Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 10
`Date: May 12, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2020-00115
`Patent 8,407,609 B2
`____________
`
`
`Before CHARLES J. BOUDREAU, DANIEL J. GALLIGAN, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`DIRBA, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 10
`Date: May 12, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2020-00115
`Patent 8,407,609 B2
`____________
`
`
`Before CHARLES J. BOUDREAU, DANIEL J. GALLIGAN, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`DIRBA, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`IPR2020-00115
`Patent 8,407,609 B2
`
`I. INTRODUCTION
`On March 27, 2020, the Board issued an Institution Decision, which
`exercised discretion under 35 U.S.C. § 314(a) to deny institution of inter
`partes review of claims 1–3 of U.S. Patent No. 8,407,609 B2 (“the ’609
`patent”). Paper 8 (“Decision”). On April 27, 2020, Petitioner filed a
`Request for Rehearing. Paper 9 (“Request”).
`For the reasons provided below, Petitioner’s Request is denied.
`
`II. BACKGROUND
`The ’609 patent is asserted against Petitioner in Uniloc 2017 LLC v.
`Google LLC, 2:18-cv-00502 (E.D. Tex.) (“the Texas Litigation”). Paper 1
`(“Pet.”), 63; Paper 6 (“Prelim. Resp.”), 9. According to the district court’s
`Amended Docket Control Order,1 fact discovery closed on March 30, 2020,
`expert discovery closed on May 11, 2020, and jury selection will begin on
`August 17, 2020. Ex. 2002, 1–3. In addition, the district court has invested
`time and resources in the Texas Litigation: the district court issued a
`Markman order with a detailed discussion of a number of disputed claim
`terms and phrases (Ex. 2001, 57–78), and the court issued that order within
`two weeks of its Markman hearing (id. at 1, 78).
`Petitioner’s invalidity contentions in the Texas Litigation contain the
`same arguments as are presented in the Petition for independent claim 1.
`
`
`1 The Amended Docket Control Order (Ex. 2002) is the only evidence in the
`record regarding the schedule of the Texas Litigation. Although Petitioner
`argues that the district court may modify these deadlines in the future (see
`Request 8–11, 13), Petitioner neither contends that this order has since been
`amended, nor identifies any prior instances of the district court materially
`modifying any of these dates.
`
`2
`
`
`
`IPR2020-00115
`Patent 8,407,609 B2
`Compare Pet. 24 (asserting anticipation based on Hayward and obviousness
`based on Hayward and Middleton), with Ex. 2003, 14–15, 18 (same). The
`Petition also challenges dependent claims 2 and 3 (Pet. 24), which are not
`currently asserted in the Texas Litigation (Ex. 2003, 1); however, Petitioner
`has expressly sought to incorporate all of the Petition’s contentions into the
`Texas Litigation (id. at 5).
`Despite the advanced stage of the Texas Litigation, the Petition
`addressed neither the stage of, nor the contentions presented in, the Texas
`Litigation. See generally Pet.; cf. Consolidated Trial Practice Guide (Nov.
`2019) (“Consolidated TPG”), 58, available at https://www.uspto.gov/sites/
`default/files/documents/tpgnov.pdf (noting that proceedings related to the
`same patent at a district court may favor denial of a petition and inviting
`parties to “address in their submissions whether any other such reasons exist
`in their case . . . and whether and how such factors should be considered”
`(citing, inter alia, NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-
`00752, Paper 8 at 19–20 (PTAB Sept. 12, 2018) (precedential) (“NHK”)).2
`In its Preliminary Response, Patent Owner argued that the Board’s
`precedential decision in NHK was “on point” and, thus, that the Board
`should exercise discretion to deny the Petition. Prelim. Resp. 10–13.
`As explained in the Decision, we agreed. Specifically, we concluded
`that the relevant facts were substantially the same as those presented in
`NHK. Decision 6–9. The district court had scheduled trial for August
`
`
`2 Although the Consolidated TPG was published after the Petition was filed,
`the earlier version (available when the Petition was filed) also includes this
`guidance. See July 2019 Office Trial Practice Guide Update, 84 Fed. Reg.
`33,925 (July 16, 2019).
`
`3
`
`
`
`IPR2020-00115
`Patent 8,407,609 B2
`2020—more than seven months before a final written decision would be
`due—and the record included “no evidence that the district court has granted
`(or would grant) a stay pending inter partes review.” Id. at 7. Further,
`Petitioner “present[ed] overlapping arguments in the Texas Litigation and in
`the Petition.” Id. at 8 (citing Pet. 24; Ex. 2003, 5, 14–15, 18). Although
`“the Texas Litigation and the Petition [did] not involve an identical set of
`claims”—as dependent claims 2 and 3 were not asserted in the Texas
`Litigation, but were challenged in the Petition—we were not persuaded that
`this fact alone justified a trial here, as the Board had already instituted two
`other inter partes review proceedings challenging all claims of the ’609
`patent. Id. at 9 (citing Sling TV, L.L.C. v. Uniloc 2017 LLC, IPR2019-
`01367, Paper 7 (PTAB Feb. 4, 2020) (Institution Decision); Netflix, Inc. v.
`Uniloc 2017, IPR2020-00041, Paper 10 (PTAB Mar. 25, 2020) (Institution
`Decision)). For these reasons, we exercised our discretion to deny the
`Petition. Id. at 10.
`
`III. ANALYSIS
`A request for rehearing “must specifically identify all matters the
`party believes the Board misapprehended or overlooked, and the place where
`each matter was previously addressed in a motion, an opposition, or a reply.”
`37 C.F.R. § 42.71(d). “The burden of showing a decision should be
`modified lies with the party challenging the decision.” Id.
`“When rehearing a decision on petition, a panel will review the
`decision for an abuse of discretion.” 37 C.F.R. § 42.71(c); see Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision
`to deny a petition is a matter committed to the Patent Office’s discretion.”).
`“An abuse of discretion is found if the decision: (1) is clearly unreasonable,
`
`4
`
`
`
`IPR2020-00115
`Patent 8,407,609 B2
`arbitrary, or fanciful; (2) is based on an erroneous conclusion of law;
`(3) rests on clearly erroneous fact finding; or (4) involves a record that
`contains no evidence on which the Board could rationally base its decision.”
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367
`(Fed. Cir. 2016).
`The Request contends that the Decision applied the Board’s
`precedential decision in an “unreasonable” manner and asks the Board to
`“reweigh the NHK Spring factors.” Request 1. In support, Petitioner argues
`that the Decision departed from prior Board decisions (id. at 2–6),
`misapprehended the uncertainty surrounding a “final” decision on validity in
`the Texas Litigation (id. at 6–11), and “undermine[d] Congress’ intent” (id.
`at 12–15).
`We are not persuaded. Petitioner does not dispute that NHK applies
`and does not contend that we overlooked any relevant arguments or
`evidence. Petitioner identifies (and we perceive) no place where any of the
`Request’s arguments were previously presented. See generally Request; cf.
`37 C.F.R. § 42.71(d) (requiring identification of “the place where each
`[allegedly misapprehended] matter was previously addressed in a motion, an
`opposition, or a reply”). Indeed, Petitioner made the decision not to address
`NHK or the facts relevant to that analysis in its Petition. See Decision 5
`(citing Pet. i, 60–65); Paper 7, 3 (finding Patent Owner’s NHK arguments to
`be foreseeable). We could not have misapprehended or overlooked
`something Petitioner never presented or explained.
`Petitioner’s Request also fails to identify an abuse of discretion.
`Petitioner does not contend that the Decision conflicts with the Board’s
`guidance in the Consolidated TPG or its precedential decision in NHK.
`
`5
`
`
`
`IPR2020-00115
`Patent 8,407,609 B2
`Rather, Petitioner asserts that the Decision “deviates” from other, non-
`precedential Board decisions that also applied NHK and that, according to
`Petitioner, “gave significant weight to whether a district court would address
`the validity of all claims challenged in an IPR.” Request 2–3; see id. at 3–4
`(identifying decisions).
`We disagree. Aside from each of the decisions cited by Petitioner
`being non-precedential, we do not find any inconsistency with the present
`Decision. Of the five decisions cited by Petitioner, three are readily
`distinguishable because no trial date had been set in the copending district
`court litigation. See Resideo Techs., Inc. v. Innovation Sciences, LLC,
`IPR2019-01306, Paper 19 at 11 (PTAB Jan. 27, 2020) (“That the district
`court has not yet set a trial date is a significant factor distinguishing this case
`from NHK Spring.”); PUMA N. Am., Inc. v. Nike, Inc., IPR2019-01043,
`Paper 8 at 9 (PTAB Oct. 31, 2019); Oticon Med. AB v. Cochlear Ltd.,
`IPR2019-00975, Paper 15 at 23–24 (PTAB Oct. 16, 2019). In another cited
`case, the panel was persuaded not to deny institution because of significant
`differences in the claim sets and in the prior art asserted in the petition and
`the litigation. See Facebook, Inc. v. Blackberry Ltd., IPR2019-00899, Paper
`15 at 12 (PTAB Oct. 8, 2019). Finally, in the last cited case, the district
`court litigation was less advanced, and the patent owner had not argued for
`discretionary denial of institution. See Uniden Am. Corp. v. Escort Inc.,
`IPR2019-00724, Paper 6 at 5–9 (PTAB Sept. 17, 2019). Moreover, none of
`the cited decisions involved a crucial fact present here: the challenged
`patent is currently the subject of two instituted IPRs that cover all claims
`
`6
`
`
`
`IPR2020-00115
`Patent 8,407,609 B2
`missing from the litigation.3 Our guidance explains that other proceedings
`related to the patent, including those in district courts and at the Office, may
`bear on the Board’s exercise of discretion. Consolidated TPG 58.4
`The remainder of the Request presents various reasons why the Board
`should not exercise its discretion to deny institution. See Request 6–15. But
`none of these arguments were previously presented, and none are indicative
`of any abuse of discretion. Rather, Petitioner merely disagrees with our
`Decision and argues that we should have reached a different result. Mere
`disagreement with the Board’s analysis or conclusion is not a proper basis
`for rehearing.
`
`
`3 Petitioner complains that it is not a party to those IPRs (Request 4–5), but
`Petitioner did not seek to join either IPR, despite receiving the Decision
`denying institution of the Petition more than three weeks before a motion to
`join IPR2020-00041 would have been due.
`4 Petitioner contends that the Decision should have evaluated the General
`Plastic factors to consider these other IPRs. Request 5–6. We disagree:
`The General Plastic factors . . . are not intended to represent all
`situations where it may be appropriate to deny a petition. There
`may be other reasons besides the “follow-on” petition context
`where the “effect . . . on the economy, the integrity of the patent
`system, the efficient administration of the Office, and the ability
`of the Office to timely complete proceedings,” favors denying a
`petition even though some claims meet the threshold standards
`for institution under 35 U.S.C. §§ 314(a), and 324(a). This
`includes, for example, events in other proceedings related to the
`same patent, either at the Office, in district courts, or the ITC.
`Consolidated TPG 58 (citations omitted; second alteration in original).
`
`7
`
`
`
`IPR2020-00115
`Patent 8,407,609 B2
`
`IV. CONCLUSION
`Consequently, Petitioner has not persuaded us that we
`misapprehended or overlooked any matter or that we abused our discretion.
`Accordingly, we see no reason to modify our Decision in this proceeding.
`
`V. ORDER
`
`Accordingly, it is:
`ORDERED that Petitioner’s Request for Rehearing (Paper 9) is
`denied.
`
`
`
`
`8
`
`
`
`IPR2020-00115
`Patent 8,407,609 B2
`PETITIONER:
`Erika H. Arner
`Joshua L. Goldberg
`A. Grace Mills
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT, & DUNNER LLP
`erika.arner@finnegan.com
`joshua.goldberg@finnegan.com
`gracie.mills@finnegan.com
`
`PATENT OWNER:
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`
`
`
`
`
`
`9
`
`
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