retrieval rate from the
`
`4
`
`
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`hard disk).” Id. at 13:35–45. According to the ’477 patent, depending on the
`
`access profile, it “is preferable to utilize an asymmetrical algorithm that
`
`provides a slow compression routine and a fast decompression routine so as
`
`to provide an increase in the overall system performance as compared to
`
`performance that would be obtained using a symmetrical algorithm.” Id.
`
`at 12:23–28. The ’477 patent notes that symmetric routines “compris[e] a
`
`fast compression routine.” Id. at 14:40–43. In one embodiment, the ’477
`
`patent discloses a controller “tracks and monitors the throughput . . . of the
`
`data compression system 12.” Id. at 10:54–57. When the throughput of the
`
`system falls below a predetermined threshold, the system generates control
`
`signals to enable/disable different compression algorithms. Id. at 10:55–58.
`
`C.
`
`Illustrative Claims
`
`As noted above, Petitioner challenges claims 1, 3, 4, 7, 9, 16, 17,
`
`and 20–22, with claim 1 and 20 being independent. Challenged independent
`
`claims 1 and 20 are reproduced below:
`
`1. A system, comprising:
`a plurality of different asymmetric data compression encoders,
`wherein each asymmetric data compression encoder of the
`plurality of different asymmetric data compression encoders
`is configured to utilize one or more data compression
`algorithms, and
`wherein a first asymmetric data compression encoder of the
`plurality of different asymmetric data compression encoders
`is configured to compress data blocks containing video or
`image data at a higher data compression rate than a second
`asymmetric data compression encoder of the plurality of
`different asymmetric data compression encoders; and
`one or more processors configured to:
`determine one or more data parameters, at least one of the
`determined one or more data parameters relating to a
`
`5
`
`
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`
`throughput of a communications channel measured in
`bits per second; and
`select one or more asymmetric data compression encoders
`from among the plurality of different asymmetric data
`compression encoders based upon, at least in part, the
`determined one or more data parameters.
`
`Ex. 1001, 20:57–21:13.
`
`
`
`20. A system, comprising:
`a plurality of video data compression encoders;
`wherein at least one of the plurality of video data compression
`encoders is configured to utilize an asymmetric data
`compression algorithm, and
`wherein at least one of the plurality of video data compression
`encoders is configured to utilize an arithmetic data
`compression algorithm,
`wherein a first video data compression encoder of the plurality
`of video data compression encoders is configured to
`compress at a higher compression ratio than a second data
`compression encoder of the plurality of data compression
`encoders; and
`one or more processors configured to:
`determine one or more data parameters, at least one of the
`determined one or more data parameters relating to a
`throughput of a communications channel; and
`select one or more video data compression encoders from
`among the plurality of video data compression encoders
`based upon, at least in part, the determined one or more
`data parameters.
`
`Id. at 22:20–42.
`
`6
`
`
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`
`D.
`
`The Asserted Grounds of Unpatentability and Evidence of Record
`
`The information presented in the Petition sets forth proposed grounds
`
`of unpatentability of claims 1, 3, 4, 7, 9, 16, 17, and 20–22 of the ’477 patent
`
`under 35 U.S.C. §§ 102 and 103 as follows (see Pet. 4):3
`
`Reference
`
`Basis Challenged Claims
`
`Brooks4
`
`§ 102
`
`1, 3, 4, 7, 9, 16, 17, 20–22
`
`Brooks and Provisional
`U.S Patent Application
`No. 60/157,468
`
`§ 103
`
`1, 3, 4, 7, 9, 16, 17, 20–22
`
`III. PRLIMINARY MATTERS
`
`A. Analysis of Statutory Bar Under 35 U.S.C. § 315(b)
`
`Patent Owner argues the Petition was filed “exactly one year and two
`
`days” after service of the complaint in the District Court Lawsuit. Prelim.
`
`Resp. 4. Patent Owner specifically argues that Petitioner was served with a
`
`complaint on May 4, 2018, thus, the one-year statutory deadline fell on
`
`Saturday, May 4, 2019. Id. Patent Owner acknowledges we previously have
`
`found petitions timely where the bar date was on a weekend, as is the case
`
`here. Id. (citing Samsung Electronics Co., Ltd. v. Immersion Corp.,
`
`IPR2018-01468, Paper 10 at 14, 19 (Feb. 19, 2019)). Patent Owner does not
`
`argue we should deviate from this prior non-precedential opinion. Id.
`
`Rather, Patent Owner improperly incorporates by reference (37 C.F.R.
`
`
`3 Petitioner supports its challenge with the Declaration of Jeffrey J.
`Rodriguez, Ph.D. (“Dr. Rodriguez”). Ex. 1002.
`
`4 U.S. Patent No. 7,143,432, issued Nov. 28, 2006 (Ex. 1006, “Brooks”).
`
`7
`
`
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`§ 42.6(a)(3)) the arguments and authorities in the POPR and PO sur-reply
`
`(Papers 6 and 8) in IPR2018-01468. Id.
`
`Petitioner does not address the time bar issue either in its Petition or
`
`Reply. See, e.g., Pet. 4 (“IV. Grounds for Standing. Petitioner certifies that
`
`the ’477 Patent is available for review and Petitioner is not barred or
`
`estopped from requesting review on the grounds identified herein.”).
`
`Like the present case, in IPR2018-01468 the statutory deadline fell on
`
`a Saturday and the Petition was filed the following Monday. See Paper 6, 2,
`
`5. The petitioner argued that 35 U.S.C. § 21(b) provides that “[w]hen the
`
`day, or last day, for taking any action . . . in the United States Patent and
`
`Trademark Office falls on Saturday, Sunday, or a Federal holiday within the
`
`District of Columbia, the action may be taken . . . on the next succeeding
`
`secular or business day.” See Paper 7, 1–2. The patent owner argued that
`
`section 21(b) was inapplicable because “Section 21(b)’s general standard
`
`must yield to Section 315(b)’s specific jurisdictional limitations.” See
`
`Paper 6, 5. The Board instituted, agreeing with Petitioner that 21(b) applies
`
`to inter partes review. See Paper 10, 17.
`
`We agree with the rationale provide in IPR2018-01468 and are not
`
`persuaded to find otherwise here.5 Accordingly, we find the Petition to have
`
`been timely filed.
`
`
`5 We note that the Federal Circuit’s decision in Click-To-Call Techs., LP v.
`Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018), does not alter our
`determination. Application of § 21(b)’s pre-existing statutory grace period to
`§ 315(b)’s time bar is not the same as erecting a non-statutory exception to
`§ 315(b), as was the case in Click-to-Call. See 899 F.3d 1321, 1331 (Fed.
`Cir. 2018) (declining to adopt an interpretation of § 315(b) that would
`“impose additional conditions not present in the statute’s text” (emphasis
`added)).
`
`8
`
`
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`
`B. Analysis of Discretionary Denial Under 35 U.S.C. § 314(a)
`
`The Petition anticipates an argument under the General Plastic factors
`
`that we should exercise our discretion to deny institution. See Pet. 71 (citing
`
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-
`
`01357, Paper 19 at 15–19 (September 6, 2017) (precedential) (“General
`
`Plastic”)). Patent Owner addresses factors laid out in General Plastic to
`
`argue against institution of the Petition, which Patent Owner characterizes as
`
`a “follow on” petition. Prelim. Resp. 4, 13–19. Although the challenged
`
`claims are different, Patent Owner argues that a previously instituted petition
`
`in IPR2018-01187 (“the -01187 proceeding”) challenging the independent
`
`claims in the ’477 patent using the same base references is sufficient to
`
`exercise our discretion under 35 U.S.C. § 314(a). Id. Per our email
`
`authorization, Petitioner filed a Reply to Patent Owner’s Preliminary
`
`Response (Pet. Reply, Paper 7) and Patent Owner filed a Sur-Reply to
`
`Petitioner’s Reply (PO Sur-Reply, Paper 9). For the reasons stated below we
`
`are not persuaded to use our discretion to deny institution.
`
`Institution of an inter partes review is discretionary. See 35 U.S.C.
`
`§ 314(a) (authorizing institution of an inter partes review under particular
`
`circumstances, but not requiring institution under any circumstances);
`
`37 C.F.R. § 42.108(a) (“the Board may authorize the review to proceed”
`
`(emphasis added)). When determining whether to exercise our discretion
`
`under § 314(a) for the institution of an inter partes review proceeding, we
`
`consider the following non-exhaustive factors:
`
`1. whether the same petitioner previously filed a petition directed to
`the same claims of the same patent;
`
`9
`
`
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`
`2. whether at the time of filing of the first petition the petitioner knew
`of the prior art asserted in the second petition or should have known
`of it;
`3. whether at the time of filing of the second petition the petitioner
`already received the patent owner’s preliminary response to the first
`petition or received the Board’s decision on whether to institute
`review in the first petition;
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the filing
`of the second petition;
`5. whether the petitioner provides adequate explanation for the time
`elapsed between the filings of multiple petitions directed to the
`same claims of the same patent;
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
`
`See General Plastic, slip op. at 15–16. For the reasons discussed in detail
`
`below, we do not exercise our discretion to deny institution based on §
`
`314(a).
`
`1. Whether the same petitioner previously filed a petition
`directed to the same claims of the same patent?
`
`Although Petitioner is not a party to any prior inter partes review
`
`(“IPR”) proceeding regarding the ’477 patent, we analyze this factor because
`
`it has been applied to a follow-on petition filed by a different petitioner.
`
`Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11
`
`(April 2, 2019) (precedential) (“Valve I”); NetApp v. Realtime Data,
`
`IPR2017-01195, Paper 9 (Oct. 12, 2017) (“NetApp”) at 10; Valve Corp. v.
`
`Electronic Scripting Products, Inc., IPR2019-00064, Paper 10 (PTAB May 1,
`
`2019) (precedential) (“Valve II”). In Valve I the petitioner in the follow-on
`
`proceeding (the second petitioner) was a co-defendant with the first petitioner
`
`10
`
`
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`in a parallel District Court litigation. Valve I at 9–10. Both petitioners were
`
`accused of infringing the challenged patent based on the same product. Id.
`
`Therefore, the Board found that the second petitioner (Valve) had a
`
`“significant relationship” with the first petitioner (HTC) and filed its petition
`
`only after HTC’s petition had been denied by the Board. Id. at 9–10, 12–13.
`
`Patent Owner does not raise any such “significant relationship” here.
`
`Indeed, Patent Owner concedes that factor one favors institution. Prelim.
`
`Resp. 3, 12. Additionally, Petitioner argues that the Valve I and Netapp cases
`
`are inapplicable to the present case. Pet. Reply 3. Specifically, Petitioner
`
`argues Valve I is distinguishable because Petitioner neither had nor has a
`
`“significant relationship” with any of the petitioners in the prior IPR
`
`proceedings, nor did Petitioner file its petition after the Board had denied a
`
`previous petition. Pet. 69. According to Petitioner, “[u]nlike the petitioner in
`
`Valve [I], [it] has not used an institution decision or preliminary response as a
`
`roadmap for the instant Petition.” Id. According to Petitioner, Netapp also is
`
`distinguishable because NetApp’s petition was largely duplicative of prior
`
`petitions but the grounds in the present Petition are different from those at
`
`issue in IPR2018-01187 and IPR2018-01630; while IPR2018-01413 was
`
`terminated upon settlement. Pet. Reply 3–4.
`
`For the following reasons, we find that factor one strongly favors
`
`institution. First, the prior instituted IPR proceeding challenged different
`
`claims and relied on different prior art. Second, although there has been a
`
`prior petition (IPR2018-01413) filed by another Petitioner (Sony
`
`Corporation) challenging these same claims, that prior petition was dismissed
`
`because the parties settled before the Patent Owner Preliminary Response
`
`(“POPR”) was filed, so the Board has not issued any determinations
`
`11
`
`
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`(preliminary or final) regarding the patentability of these specifically
`
`challenged claims that would have provided a “roadmap” to the Petitioner.
`
`Lastly, there is no significant relationship between the current Petitioner and
`
`prior petitioners challenging the ’477 patent that would lead us to a Valve I
`
`type of conclusion. Accordingly, we find this factor strongly weighs in favor
`
`of instituting.
`
`2. Whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should
`have known of it?
`
`Patent Owner contends this factor is either neutral or weighs against
`
`institution because Petitioner knew of the reference asserted in the current
`
`Petition (Brooks) by July 2018. PO Sur-Reply 1. Petitioner, however,
`
`contends Patent Owner fails to provide evidence Petitioner knew or should
`
`have known of Brooks at the time the first IPR petitions (IPR2018-01187 and
`
`IPR2018-01630) were filed. Pet Reply 1. Petitioner argues Brooks was only
`
`cited in IPR2018-01413, which was filed in August 2018, but was terminated
`
`before the filing of any POPR. Id. (citing Prelim. Resp. 10). Based on the
`
`arguments provided by the parties, we agree with Patent Owner and find this
`
`factor to be neutral regarding institution.
`
`3. Whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision
`on whether to institute review in the first petition?
`
`Patent Owner argues Petitioner filed this current Petition after petitions
`
`were filed in three other IPR proceedings, thereby giving Petitioner
`
`opportunity to study the prior petitions and use them as a roadmap for its own
`
`arguments. Prelim. Resp. 7–8. Moreover, according to Patent Owner,
`
`12
`
`
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`Petitioner copied several paragraphs directly from the prior petitions. Id. at
`
`8. Patent Owner further argues Petitioner studied the petitions, POPRs, and
`
`institution decisions in IPR2018-01187 and tailored its Petition based on the
`
`information therein. Id. at 8–9. Patent Owner concludes Petitioner obtained
`
`a potential benefit from receiving and studying those documents, which is
`
`prejudicial to Patent Owner, and, therefore, this factor weighs in favor of
`
`denial.
`
`This factor under General Plastics specifically asks “whether at the
`
`time of filing of the second petition the petitioner already received the patent
`
`owner’s preliminary response to the first petition or received the Board’s
`
`decision on whether to institute review in the first petition.” The answer with
`
`regards to IPR2018-01413 is no. Yet IPR2018-01413 is relevant for our
`
`analysis because its petition used Brooks as the basis for the patentability
`
`challenges. The other IPRs did not rely on Brooks and challenged a different
`
`set of claims. IPR2018-01413 terminated before the filing of a Patent Owner
`
`Preliminary Response or the issuance of a Decision on Institution by the
`
`Board. Therefore, contrary to Patent Owner’s position, Petitioner did not
`
`have the advantage of seeing Patent Owner’s arguments regarding Brooks or
`
`the Board’s perspective of either the petition or Patent Owner’s positions in
`
`the IPR2018-01413 proceeding. Accordingly, we find this factor weighs in
`
`favor of instituting.
`
`4.
`
`The length of time that elapsed between the time the
`petitioner learned of the prior art asserted in the second
`petition and the filing of the second petition?
`
`Patent Owner contends this factor weighs strongly against institution.
`
`Prelim. Resp. 10. Patent Owner argues Petitioner was sued on May 4, 2018,
`
`and knew or should have known about Brooks no later than July 31, 2018,
`
`13
`
`
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`due to the filing of the IPR2018-01413 proceeding. Id. Yet, according to
`
`Patent Owner, Petitioner waited a year to file this Petition, which is more
`
`than nine-months after it’s purported to have learned of Brooks. Id. at 10–11.
`
`Patent Owner further argues that Petitioner unjustly delayed its filing because
`
`it waited six months after the first POPR in IPR2018-01187 and more than
`
`three months after the institution decision in that proceeding. Id. at 11. Thus,
`
`Patent Owner contends Petitioner has engaged in deliberate and unnecessary
`
`delay. Id.
`
`Petitioner contends it is allowed to use the full statutory period to file
`
`an IPR petition. Pet Reply. 2. Petitioner further contends any perceived
`
`delay in filing based on events in IPR2018-01187 is due to Patent Owner’s
`
`“decision to sue [Petitioner] more than five months after Netflix [the
`
`petitioner in IPR2018-01187].” Id. at 2. According to Petitioner, Patent
`
`Owner cannot claim unfairness when its own litigation conduct is at least
`
`partially to blame” for the staggered filings. Id.
`
`We agree with Petitioner because it was not sued at the same time at
`
`the other petitioners and because it could not have derived benefit from the
`
`other IPRs that did not rely on Brooks and challenged a different set of
`
`claims. Thus, although there was some delay, it was not significant and was
`
`within the one-year limit. Accordingly, we find this factor to be neutral.
`
`5. Whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions directed
`to the same claims of the same patent?
`
`Factor Five is directed to any explanation Petitioner provides for the
`
`delay. Patent Owner argues this factor weighs strongly against institution
`
`because Petitioner “provide[s] no explanation for waiting one full year to file
`
`the Petition or waiting more than nine months after learning of the Brooks
`
`14
`
`
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`reference.” Prelim. Resp. 12. Petitioner, however, argues that any perceived
`
`delay was a result of Patent Owner’s “staggering of its infringement
`
`complaints and its narrowing of the asserted claims against Google as late as
`
`January 23, 2019.” Reply 3 (citing Ex. 1020, email dated January 23, 2019,
`
`regarding election of asserted claims by Patent Owner). That the current
`
`proceeding challenges only the claims listed in Exhibit 1013, claims 1, 3, 4,
`
`7, 9, 16, 17, and 20–22, gives credibility to this argument.
`
`Assuming Petitioner waited until receipt of the claims being asserted to
`
`proceed, there was a minimum delay of three and a half months, which is
`
`reasonable. Conversely, Petitioner was aware that it might need to file a
`
`petition for almost a year. Regardless, we agree that there is nothing that
`
`requires us to deny institution based solely on delay. See Pet. Reply 2–3. We
`
`also recognize that we are not privy to strategic litigation considerations and,
`
`absent clear evidence of gamesmanship, decline to speculate on what
`
`Petitioner knew, when it knew, or why it proceeded as it has. Nonetheless,
`
`there is no corroboration that Petitioner needed to wait until receipt of the
`
`January 23, 2019, email to proceed.
`
`Additionally, as discussed previously, we find that the petitions in the
`
`IPR2018-01187 and IPR2018-01630 proceedings are not directed to the same
`
`prior art and claims as challenged in the current Petition. Accordingly, we
`
`find this factor to be neutral.
`
`6.
`
`The finite resources of the Board and the requirement under
`35 U.S.C. § 316(a)(11) to issue a final determination not
`later than 1 year after the date on which the Director notices
`institution of review?
`
`Patent Owner contends “this factor too weighs heavily against
`
`institution” because “[i]n general, having multiple petitions challenging the
`
`15
`
`
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`same patent, especially when not filed at or around the same time as in this
`
`case, is inefficient and tends to waste resources.” Prelim. Resp. 13 (citing
`
`Valve I at 15; Valve II at 16). Patent Owner first argues that all claims
`
`challenged by this Petition have already been challenged and instituted in the
`
`two prior Netflix IPRs. Prelim. Resp. 13. Patent Owner then argues that
`
`institution “would be inefficient because of the far advanced district court
`
`litigation between the same parties and because any [Final Written Decision]
`
`would be issued long after trial in the district court,” which is set currently
`
`for April 7, 2020. Id. at 14 (citing NetApp v. Realtime, IPR2017-01354,
`
`Paper 16 at 12–13 (“Due to NetApp’s delay in filing its Petition. . . [t]here
`
`would be no offsetting conservation of the [district court’s] judicial resources
`
`because any final written decision in this proceeding would not issue until
`
`well after the scheduled trial date in the NetApp litigation.”); NHK Spring v.
`
`Intri-Plex Techs., IPR2018-00752, Paper 8 (Sept. 12, 2018) (designated
`
`precedential May 7, 2019) (find that the advanced stage of the district court
`
`litigation was an additional factor that weighed against institution of an AIA
`
`trial proceeding)). Lastly, Patent Owner argues that “the Board’s finite
`
`resources are implicated because Google could and should have the joined
`
`the two prior Netflix IPRs.” Prelim. Resp. 16.
`
`Petitioner does not address the district court litigation or the impact of
`
`NHK Spring on the present case. Rather, Petitioner merely states that the
`
`“sixth and seventh General Plastic factors also favor institution” and then
`
`attempts to distinguish the NetApp case because the grounds presented in
`
`instant Petition are very distinct from those in the Netflix IPRs. Pet. Reply 4
`
`(citing IPR2017-01195, Paper 9 at 12–13). Hence, Petitioner concludes that
`
`“the Board’s concern in NetApp that it would need to conduct an entirely new
`
`16
`
`
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`proceeding involving numerous issues considered in the previously instituted
`
`proceedings is not implicated here.” Id.
`
`Given the precedential designation of NHK Spring, we reviewed the
`
`status of the District Court Lawsuit to determine its impact, if any, on our
`
`analysis. We note that on May 2, 2019, the parties stipulated to stay the
`
`District Court Lawsuit, pending the outcome of this proceeding of this IPR.
`
`Pet. 70 (citing District Court Lawsuit, Dkt. 56; “Joint Stipulation to Stay,”
`
`Ex. 1019). The District Court denied the Joint Stipulation to Stay without
`
`prejudice, indicating “[i]t is generally this Court’s practice to deny motions to
`
`stay until after the PTAB has made a decision regarding whether it will
`
`actually institute the IPR.” District Court Lawsuit, Dkt. 60, at 5 (May 14,
`
`2019). The District Court case is set currently for trial on April 7, 2020. Id.
`
`at Dkt. 60, at 3 (May 23, 2019); see Ex. 2003 (Scheduling Order). However,
`
`neither party submits any evidence whether this case will actually go to trial
`
`on that date. Without more detailed information from the parties regarding
`
`the status of this case and its nearness to actual completeness, we decline to
`
`give much weight to this trial date. Moreover, the fact that the parties had
`
`previously submitted a joint motion to stay suggests that even Patent Owner
`
`acknowledges the efficiencies of allowing the Board to resolve the validity of
`
`these claims first. See Ex. 1019. Therefore, the Board not denying
`
`institution on this discretionary basis may serve the interests of efficiency by
`
`permitting the district court to reconsider the parties’ joint motion for the
`
`stay.
`
`As to General Plastic’s factor 7, we do not find that the Board’s
`
`resources will be taxed to the degree that final written decisions in these
`
`proceedings will not be completed on time. We also are cognizant of the
`
`17
`
`
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`estoppel provision of 35 U.S.C. § 315(e), which estops a petitioner from
`
`asserting in a civil action that a “claim is invalid on any ground that the
`
`petitioner raised or reasonably could have raised during that inter partes
`
`review.” 35 U.S.C. § 315(e)(1) (emphasis added). The estoppel requirement
`
`forces a petitioner to decide the breadth of the challenge to bring given the
`
`risk that certain grounds may not be brought in a parallel civil action.
`
`Accordingly, the statute contemplates that a petitioner may decide that the
`
`appropriate breadth of a challenge warrants multiple petitions. Thus, we find
`
`this factor weighs in favor of institution.
`
`Considering the General Plastic factors identified above, the primary
`
`differentiator are the first and sixth factors. Petitioner is not the same as in
`
`the Netflix IPRs and no showing of any close relationship to Netflix, the
`
`petitioner in the Netflix IPRs, has been made or argued. Importantly, the
`
`grounds asserted here are different from those in the Netflix IPRs, and the
`
`record before us does not show this Petitioner reaped any specific benefit
`
`from our decision instituting the Netflix IPRs. And the presence of a district
`
`court proceeding is part of “a balanced assessment of the circumstances of
`
`the case, including the merits.” See TPG (July 2019) at 26; see Sections
`
`IV.A. and IV.B., below. Weighing the factors together, including the
`
`showing Petitioner has made on the merits regarding unpatentability of the
`
`challenged claims, we determine that they weigh against us exercising our
`
`discretion not to institute inter partes review. Accordingly, we do not
`
`exercise our discretion under 35 U.S.C. § 314(a) to deny institution of a trial
`
`proceeding.
`
`18
`
`
`
`IPR2019-01035
`Patent 9,769,477 B2
`
`
`c. Claim Construction
`
`In an inter partes review for a petition filed on or after November 13,
`
`2018, a claim “shall be construed using the same claim construction standard
`
`that would be used to construe the claim in a civil action under 35 U.S.C.
`
`282(b).” 37 C.F.R. § 42.100(b) (2018); see Changes to the Claim
`
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`
`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018). In applying
`
`this claim construction standard, we are guided by the principle that the
`
`words of a claim “are generally given their ordinary and customary
`
`meaning,” as understood by a person of ordinary skill in the art in question at
`
`the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 131213
`
`(Fed. Cir. 2005) (en banc) (citation omitted). “In determining the me
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
