UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MAXELL, LTD.,
`Patent Owner
`_______________
`
`Case: IPR2020-00200
`
`U.S. Patent No. 10,084,991
`_______________
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 10,084,991
`
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`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`
`

`

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`
`
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`INTRODUCTION .......................................................................................... 1
`THE BOARD SHOULD EXERCISE ITS DISCRETION AND
`DENY INSTITUTION FOR ALL GROUNDS PURSUANT TO 35
`U.S.C ............................................................................................................... 2
`A.
`Factor 1: The District Court Action is Unlikely To Be Stayed ............ 6
`B.
`Factor 2: Trial In The District Court Action Will Occur Nine
`Months Before The Board’s Final Written Decision ........................... 8
`Factor 3: Significant Investment of Time and Resources By The
`Court and the Parties Has Already Occurred ..................................... 11
`1.
`The District Court Has Spent Significant Time and
`Resources on the District Court Action ................................... 11
`The Parties Have Spent Significant Time and Resources
`on the District Court Action ..................................................... 12
`Factor 4: There is Significant Overlap Between Issues Raised In
`The Petition And In The District Court Action .................................. 13
`Factor 5: Apple is Both Petitioner And Defendant ............................ 17
`Factor 6: Other Circumstances, Such As Apple’s Purposeful
`Delay In Filing The Petition, Weigh In Favor of Denial ................... 17
`III. THE PETITION DOES NOT SHOW A REASONABLE
`LIKELIHOOD OF PREVAILING WITH RESPECT TO ANY
`CHALLENGED CLAIM ............................................................................. 20
`A.
`Background ........................................................................................ 21
`1.
`Overview of the ’991 Patent Invention .................................... 21
`2.
`Person of Ordinary Skill in the Art .......................................... 21
`Claim Construction............................................................................. 22
`B.
`C. All Grounds Are Unlikely To Succeed Because Petitioner Fails
`To Articulate A Rationale For Combining Asmussen and Bear ........ 24
`
`C.
`
`2.
`
`D.
`
`E.
`F.
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`TABLE OF CONTENTS
`(continued)
`
`Page
`
`1.
`
`2.
`
`3.
`
`2.
`
`3.
`
`Petitioner Fails to Identify What Is Missing From the
`Primary Reference.................................................................... 26
`Petitioner Fails to Explain What It Is Combining From
`Each Reference ........................................................................ 27
`Petitioner Fails to Explain How It Is Combining Each
`Reference ................................................................................. 28
`D. Ground 1: Petitioner Fails To Establish That Claims 1 and 8
`Are Obvious Over Asmussen In View of Bear .................................. 31
`1.
`Petitioner Fails to establish that Asmussen in
`combination with Bear discloses element 1(a) ........................ 31
`Petitioner Fails to establish that Asmussen in
`combination with Bear discloses element 1(e) ........................ 34
`Petitioner Fails to establish that Asmussen in
`combination with Bear discloses element 8(b) ........................ 41
`Ground 2: Petitioner Fails To Establish That Claims 1-5 and 8-
`12 Are Obvious Over Asmussen In View Of Bear In Further
`View Of Marley .................................................................................. 42
`1. Marley Was Already Considered During Prosecution ............ 42
`2.
`Petitioner Fails to establish that Asmussen In
`Combination With Bear In Further View Of Marley
`Discloses Claims 1(preamble)-(b) And 1(d)-(g) And
`Claim 8 ..................................................................................... 46
`Petitioner Fails To Establish That Asmussen In
`Combination With Bear In Further View Of Marley
`Discloses Claim 2..................................................................... 46
`Petitioner Fails To Establish That Asmussen In
`Combination With Bear In Further View Of Marley
`Discloses Claim 3..................................................................... 47
`
`E.
`
`3.
`
`4.
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`-ii-
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`TABLE OF CONTENTS
`(continued)
`
`Page
`
`5.
`
`6.
`
`7.
`
`Petitioner Fails To Establish That Asmussen In
`Combination With Bear In Further View Of Marley
`Discloses Claim 4..................................................................... 48
`Petitioner Fails To Establish That Asmussen In
`Combination With Bear In Further View Of Marley
`Discloses Claim 5..................................................................... 48
`Petitioner Has Failed To Establish That Asmussen In
`Combination With Bear In Further View Of Marley
`Discloses Claim 9..................................................................... 51
`Petitioner Fails To Establish That Asmussen In
`Combination With Bear In Further View Of Marley
`Discloses Claim 10................................................................... 51
`Petitioner Fails To Establish That Asmussen In
`Combination With Bear In Further View Of Marley
`Discloses Claim 11................................................................... 52
`10. Petitioner Fails To Establish That Asmussen In
`Combination With Bear In Further View Of Marley
`Discloses Claim 12................................................................... 52
`11. Petitioner Fails To Articulate Any Rational Underpinning
`For Petitioner’s Obviousness Combination Of Asmussen,
`Bear, And Marley ..................................................................... 53
`Ground 3: Petitioner Fails To Establish That Claims 5 and 12
`Are Obvious Over Asmussen In View Of Bear And In Further
`View Of Marley and DeFazio ............................................................ 59
`1.
`Petitioner Fails To Articulate Any Rational Underpinning
`for Petitioner’s Obviousness Combination of Asmussen,
`Bear, Marley, and DeFazio ...................................................... 60
`G. Ground 4: Petitioner Fails To Establish That Claims 1 And 8
`Are Obvious Over Asmussen In View Of Bear And In Further
`View of Lindstrom ............................................................................. 65
`
`8.
`
`9.
`
`F.
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`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`H. Ground 5: Petitioner Fails To Establish That Claims 1-5 And 8-
`12 Are Obvious Over Asmussen In View Of Bear And
`Lindstrom In Further View Of Marley ............................................... 69
`Ground 6: Petitioner Fails To Establish That Claims 5 and 12
`Are Obvious Over Asmussen In View Of Bear, Lindstrom, and
`Marley And In Further View Of DeFazio .......................................... 70
`IV. CONCLUSION ............................................................................................. 71
`
`I.
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`-iv-
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`

`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`ActiveVideo Networks, Inc. v. Verizon Comm’s, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .......................................................................... 24
`Agrinomix, LLC v. Mitchell Ellis Prods., Inc.,
`IPR2017-00525, Paper 6 (PTAB Jun. 14, 2017) ................................................ 43
`Ambato Media, LLC v. Clarion Co.,
`No. 2:09-CV-242-JRG, 2012 WL 194172 (E.D. Tex. Jan. 23,
`2012) ..................................................................................................................... 7
`Apple v. Fintiv,
`IPR2020-00019, Paper 11 (PTAB March 20, 2020) ........................................ 1, 5
`Apple v. Maxell,
`IPR2020-00204, Paper 1 (PTAB December 20, 2019) ................................ 13, 18
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) .......................................................................................... 4
`Dell Inc. v. Acceleron, LLC,
`818 F.3d 1293 (Fed. Cir. 2016) .......................................................................... 28
`E-One, Inc. v. Oshkosh Corp.,
`IPR2019-00161, Paper 16 (PTAB May 16, 2019) ......................................... 9, 10
`Edwards Lifesciences Corp. v. Evalve,
`IPR2019-01546, Paper 7, 12-13 (PTAB Feb. 26, 2020) .................................... 16
`Ferring B.V. v. Watson Laboratories, Inc.-Florida,
`764 F.3d 1401 (Fed. Cir. 2014) .......................................................................... 28
`Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) ................................. 1, 9, 18, 19
`Google LLC v. Uniloc 2017 LLC,
`IPR2020-00115, Paper 8 (PTAB March 27, 2020) ............................................ 10
`
`
`
`
`
`

`

`Case IPR2020-00202
`
`Patent No. 10,084,991
`Patent Owner Preliminary Response
`
`Guangdong Alison Hi-Tech Co., Ltd. v. Aspen Aerogels, Inc.,
`IPR2017-00152, Paper 8 (P.T.A.B. Mar. 23, 2017) ..................................... 29, 58
`Harmonic Inc. v. Avid Tech.,
`815 F.3d 1356 (Fed. Cir. 2016) ............................................................................ 4
`Hormel Foods Corp. v. HIP, Inc.,
`IPR2019-00469, Paper 9 (PTAB July 15, 2019) ............................................ 9, 10
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 25
`LG Elecs., Inc. v. Cellular Commc’ns Equipment LLC,
`IPR2016-00197, Paper No. 7 (PTAB Apr. 29, 2016)..................................passim
`Maxell, Ltd. v. Apple Inc.,
`No. 5:19-cv-00036-RWS (E.D. Tex.) ..........................................................passim
`Motion Games, LLC v. Nintendo Co.,
`2014 WL 11678661 (E.D. Tex. Sept. 23, 2014), 2014 WL
`11709443 (E.D. Tex. Oct. 30, 2014) .................................................................... 7
`Mylan Pharms.,
`IPR2018-01143, Paper 13 ............................................................................... 9, 18
`NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) ........................................passim
`Peloton Interactive, Inc. v. Flywheel Sports, Inc.,
`No. 2:18-CV-00390-RWS-RSP, 2019 WL 3826051 (E.D. Tex.
`Aug. 14, 2019) ...................................................................................................... 7
`Realtime Data LLC v. Actian Coporation,
`No. 6:15-CV-463-RWS-JDL, 2016 WL 3277259 (E.D. Tex. June
`14, 2016) ............................................................................................................... 6
`
`Sand Revolution II, LLC v. Continental Intermodal Group – Trucking
`LLC,
`IPR2019-01393, Paper 12 (PTAB Feb. 5, 2020) .................................... 10, 16, 20
`
`
`
`ii
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`

`

`Case IPR2020-00202
`
`Patent No. 10,084,991
`Patent Owner Preliminary Response
`
`TracBeam, L.L.C. v. T-Mobile US, Inc.,
`No. 6:14-CV-678, 2016 WL 9225574 (E.D. Tex. Mar. 29, 2016) ....................... 7
`Trivascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) .................................................................... 29, 58
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) .......................................................................... 25
`Whole Space Indus. Ltd. v. Zipshade Industrial (B.V.I.) Corp.,
`IPR2015-00488, Paper 14 (P.T.A.B. July 24, 2015) .................................... 28, 62
`Statutes
`35 U.S.C. § 314 .................................................................................................passim
`35 U.S.C. § 314(a) ............................................................................................... 1, 10
`35 U.S.C § 314(b) ...................................................................................................... 4
`35 U.S.C. §316(a)(11) ................................................................................................ 8
`35 U.S.C. § 316(b) ..................................................................................................... 4
`35 U.S.C. § 325(d) ................................................................................................... 42
`Other Authorities
`37 C.F.R. § 42.22(a)(2) ...................................................................................... 28, 62
`37 C.F.R. § 42.104(b)(4) .......................................................................................... 22
`37 C.F.R. § 42.108(a) ................................................................................................. 4
`
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`iii
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`PATENT OWNER’S EXHIBIT LIST
`
`Description
`October 9, 2018 Notice Letter from Maxell to Apple
`March 16, 2020 Scheduling Order
`May 31, 2019 Scheduling Order
`Docket From District Court Action
`January 8, 2020 Minute Order
`March 18, 2020 Markman Order
`August 28, 2019 Minute Order
`September 17, 2019 Minute Order
`Maxell’s Disclosure of Asserted Claims and Infringement Contentions
`Maxell’s Final Election of Asserted Claims
`Apple’s Final Election of Prior Art
`Apple’s Invalidity Contentions
`Asmussen Chart from District Court Action
`
`
`Exhibit #
`2001
`2002
`2003
`2004
`2005
`2006
`2007
`2008
`2009
`2010
`2011
`2012
`2013
`
`
`
`
`
`

`

`Case IPR2020-00202
`
`Patent No. 10,084,991
`Patent Owner Preliminary Response
`
`I.
`
`INTRODUCTION
`Patent Owner Maxell, Ltd. (“Patent Owner”) respectfully requests that the
`
`Board deny institution because Petitioner Apple Inc. (hereinafter, “Petitioner”) has
`
`failed to demonstrate a reasonable likelihood of success on the grounds submitted
`
`in its Petition for challenging the patentability of claims 1-5 and 8-12 (“challenged
`
`claims”) of U.S. Patent No. 10,084,991 (“the ’991 patent”).
`
`First, the Board should exercise its discretion pursuant to 35 U.S.C. § 314(a)
`
`and deny this petition. Application of the factors set forth in Apple v. Fintiv weighs
`
`heavily in favor of denial of institution. IPR2020-00019, Paper 11, at 5-6 (PTAB
`
`March 20, 2020). One of the purposes of IPRs is to be an “effective and efficient
`
`alternative” to litigation. Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`
`IPR2016-01357, Paper 19 at 16-17 (PTAB Sept. 6, 2017) (precedential). Here,
`
`instituting an IPR would not be an effective or efficient alternative to litigation,
`
`particularly given the advanced stage of the co-pending District Court case,
`
`Maxell, Ltd. v. Apple Inc., No. 5:19-cv-00036-RWS (E.D. Tex.) (“District Court
`
`Action”), the finite resources of the Board, and Apple’s delay in filing its Petition.
`
`Second, the Petition fails to show that a POSITA would be motivated to
`
`combine Asmussen with Bear. For example, Petitioner fails to consider the
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`1
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`Case IPR2020-00202
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`Patent No. 10,084,991
`Patent Owner Preliminary Response
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`different design requirements of each reference and instead only provides a general
`
`motivation to combine. Moreover, Petitioner fails to specify which elements of
`
`each of the cited references it contends would have been obvious to combine with
`
`each other to obtain the claimed invention, let alone how or why such a
`
`combination would be made in view of the different design requirements of each
`
`system.
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`Third, even if Asmussen and Bear could be combined, the Petition fails to
`
`show that those references in combination with various other references such as
`
`Marley, DeFazio, and Lindstrom render Claims 1-5 and 8-12 unpatentable.
`
`II. THE BOARD SHOULD EXERCISE ITS DISCRETION AND DENY
`INSTITUTION FOR ALL GROUNDS PURSUANT TO 35 U.S.C. § 314
`Apple’s Petition for IPR should be denied because the invalidity arguments
`
`Apple raises here will be resolved in the co-pending District Court Action long
`
`before this proceeding will conclude. While Apple acknowledged the District
`
`Court Action in its Petition, it failed to inform the Board that the District Court
`
`Action will be complete long before any final decision would issue in this
`
`proceeding. Nor did Apple inform the Board that Maxell identified claims at issue
`
`in the ’991 Patent fourteen months prior to Apple filing its Petition, and that the
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`trial date of October 2020 for the District Court action was scheduled back in May
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`
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`2
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`

`

`Case IPR2020-00202
`
`Patent No. 10,084,991
`Patent Owner Preliminary Response
`
`2019.1 See Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov.
`
`2019) 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”). Not only is a jury trial scheduled in the District
`
`Court Action a mere three months after the Board’s anticipated Institution
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`Decision, the jury trial adjudicating the validity of the ’991 Patent will conclude
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`nine months before any Final Written Decision issues in this proceeding.
`
`The District Court Action will also resolve the same, or substantially the
`
`same, invalidity arguments that Apple raises in the instant Petition. The primary
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`prior art reference relied on in this proceeding is the same as the primary prior art
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`reference at issue in the District Court Action. Additionally, the challenged claims
`
`are substantially the same in substance and scope as those asserted in the District
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`Court Action. The claim construction disputes between the parties are also the
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`same across the two proceedings. The claim constructions Apple applies in this
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`proceeding are identical to those it proposes in the District Court Action. Thus, any
`
`1 See Notice Letter from Maxell to Apple dated October 9, 2018 (Ex. 2001) at 2
`(specifically identifying claims 1-16 of the ’991 Patent as being infringed by
`Apple).
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`3
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`Patent No. 10,084,991
`Patent Owner Preliminary Response
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`questions of whether the grounds of invalidity raised in Apple’s Petition invalidate
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`the asserted claims of the ’991 Patent will be decided in the District Court Action
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`at least nine months prior to when the Board would render a final decision in this
`
`proceeding.
`
`There is no requirement that the Board institute IPR. Harmonic Inc. v. Avid
`
`Tech., 815 F.3d 1356, 1367 (Fed. Cir. 2016). Instead, the decision to institute is
`
`delegated to the Board and is purely discretionary. As 35 U.S.C § 314(b) explains,
`
`“[t]he Director shall determine whether to institute an inter partes review.” Cuozzo
`
`Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016); 37 C.F.R. § 42.108(a).
`
`The Director’s discretion is informed by many things, including the consideration
`
`of “the integrity of the patent system, [and] the efficient administration of the
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`Office.” 35 U.S.C. § 316(b).
`
`
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`Simply put, instituting an IPR in this circumstance would needlessly
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`duplicate the District Court Action, and unnecessarily waste the Board’s
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`4
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`Patent No. 10,084,991
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`resources.2 See NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752,
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`Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential) (denying institution under
`
`similar facts).
`
`“[T]he Board’s cases addressing earlier trial dates as a basis for denial under
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`NHK have sought to balance considerations such as system efficiency, fairness,
`
`and patent quality.” Apple Inc., IPR2020-00019, Paper 11, at 5. When applying
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`NHK, the Board has balanced the following factors:
`
`(2)
`
`(1) whether the court granted a stay or evidence exists that one may
`be granted if a proceeding is instituted;
`proximity of the court’s trial date to the Board’s projected
`statutory deadline for the final written decision;
`investment in the parallel proceeding by the court and the
`parties;
`overlap between issues raised in the petition and in the parallel
`proceeding;
`
`(3)
`
`(4)
`
`
`2 Apple has filed nine other Petitions challenging the patentability of the other
`patents-in-suit in the District Court Action. The Board should exercise its
`discretion to deny institution in those proceedings for similar reasons pursuant to
`35 U.S.C. § 314. See IPR2020-00199, -00201, -00202, -00203, -00204, -00407, -
`00408, -00409, and -00597.
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`Patent No. 10,084,991
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`(5) whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`
`(6)
`
`Id. at 5-6. After applying these factors to the current petition and circumstances, all
`
`strongly weigh in favor of denying institution of this Petition pursuant to 35 U.S.C.
`
`§314.
`
`A.
`Factor 1: The District Court Action is Unlikely To Be Stayed
`Apple only recently moved for a stay of the District Court Action on March
`
`
`
`24, 2020—over a year into the District Court Action and one week before the close
`
`of discovery. That motion is unlikely to succeed. As set forth below, the district
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`court and the parties have already invested significant time and resources in the
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`District Court Action. There is no indication that the district court will grant a
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`motion to stay at this late stage in the District Court Action.
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`Where, as here, a defendant delayed filing IPRs until later in the litigation,
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`the Eastern District of Texas has often ruled such facts weigh against staying the
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`case. See, e.g., Realtime Data LLC v. Actian Coporation, No. 6:15-CV-463-RWS-
`
`JDL, 2016 WL 3277259, at *3 (E.D. Tex. June 14, 2016) (“The Court may deny a
`
`request for a stay where the movant has unjustifiably delayed seeking
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`
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`Patent No. 10,084,991
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`reexamination.”); Peloton Interactive, Inc. v. Flywheel Sports, Inc., No. 2:18-CV-
`
`00390-RWS-RSP, 2019 WL 3826051, at *5 (E.D. Tex. Aug. 14, 2019) (noting that
`
`a “significant portion of discovery had already been conducted” as a reason to deny
`
`the stay); TracBeam, L.L.C. v. T-Mobile US, Inc., No. 6:14-CV-678, 2016 WL
`
`9225574, at *2 (E.D. Tex. Mar. 29, 2016) (noting that one of the reasons the
`
`motion to stay was denied was because fact discovery had already closed); see also
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`Motion Games, LLC v. Nintendo Co., 2014 WL 11678661, at *3 (E.D. Tex. Sept.
`
`23, 2014) (denying stay, even though IPR had been instituted, where case was
`
`twenty months old, court had held a Markman hearing, and trial was scheduled for
`
`one year later), adopted, 2014 WL 11709443 (E.D. Tex. Oct. 30, 2014).
`
`The Eastern District of Texas recognizes that a patent owner has “a
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`recognized interest in the timely enforcement of its patent rights,” and that staying
`
`litigation is unfairly prejudicial to the extent it delays a patent owner’s opportunity
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`to enforce its patent rights against competitors. Motion Games, 2014 WL
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`11678661, at *3-4. Given that the District Court Action trial is set to occur nine
`
`months before any Final Written Decision here, a stay would undoubtedly
`
`prejudice Maxell’s interest in timely enforcement. Id.; Ambato Media, LLC v.
`
`Clarion Co., No. 2:09-CV-242-JRG, 2012 WL 194172, at *1 (E.D. Tex. Jan. 23,
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`2012) (noting that patentee “would be unduly prejudiced if the Court were to grant
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`the stay because a stay would effectively prevent [patentee] from enforcing its
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`patent rights for several more years.”).
`
`This Fintiv factor weighs in favor of denial.
`
`B.
`
`Factor 2: Trial In The District Court Action Will Occur Nine
`Months Before The Board’s Final Written Decision
`The District Court Action will be complete nine months before a Final
`
`Written Decision is issued in this proceeding. Fact discovery closed in the District
`
`Court Action on March 31, 2020, and expert discovery closes June 16, 2020, all
`
`before an institution decision is expected on Apple’s petition. Ex. 2002. The
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`District Court Action is set for trial beginning October 26, 2020. Id. Apple has
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`known about the trial date in the District Court Action since May 31, 2019, over
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`six months prior to filing the instant petition. Ex. 2003. In contrast, if this
`
`proceeding is instituted, an oral hearing would not be expected until about April
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`2021, and a Final Written Decision would not be expected until July 2021, a full
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`nine months after the trial in the District Court Action. See 35 U.S.C. §316(a)(11)
`
`(“requiring that the final determination in an inter partes review be issued not later
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`than 1 year after the date on which the Director notices the institution of a
`
`review”).
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`8
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`Case IPR2020-00202
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`Patent No. 10,084,991
`Patent Owner Preliminary Response
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`
`As the Board has recognized, this fact pattern weighs in favor of denying the
`
`Petition. For example, in NHK the Board denied institution when the Petitioner had
`
`asserted the same prior art and arguments in a co-pending district court proceeding
`
`set to go to trial six months before the IPR hearing. See NHK Spring, IPR2018-
`
`00752, Paper 8 at 20. Specifically, the Board found that institution in that situation
`
`“would not be consistent with ‘an objective of the AIA . . . to provide an effective
`
`and efficient alternative to district court litigation.’” Id. (quoting Gen. Plastic,
`
`IPR2016-01357, Paper 19 at 16-17).
`
`Similarly, the Board in Mylan Pharmaceuticals denied institution based on
`
`the advanced stage of the co-pending district court proceeding and the extensive
`
`overlap of the asserted prior art, expert testimony and claim construction.
`
`IPR2018-01143, Paper 13 at 13 (PTAB Dec. 3, 2018). The Board further held that
`
`the “inefficiency is amplified when the district court trial is set to occur . . . more
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`than eight months before [the Board’s] Final Written Decision,” if the Board had
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`instituted trial. Id. at 14; see also Hormel Foods Corp. v. HIP, Inc., IPR2019-
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`00469, Paper 9 at 50 (PTAB July 15, 2019) (recognizing “in cases such as NHK
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`Spring that the fact that [a] court will resolve the same issues raised by [a] Petition,
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`at an earlier date than the Board, gives rise to inefficiencies and duplication of
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`effort between the tribunals.”); E-One, Inc. v. Oshkosh Corp., IPR2019-00161,
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`Paper 16 at 9 (PTAB May 16, 2019) (denying institution pursuant to §314(a) due
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`to parallel district court trial scheduled eleven months away).
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`In Sand Revolution II, LLC v. Continental Intermodal Group – Trucking
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`LLC, the Board relied on NHK to deny institution of a petition in view of the
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`advanced stage of related District Court proceedings where the invalidity
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`arguments were “very similar to, but perhaps not exactly the same” as those
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`presented in the District Court. IPR2019-01393, Paper 12 at 17 (PTAB Feb. 5,
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`2020).
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`Most recently, in Google LLC v. Uniloc 2017 LLC, the Board denied
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`institution where the underlying trial would begin less than five months from the
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`Institution decision. IPR2020-00115, Paper 8, at 3, 10 (PTAB March 27, 2020).
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` Here, the advanced stage of the District Court Action relative to a hearing or
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`Final Written Decision in this matter is the same as in NHK, Mylan, Hormel Foods,
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`E-One, Sand Revolution, and Google. Quite simply, the arguments at issue in this
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`proceeding will be resolved in the District Court Action well before the Board
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`would reach a Final Written Decision on the same issues. Accordingly, it would be
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`inefficient and contrary to the Board’s express goals and finite resources to
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`institute IPR here due to the advanced stage of the District Court Action. NHK
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`Spring Co., IPR2018-00752, Paper 8 at 20-21.
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`This Fintiv factor weighs in favor of denial.
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`C.
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`Factor 3: Significant Investment of Time and Resources By The
`Court and the Parties Has Already Occurred
`There has been significant time and resources invested by both the Court and
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`the parties in the District Court Action, pending now for over one year. See
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`generally Ex. 2004 (Docket from District Court Action).
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`1.
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`The District Court Has Spent Significant Time and
`Resources on the District Court Action
`The District Court has invested significant time and resources into the
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`District Court Action. For example, the Court conducted a four-hour Markman
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`hearing and issued a 57-page Markman order with a detailed discussion of a
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`number of disputed claim terms and phrases for the ten patents at issue in the
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`District Court Action. Ex. 2005; Ex. 2006. The district court also has invested
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`many hours in holding arguments and has issued numerous rulings on Apple’s
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`motion to dismiss, motion to transfer, and the parties’ other various motions. Ex.
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`2005; Ex. 2007; Ex. 2008.
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`2.
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`The Parties Have Spent Significant Time and Resources on
`the District Court Action
`The parties have also invested significant time and resources into the District
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`Court Action. For example, fact discovery closed on March 31, 2020, save for
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`some remaining depositions postponed due to COVID-19 issues. Ex. 2002. During
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`fact discovery, the parties collectively produced nearly 2 million pages of
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`documents, conducted 30 depositions (through April 15), filed 19 motions, and
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`served 50 interrogatories and 120 requests for admission. Ex. 2004. The parties
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`also served over 30 third-party subpoenas. Expert discovery is underway and
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`closes June 16, 2020. Expert discovery also highlights the significant time and
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`resources the parties have already invested in the District Court Action. For
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`example, Maxell’s experts have already spent nearly 600 hours reviewing source
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`code produced by Apple. Maxell’s expert report regarding infringement and
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`Apple’s expert reports regarding invalidity of the ’991 Patent will be served on
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`May 7, 2020 after substantial expense and effort by counsel and experts on both
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`sides.
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`Apple clearly has prioritized the District Court Action over the timely filing
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`of its Petition. As Apple admits, “Apple prepared and served invalidity contentions
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`in the [District Court Action] on August 14, 2019, which involved a significant
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`time investment beyond the prior art searching already undertaken. Immediately
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`upon completing the invalidity contentions, Apple began preparing the IPRs for
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`the ten asserted patents. . . .” Apple v. Maxell, IPR2020-00204, Paper 1 at 46
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`(PTAB December 20, 2019) (emphasis added).
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`This Fintiv factor weighs in favor of denial.
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`D.
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`Factor 4: There is Significant Overlap Between Issues Raised In
`The Petition And In The District Court Action
`The scope of Apple’s challenge to the ’991 Patent’s validity in this
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`proceeding is substantially the same as in the District Court Action. For example,
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`there is overlap in the claims challenged in both proceedings. Here, Apple asserts
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`that Claims 1-5 and 8-12 of the ’991 Patent are unpatentable. Petition at 1. These
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`claims cover all the asserted claims against Apple in the District Court action. See
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`Ex. 2009 at 2. Pursuant to the District Court Action scheduling order, on March 17,
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`2020, Maxell made a Final Election of Asserted Claims and on April 7, 2020,
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`Apple made a Final Election of Prior Art. Ex. 2010; Ex. 2011.
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`The prior art that Apple relies on in its Petition is the same, or substantially
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`the same, as the prior art at issue in the District Court Action. For example, in the
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`Petition, Apple proposes six grounds, all utilizing Asmussen as the primary
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`reference. Petition at 8. In the District Court Action, Apple also uses Asmussen as a
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`primary reference. Ex. 2012 at 73. Apple also has charted some of the same
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`secondary references it uses here, Bear and Marley, in the District Court Action.
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`Id. Indeed, a sample comparison of the evidence cited in the Pe