UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`
`V.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2020—001 15
`
`Patent No. 8,407,609
`
`NOTICE OF APPEAL OF GOOGLE LLC
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`
`V.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2020—001 15
`
`Patent No. 8,407,609
`
`NOTICE OF APPEAL OF GOOGLE LLC
`
`
`
`U.S.C. §§ 141 and 142, and 28 U.S.C. § 1295(a)(4)(A), that Petitioner Google LLC
`
`(“Google”) appeals to the United States Court of Appeals for the Federal Circuit
`
`from the Decision Denying Petitioner’s Request for Rehearing of the Patent Trial
`
`and Appeal Board in Case No. IPR2020-00115 entered on May 12, 2020 (Paper No.
`
`10), and from all underlying orders, decisions, rulings and opinions.
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Google states that the issues on
`
`appeal include, but are not limited to, whether the USPTO has violated 35 U.S.C.
`
`§ 316(a)(2) by setting the standards for the showing of sufficient grounds to institute
`
`a review under 35 U.S.C. § 314(a) without prescribing regulations; whether the
`
`USPTO’s use ofprecedential PTAB decisions to govern the standards for institution
`
`violates 5 U.S.C. § 706(2)(D) because such decisions are not adopted through the
`
`use of the notice-and—comment rulemaking process of 5 U.S.C. § 553; whether the
`
`precedential opinions that bound the PTAB panel here violated 5 U.S.C. § 706(2)(C)
`
`because the USPTO lacks authority to create a rule inconsistent with the timing
`
`provision in 35 U.S.C. § 315(b), and whether the institution decision in the
`
`underlying IPR should be vacated based on some or all of the foregoing reasons.
`
`Google fiarther intends to seek a writ of mandamus based on some or all of the
`
`foregoing.
`
`
`
`United States Patent and Trademark Office, and a copy of this Notice of Appeal is
`
`being filed electronically with the Board. In addition, a copy ofthis Notice ofAppeal
`
`is being electronically filed with the Clerk’s Office for the United States Court of
`
`Appeals for the Federal Circuit, along with the required docketing fee.
`
`Date: July 14, 2020
`
`Respectfully submitted,
`
`/Erika H. Amer/
`
`Erika H. Amer,
`Reg. No. 57,540
`
`
`
`I certify that the foregoing was filed electronically with the Board through
`
`the PTAB E2E System, and a paper copy was served by hand delivery on July 14,
`
`2020 with the Director of the United States Patent and Trademark Office, at the
`
`following address:
`
`Director of the US. Patent and Trademark Office
`
`c/o Office of the General Counsel
`
`US. Patent and Trademark Office
`
`Madison Building East, Room 10B20
`600 Dulany Street
`Alexandria, VA 22314
`
`I further certify that a true and correct copy of the foregoing Notice of
`
`Appeal, along with the required filing fee, was filed electronically with the Court
`
`of Appeals for the Federal Circuit via CM/ECF on July 14, 2020. Pursuant to
`
`Administrative Order No. 20-01, a paper copy of this Notice of Appeal has not
`
`been filed with the Court of Appeals.
`
`I also hereby certify that on July 14, 2020, a true and correct copy of the
`
`foregoing Notice of Appeal was served by electronic mail on counsel for the Patent
`
`Owner as follows:
`
`Ryan Loveless
`ryan@etheridgelaw.com
`
`Brett Mangrum
`brett@etheridgelaw.com
`
`
`
`jim@etheridgelaw.com
`
`Jeffrey Huang
`jeff@etheridgelaw.com
`
`Dated: July 14, 2020
`
`/Lisa C. Hines/
`By:
`Lisa C. Hines
`
`Litigation Legal Assistant
`
`FINNEGAN, HENDERSON, FARABOW,
`
`GARRETT & DUNNER, LLP
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`
`Petitioner,
`
`V.
`
`UNILOC 2017 LLC,
`
`Patent Owner.
`
`IPR2020-001 15
`
`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(60
`
`
`
`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 US. Patent No. 8,407,609 B2 (“the ’609
`
`paten ”). 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.
`
`11. BACKGROUND
`
`The ’609 patent is asserted against Petitioner in Um'loc 201 7 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 ofdisputed 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—1 1, 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.
`
`
`
`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 03x. 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).
`
`
`
`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, LL. C. v. Uniloc 20] 7 LLC, IPR2019-
`
`01367, Paper 7 (PTAB Feb. 4, 2020) (Institution Decision); Neiflz’x, Inc. v.
`
`Uniloc 201 7, 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 CPR. § 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,
`
`
`
`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 fiom 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 CPR. § 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.
`
`
`
`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”); PUIWA 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 [PR5 that cover all claims
`
`
`
`missing from the litigation.3 Our guidance explains that other proceedings
`
`related to the patent, including those in district courts and at the Oflice, 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:
`
`. are not intended to represent all
`.
`The General Plastic factors .
`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).
`
`
`
`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.
`
`
`
`PETITIONER:
`
`Erika H. Amer
`
`Joshua L. Goldberg
`A. Grace Mills
`
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT, & DUNNER LLP
`erika.amer@finnegan.com
`joshua.goldberg@finnegan.com
`gracie.mills@finnegan.com
`
`PATENT OWNER:
`
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`
`ryan@etheridge1aw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`
`
`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 Institution of Inter Partes Review
`35 US. C. § 314
`
`
`
`1. INTRODUCTION
`
`On October 31, 2019, Google LLC (“Petitioner”) filed a Petition
`
`seeking institution of inter partes review of claims 1—3 of US. Patent
`
`No. 8,407,609 B2 (Ex. 1001, “the ’609 patent”). Paper 1 (“Pet”). Uniloc
`
`2017 LLC (“Patent Owner”) filed a Preliminary Response on February 10,
`
`2020. Paper 6 (“Prelim Resp”).
`
`We may institute an inter partes review if the information presented
`
`in the Petition and the Preliminary Response shows that there is a reasonable
`
`likelihood that Petitioner would prevail with respect to at least one of the
`
`challenged claims. See 35 U.S.C. § 314. However, the Board has discretion
`
`to deny a petition even when a petitioner meets that threshold. Id; see, e. g. ,
`
`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”). The Trial Practice Guide identifies considerations
`
`that may warrant exercise of this discretion. Consolidated Trial Practice
`
`Guide (Nov. 2019) (“Consolidated TPG”), 55—63, available at
`
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf.
`
`Having considered the parties’ submissions, we determine that it is
`
`appropriate in this case to exercise our discretion to deny institution of inter
`
`partes review pursuant to 35 U.S.C. § 314(a).
`
`II. BACKGROUND
`
`A.
`
`Related District Court Proceedings
`
`The ’609 patent is asserted against Petitioner in Uniloc 201 7 LLC v.
`
`Google LLC, 2:18-cv-00502 (E.D. Tex.) (“the Texas Litigation”). Pet. 63;
`
`Prelim. Resp. 9. Patent Owner filed the Texas Litigation on November 17,
`
`
`
`2018. Prelim. Resp. 9. The district court held a Markmm hearing on
`
`January 10, 2020, and issued an order shortly thereafter. Ex. 2001 (District
`
`Court’s Claim Construction Memorandum and Order), 1, 78. That order
`
`construes six of the disputed claim terms and phrases from the ’609 patent.
`
`Id at 57—78. According to the district court’s Amended Docket Control
`
`Order: fact discovery must be completed and expert reports are due on
`
`March 30, 2020; expert discovery closes and dispositive and Daubert
`
`motions are due by May 11, 2020; a joint pretrial order, proposed jury
`
`instructions, and a proposed verdict form are due by July 6, 2020; a pretrial
`
`conference will be held on July 9, 2020. Ex. 2002, 1—3. The order also
`
`specifies that jury selection in the Texas Litigation will begin on August 17,
`
`2020—less than five months from today. Id. at 1.
`
`The parties also identify other district court proceedings involving the
`
`’609 patent that are currently pending. Pet. 63—64; Prelim. Resp. 9. Each of
`
`these proceedings was filed on or after November 17, 2018 (i.e., the filing
`
`date of the Texas Litigation). Prelim. Resp. 9; see Pet. 63—64.
`
`B.
`
`Related PTAB Proceedings
`
`The ’609 patent is the subject of petitions for inter partes review in
`
`IPR2019-01367 (filed by Sling TV, L.L.C. on July 22, 2019; the “1367
`
`IPR”) and IPR2020-00041 (filed by Netflix, Inc. and Roku, Inc. on October
`
`31, 2019; the “041 IPR”). Pet. 63; Prelim. Resp. 9. Both of those petitions
`
`challenge all claims of the ’609 patent (i.e., claims 1—3), and the Board
`
`instituted an inter partes review in both proceedings. Sling TV, LL. C. v.
`
`Uniloc 201 7 LLC, IPR2019-01367, Paper 7 (PTAB Feb. 4, 2020) (Institution
`
`Decision); Nezflz'x, Inc. v. Uniloc 20] 7, IPR2020-0004l, Paper 10 (PTAB
`
`Mar. 25, 2020) (Institution Decision).
`
`
`
`In addition, the ’609 patent is the subject of IPR2020-00677 (filed by
`
`Vudu, Inc. on March 3, 2020), and in that proceeding, the petitioner requests
`
`joinder with IPR2019—01367. A decision whether to institute has not been
`
`entered in IPR2020-00677.
`
`C.
`
`The Petition ’s Asserted Grounds
`
`Petitioner asserts the following grounds of unpatentability (Pet. 24):
`
`
`
`
`
`
`i Claim(s) Challenged
`
`
`
`
`
`
`
`
`III. ANALYSIS
`
`Patent Owner argues, inter alia, that we should exercise our discretion
`
`under 35 U.S.C. §314(a) to deny institution. Prelim. Resp. 10—13. For the
`
`reasons explained below,5 we agree.
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285—88 (2011), revised 35 U.S.C. §§ 102, 103 effective March 16,
`2013. Because the challenged patent was filed before March 16, 2013, we
`refer to the pre-AIA version of §§ 102, 103.
`
`2 US 2004/0045040 A1, published Mar. 4, 2004 (EX. 1005).
`
`3 US 2002/0111865 A1, published Aug. 15, 2002 (Ex. 1006).
`
`4 US 6,421,675 B1, issued July 16, 2002 (EX. 1007).
`
`5 We decline to address the other arguments advanced by Patent Owner for
`discretionary denial. See generally Prelim. Resp. 13—23.
`
`
`
`Patent Owner contends that a trial would be “an inefficient use of
`
`Board resources.” Prelim. Resp. 10—13 (citing NHK Spring Co. v. Intri—Plex
`
`Techs, Ina, IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential)
`
`(“NHK”)). In particular, Patent Owner submits that “[i]ury selection is set to
`
`begin in the [Texas Litigation] on August 17, 2020, which is approximately
`
`three months after the anticipated timing of an institution decision from the
`
`Board in this case, and therefore, approximately nine months prior to any
`
`expected Final Written Decision in this IPR if trial were instituted.” Id at
`
`10 (emphasis omitted) (citing Ex. 2002). Patent Owner argues that
`
`Petitioner’s invalidity contentions in the Texas Litigation include “the same
`
`grounds” of unpatentability as are presented in the Petition for independent
`
`claim 1. Id. at 12 (citing Ex. 2003, 14—15, 18 (Invalidity Contentions)). In
`
`addition, Patent Owner contends that the district court has already construed
`
`the claims of the ’609 patent and that expert discovery in the Texas
`
`Litigation “will close on May 11, 2020, which is one day after the last date
`
`to issue a decision on institution in this proceeding.” Id. at 12—13 (citing
`
`Ex. 2001; Ex. 2002, 3). According to Patent Owner, the Board’s
`
`precedential decision in NHK is “on point,” and, consequently, the Board
`
`should exercise discretion to deny the Petition. Id. at 10, 13.
`
`In the Petition, Petitioner identifies the Texas Litigation, but does not
`
`discuss its stage or the arguments advanced in that copending district court
`
`case; rather, the Petition simply notes that the Texas Litigation is “unrelated”
`
`to the litigations against the parties who filed the 1367 and 041 IPRs. Pet.
`
`61, 63; see generally Pet. i, 60—65; cf Consolidated TPG at 58 (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, IPR2018-00752, Paper 8 at
`
`19—20)).6
`
`In determining whether to exercise our discretion, we are guided by
`
`the Board’s precedential decision in NHK. There, the Board found that “the
`
`advanced state of the district court proceeding is an additional factor that
`
`weighs in favor of denying the Petition under § 314(a).” NHK, IPR2018-
`
`00752, Paper 8 at 20. In the parallel district court case, the petitioner had
`
`asserted “the same prior art and arguments,” expert discovery was scheduled
`
`to end in approximately seven weeks, and a jury trial was scheduled to begin
`
`in just over six months. Id. at 1, 20. The Board found that “[i]nstitution of
`
`an inter partes review under these circumstances would not be consistent
`
`with ‘an objective of the AIA .
`
`.
`
`. to provide an effective and efficient
`
`alternative to district court litigation.”’ Id. at 20 (citing Gen. Plastic Indus.
`
`Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at l6—17 (PTAB
`
`Sept. 6, 2017) (precedential in relevant part)).
`
`“[T]he Board’s cases addressing earlier trial dates as a basis for denial
`
`under NHK have sought to balance considerations such as system efficiency,
`
`fairness, and patent quality.” Apple Inc. v. Fintiv, Ina, IPR2020-00019,
`
`Paper 11 at 5 G’TAB Mar. 20, 2020). When applying NHK, the Board has
`
`balanced the following factors:
`
`1. whether the court granted a stay or evidence exists that
`one may be granted if a proceeding is instituted;
`
`6 Although the Consolidated TPG was published after the Petition was filed,
`the earlier version also includes this guidance. See July 2019 Office Trial
`Practice Guide Update, 84 Fed. Reg. 33,925 (July 16, 2019).
`
`
`
`2. proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision;
`
`3. investment in the parallel proceeding by the court and
`the parties;
`
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`
`6. other circumstances that impact the Board’s exercise
`of discretion, including the merits.
`
`Id. at 5—6 (footnote omitted).
`
`Factors 1, 2, 3, and 5 (above) weigh in favor of denying institution of
`
`the Petition. Indeed, the relevant facts before us here are substantially the
`
`same as those presented in NHK. Petitioner is the defendant in the Texas
`
`litigation. Pet. 63; Prelim. Resp. 10. According to the Amended Docket
`
`Control Order submitted by Patth Owner, expert discovery will close in
`
`approximately six weeks, and a jury trial will begin in less than five months.
`
`Ex. 2002, 1, 3. Thus, the district court’s trial is scheduled to precede our
`
`final written decision by more than seven months.7 There is no evidence
`
`that the district court has granted (or would grant) a stay pending inter partes
`
`review. 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 l, 78).
`
`7 Even if the district court were to delay its schedule by two months, the
`trial would still precede our final written decision by more than five months.
`See Paper 7 at 3—4.
`
`
`
`Turning to factor 4, Petitioner presents overlapping arguments in the
`
`Texas Litigation and in the Petition. Petitioner’s invalidity contentions in
`
`the Texas Litigation contain the same invalidity arguments as are presented
`
`in the Petition for independent claim 1. Compare Pet. 24 (asserting that
`
`Hayward anticipates claim 1 and that Hayward and Middleton render
`
`obvious claim 1), with Ex. 2003, 14—15, 18 (same). In addition, Petitioner’s
`
`invalidity contentions purport to “incorporate[] by reference any prior art
`
`identified and/or invalidity claim charts set forth .
`
`.
`
`. in any inter partes
`
`review petitions and/or proceedings involving the [’609 patent].” Ex. 2003,
`
`5. In other words, Petitioner has expressly and specifically sought to
`
`incorporate all of the Petition’s contentions into the Texas Litigation.
`
`There are two potentially significant differences between Petitioner’s
`
`invalidity contentions in the Texas Litigation and the grounds presented in
`
`the Petition. First, Petitioner’s invalidity contentions include a large number
`
`of other allegations, in addition to those presented in the Petition. See
`
`generally Ex. 2003 (alleging hundreds of obviousness combinations).
`
`However, Hayward is the only anticipatory reference identified in the
`
`invalidity contentions—and Hayward is the Petition’s primary reference,
`
`relied upon for most claim limitations. Compare Ex. 2003, 14~15
`
`(identifying only one reference for anticipation or single-reference
`
`obviousness: Hayward), with Pet. 24—46 (ground 1: alleging Hayward
`
`anticipates), 46—55 (ground 2: relying on Hayward for most limitations of
`
`Hayward-Middleton combination). Accordingly, in the facts and
`
`circumstances of this case, the additional invalidity arguments presented in
`
`the invalidity contentions do not significantly impact our analysis.
`
`
`
`Second, the Texas Litigation and the Petition do not involve an
`
`identical set of claims. According to Petitioner’s invalidity contentions, only
`
`claim 1 is currently at issue in the Texas Litigation (Ex. 2003, l), where the
`
`Petition challenges both independent claim 1 and its dependent claims 2 and
`
`3 (Pet. 24). However, the Board has already instituted two other inter partes
`
`review proceedings that challenge these claims:
`
`the 1367 and 041 IPRs.
`
`Sling TV, IPR2019-01367, Paper 7 (trial instituted on claims 1—3); Nezflix,
`
`IPR2020-00041, Paper 10 (same); see Prelim. Resp. 20 (arguing the Petition
`
`is redundant given two earlier-filed petitions in the 1367 and 041 IPRs).
`
`Given these other pending trials at the Board, we are not persuaded that a
`
`third trial is justified in these circumstances.8
`
`On balance, under the particular circumstances presented here, i.e., the
`
`advanced stage of the Texas Litigation and the fact that the ’609 patent is
`
`challenged in two other pending inter partes review proceedings, we decline
`
`to institute an additional inter partes review in this proceeding. See NHK,
`
`IPR2018-00752, Paper 8 at 20; Consolidated TPG at 58. Accordingly, we
`
`exercise our discretion under 35 U.S.C. § 314(a) and deny institution.
`
`8 Petitioner’s arguments do not persuade us that the differences between this
`Petition and the two earlier filed petitions mitigate in favor of a third trial.
`See Pet. 61—62. In particular, Petitioner identifies differences between its
`primary reference (Hayward) and a reference asserted in a previous petition
`(Jacoby); however, Petitioner does not explain the significance of these
`differences. Id. In addition, although Petitioner notes that the Petition
`alleges anticipation, Petitioner fails to explain why this is a material
`difference from the obviousness arguments presented in the earlier-filed
`petitions. Id. at 62.
`
`
`
`IV. CONCLUSION
`
`In the specific factual circumstances of this case, consistent with the
`
`Board’s precedential decision in NHK, we exercise our discretion to deny
`
`institution under § 314(a).
`
`ORDER
`
`It is, therefore,
`
`ORDERED that the Petition is denied; and
`
`FURTHER ORDERED that the requested inter partes review is not
`
`instituted with respect to any claim of the ’609 patent.
`
`10
`
`
`
`PETITIONER:
`
`Erika H. Amer
`
`Joshua L. Goldberg
`A. Grace Klock Mills
`
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT, & DUNNER LLP
`erika.amer@finnegan.com
`joshua.goldberg@fmnegan.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
`
`11
`
`
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