Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 13
`Date: September 17, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OPTIS CELLULAR TECHNOLOGY, LLC,
`Patent Owner.
`_______________
`
`IPR2020-00465
`Patent 8,102,833 B2
`_______________
`
`Before KALYAN K. DESHPANDE, MICHAEL R. ZECHER, and
`JOHN P. PINKERTON, Administrative Patent Judges.
`
`PINKERTON, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`571.272.7822
`
`
`Paper No. 13
`Date: September 17, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OPTIS CELLULAR TECHNOLOGY, LLC,
`Patent Owner.
`_______________
`
`IPR2020-00465
`Patent 8,102,833 B2
`_______________
`
`Before KALYAN K. DESHPANDE, MICHAEL R. ZECHER, and
`JOHN P. PINKERTON, Administrative Patent Judges.
`
`PINKERTON, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`IPR2020-00465
`Patent 8,102,833 B2
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`I. INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–14 of U.S. Patent No. 8,102,833 B2 (Ex. 1001, “the ’833
`patent”). Paper 3 (“Pet.”). Optis Cellular Technology, LLC (“Patent
`Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Pursuant
`to our authorization, Petitioner filed a Reply to Patent Owner’s Preliminary
`Response (Paper 8 (“Pet. Reply”)), and Patent Owner filed a Sur-reply
`(Paper 9 (“PO Sur-reply”), each directed to whether we should exercise our
`discretion to deny institution pursuant to 35 U.S.C. § 314(a). Ex. 1073, 1;
`Ex. 2036, 1, 3. Pursuant to our direction, Petitioner also filed a Notice of
`Invalidity Grounds (Paper 10 (“Pet. Notice”), and Patent Owner filed
`Updated Mandatory Notice (Paper 11 (“PO Updated Notice”). Ex. 2040.
`Each of these notices is directed to the claims of the ’833 patent asserted to
`be invalid, and the ground(s) of invalidity, at the trial in the U.S. District
`Court for the Eastern District of Texas, Marshall Division, in Optis Wireless
`Technology, LLC v. Apple Inc., Case No. 2:19-cv-00066-JRG (E.D. Tex.)
`(“the underlying litigation”).1
`Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to
`institute an inter partes review if “the information presented in the petition
`. . . and any response . . . shows that there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`
`
`1 As further discussed below, between August 3 and 11, 2020, a jury trial
`was held in the underlying litigation in the U.S. District Court for the
`Eastern District of Texas, Marshall Division, in which the jury rendered its
`verdict on August 11, 2020. See PO Updated Notice 1–2 (citing Ex. 2041
`(Verdict Form)).
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`2
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`Patent 8,102,833 B2
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`the petition.” 35 U.S.C. § 314(a). Institution of an inter partes review is
`discretionary, not mandatory. 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.”); Harmonic Inc. v. Avid
`Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted,
`but never compelled, to institute an IPR proceeding.”).
`Having considered the parties submissions, and for the reasons
`discussed below, we exercise discretion under 35 U.S.C. § 314(a) to deny
`institution of inter partes review.
`II. BACKGROUND
`A. Related Matters
`Patent Owner has asserted the ’833 patent against Petitioner in Optis
`Wireless Technology, LLC v. Apple Inc., No. 2:19-cv-00066-JRG (E.D.
`Tex.). Pet. 2; Paper 11, 1.
`Patent Owner also asserted the ’833 patent against Huawei Device
`Co. Ltd. in Optis Wireless Tech., LLC, v. Huawei Techs. Co., No. 2:17-cv-
`00123-JRG-RSP (E.D. Tex.) (“the Huawei litigation”). Pet. 10 n.7.
`Huawei Device Co., Ltd. filed a petition for inter partes review of
`claims 1–14 of the ’833 patent in Huawei Device Co., Ltd. v. Optis Cellular
`Technology, LLC, IPR2018-00807 (PTAB) (“IPR 807”). Pet. 2 (citing
`Ex. 1010); Paper 6, 1. On November 5, 2018, we denied institution in IPR
`807. Paper 6, 1; Ex. 1011.
`B. Overview of the ’833 Patent
`The ’833 patent, titled “Method for Transmitting Uplink Signals,”
`issued on January 24, 2012, and claims priority to Korean application 10-
`
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`Patent 8,102,833 B2
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`2008-0068634, filed on July 15, 2008, and U.S. Provisional Applications,
`Nos. (1) 60/972,244, filed on September 13, 2007; (2) 60/987,427, filed on
`November 13, 2007; and (3) 60/988,433, filed on November 16, 2007.
`Ex. 1001, codes (30), (60), 1:7–15.
`The ’833 patent relates generally to user equipment (UE) of a mobile
`communication system transmitting uplink signals, including ACK/NACK
`signals, control signals other than ACK/NACK signals, and data signals.
`Ex. 1001, code (57), 1:21–24. The ’833 patent describes that control signals
`transmitted to the uplink “include uplink ACK/NACK2 signals for HARQ
`communication, channel quality indicator (CQI) information, and preceding
`matrix index (PMI).” Id. at. 1:29–32. The ’833 patent specifically
`distinguishes ACK/NACK signals from control signals other than
`ACK/NACK signals and states ‘“control signals’ will mean those other than
`the ACK/NACK signals.” Id. at 5:15–16; see also id. at 1:43–45 (stating
`“the control signals will mean those except for ACK/NACK signals”).
`
`The ’833 patent explains that the 3GPP LTE system uses a single
`carrier frequency division multiplexing access (SC-FDMA) scheme for
`uplink signal transmission. Id. at 1:33–35. According to the ’833 patent, the
`3GPP LTE system prescribes that data signals and control signals among the
`uplink signals are first multiplexed and ACK/NACK signals are transmitted
`to the multiplexed signals by puncturing the data or control signals when
`
`
`2 Petitioner’s expert, Dr. Jonathan Wells, opines that ACK/NACK signals
`are a type of control information or signals “sent from a UE that signifies the
`acknowledgment (‘ACK’) of receipt or a negative acknowledgment
`(‘NACK’) indicating a problem with receiving downlink data.” Ex. 1002
`¶ 35 (citing Ex. 1001, 5:3–6).
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`Patent 8,102,833 B2
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`uplink ACK/NACK signal transmission is required for downlink data. Id. at
`1:35–40. As the ’833 patent also describes, it was determined that, in 3GPP
`LTE systems, when the control information is multiplexed with the data
`information, “the control information is transmitted near a reference signal.”
`Id. at 1:45–49. The ’833 patent explains that “control signals generally
`require higher reliability than the data signals,” and “the ACK/NACK
`signals require higher reliability than other types of control signals.” Id. at
`1:51–57. Accordingly, the ’833 patent describes that, when uplink
`ACK/NACK signal transmission is required while all the control signals are
`transmitted by approximating to the reference signal, “problems occur in that
`the ACK/NACK signals can neither be transmitted by puncturing the control
`signals arranged near the reference signal nor be transmitted near the
`reference signal.” Id. at 1:54–62. Thus, the ’833 patent describes a method
`for transmitting uplink signals by efficiently arranging ACK/NACK signals
`and other control signals in a resource region considering priority among
`them. Id. at 2:7–10; see also id. at 2:25–27 (stating that “arranging the
`ACK/NACK signals at both symbols near to symbols through which a
`reference signal is transmitted”).
`
`The ’833 patent describes transmitting information in accordance with
`the SC-FDMA scheme in which information sequences are transmitted using
`one “resource block” and one “sub-frame.” Id. at 5:31–40. Each sub-frame
`includes two slots, and each slot includes 7 SC-FDMA symbols. Id. at 5:40–
`45, cl. 3. Two of the 14 SC-FDMA symbols in each sub-frame are used as
`reference signals that are pilot signals. Id. at 5:40–43. Each resource block
`includes 12 OFDM (orthogonal frequency division multiple access)
`
`
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`5
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`subcarriers and 7 SC-FDMA symbols in one slot. Id. at 5:37–40. The ’833
`patent explains that, at this time, the number of modulation symbols of the
`information that can be transmitted to the uplink becomes 12*12=144. Id. at
`5:43–45. The ’833 patent further explains that 144 information sequences
`can be transmitted through 12 virtual subcarriers and 12 SC-FDMA
`symbols, which “can be represented by a matrix structure of 12*12 called a
`time-frequency mapper.” Id. at 5:46–49.
`
`Figure 6 of the ’833 patent is reproduced below.
`
`
`
`
`Figure 6 above is a diagram illustrating a method for transmitting
`
`uplink signals in accordance with one embodiment of the ’833 patent. Id. at
`
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`6
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`Patent 8,102,833 B2
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`3:33–35, 6:49–51. This figure includes three portions, arranged vertically.
`The top portion of Figure 6 (labeled 601) is a horizontal strip of small,
`square blocks representing control signals (each numbered 1 through NC)
`and data signals (each numbered 1 through ND), illustrating that control and
`data signals are multiplexed serially, if ACK/NACK signals are not
`transmitted, with control signals placed at the front (i.e., starting at the left)
`and data signals placed at the rear of the multiplexed signals. Id. at 6:60–63.
`The second or middle portion of Figure 6 (labeled 602) is also a horizontal
`strip of small, square blocks, again representing data signals and control
`signals multiplexed serially, with data signals placed at the front, and with
`ACK/NACK signals to be transmitted that “are arranged by puncturing the
`multiplexed data.” 3 Id. at 6:63–66. In this portion of Figure 6, the
`ACK/NACK symbols are inserted in place of data signals 5, 6, ND-3, and
`ND-2.
`The third portion of Figure 6 (labeled 603), which is located at the
`
`bottom, illustrates the embodiment in which information sequences such as
`those shown in the second portion of Figure 6 (labeled 602) are mapped with
`SC-FDMA symbols according to the time-first mapping method, and then
`transmitted on the uplink. Id. at 6:52–56; 6:66–7:2. This portion of Figure 6
`is a two-dimensional “time-frequency region” that independent claim 1
`refers to as “a 2-dimensional resource matrix.” Id. at 6:66–7:2, 9:6–7. In
`
`
`3 As used in the ’833 patent, “puncturing” means “overwriting” or
`“replacing” specific information. Ex. 1001, 6:15–21 (“overwritten” means
`that specific information is skipped and the corresponding region is mapped;
`“overwritten” also means that the length of the entire information is
`maintained equally even after specific information is inserted).
`7
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`accordance with the time-first mapping method, the multiplexed signals
`(such as 602) are mapped row by row to the resource matrix in which rows
`correspond to subcarriers and columns correspond to SC-FDMA symbols.
`Id. at 6:66–7:3; 7:6–10; 9:6–21. Resource matrix 603 shows a total of 14
`SC-FDMA symbols along the time axis (the vertical axis) within one
`subframe—12 SC-FDMA symbols (numbered from top to bottom as #1
`through #12 in a column to the right of the matrix) and two SC-FDMA
`symbols that carry reference signals in a part between symbol indices #3 and
`#4 and in a part between symbol indices #9 and #10. Id. at 5:37–45; 7:2-5.
`The ’833 patent explains that the ACK/NACK signals are set in such a
`manner that they overwrite the data signals on both sides of the parts to
`which the reference signals are transmitted (i.e., into SC-FCMA symbols #3,
`4, 9, and 10 in Figure 6). Id. at 7:10–14. These overwritten ACK/NACK
`signals are labeled N-2, N-3, N-8, and N-9 in matrix 603, the third portion of
`Figure 6.
`
`C. Illustrative Claims
`Challenged claims 1 and 8 are independent. Challenged claims 2–7
`depend directly from claim 1; challenged claims 9–14 depend directly from
`claim 8. Claims 1 and 8 are illustrative of the claimed subject matter and are
`reproduced below (with paragraph lettering added to claim 8 consistent with
`claim 1):
`1. A method for transmitting uplink signals comprising control
`signals and data signals in a wireless communication system,
`the method comprising:
`
`
`(a) serially multiplexing first control signals and data signals in
`a mobile station, wherein the first control signals are placed at a front
`
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`Patent 8,102,833 B2
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`part of the multiplexed signals and the data signals are placed at a rear
`part of the multiplexed signals;
`
`(b) mapping the multiplexed signals to a 2-dimensional
`resource matrix comprising a plurality of columns and a plurality of
`rows, wherein the columns and the rows of the 2-dimensional
`resource matrix correspond to single carrier frequency divisional
`multiple access (SC-FDMA) symbols and subcarriers for each SC-
`FDMA symbol, respectively, wherein a number of columns of the 2-
`dimensional resource matrix corresponds to a number of SC-FDMA
`symbols within one subframe except specific SC-FDMA symbols
`used for a reference signal, and wherein the multiplexed signals are
`mapped from the first column of the first row to the last column of the
`first row, the first column of the second row to the last column of the
`second row, and so on, until all the multiplexed signals are mapped to
`the 2-dimensional resource matrix;
`
`(c) mapping ACK/NACK control signals to specific columns
`of the 2-dimensional resource matrix, wherein the specific columns
`correspond to SC-FDMA symbols right adjacent to the specific SC-
`FDMA symbols, wherein the ACK/NACK control signals overwrite
`some of the multiplexed signals mapped to the 2-dimensional resource
`matrix at step (b) from the last row of the specific columns; and
`
`(d) transmitting the signals mapped to the 2-dimensional
`resource matrix at steps (b) and (c) by column by column to a base
`station.
`8.
`A mobile station for transmitting uplink signals comprising
`control signals and data signals in a wireless communication system,
`the mobile station comprising:
`
`
`(a) a processor serially multiplexing first control signals and
`data signals, wherein the first control signals are placed at a front part
`of the multiplexed signals and the data signals are placed at a rear part
`of the multiplexed signals;
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`(b) the processor mapping the multiplexed signals to a 2-
`dimensional resource matrix comprising a plurality of columns and a
`plurality of rows, wherein the columns and the rows of the 2-
`dimensional resource matrix correspond to single carrier frequency
`divisional multiple access (SC-FDMA) and subcarriers for each SC-
`FDMA symbol, respectively, wherein a number of columns of the 2-
`dimensional resource matrix corresponds to a number of SC-FDMA
`symbols within one subframe except specific SC-FDMA symbols
`used for a reference signal, and wherein the multiplexed signals are
`mapped from the first column of the first row to the last column of the
`first row, the first column of the second row to the last column of the
`second row, and so on, until all the multiplexed signals are mapped to
`the 2-dimensional resource matrix;
`
`(c) the processor mapping ACK/NACK control signals to
`specific columns of the 2-dimensional resource matrix, wherein the
`specific columns correspond to SC-FDMA symbols right adjacent to
`the specific SC-FDMA symbols, wherein the ACK/NACK control
`signals overwrite some of the multiplexed signals mapped to the 2-
`dimensional resource matrix from the last row of the specific
`columns.
`
`Ex. 1001, 8:65–9:32; 9:65–10:30.
`
`
`D. Asserted Ground of Unpatentability
`Petitioner challenges the patentability of claims 1–14 of the ’833
`patent based on the following ground:
`
`
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`Claims Challenged
`1–14
`
`35 U.S.C. §
`§ 103(a)4
`
`Reference(s)
`Qualcomm5 in view of
`Cho,6 Samsung,7 and
`Qualcomm-2698
`
`
`
`In support of its contentions, Petitioner relies on the Declaration of
`Dr. Jonathan Wells (Ex. 1002). Pet. 6.
`III. ANALYSIS
`In the Petition, which was filed on February 28, 2020, Petitioner
`
`argues that, although the trial in the underlying litigation is scheduled to
`begin on August 17, 2020, we should not exercise our discretion to deny
`institution under 35 U.S.C. § 314(a) for several reasons, including that inter
`partes review would be a more effective and efficient alternative to litigation
`under the circumstances, Petitioner was timely in pursuing this relief, and
`
`4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`Because the ’833 patent has an effective filing date prior to the effective date
`of the applicable AIA amendment, we refer to the pre-AIA version of § 103.
`See Ex. 1001, codes (22), (30), (60).
`5 Qualcomm Europe, Draft Change Request: 36.212.v.8.0.0, Document
`R1-075037, published by November 9, 2007. Ex. 1006 (“Qualcomm”).
`6 US 2006/0262871 A1, filed on May 3, 2006, and published on November
`23, 2006. Ex. 1005 (“Cho”).
`7 Samsung, Control Signaling Location in Presence of Data in E-UTRA
`UL, 3GPP TSG RAN #49 Document R1-073094, published by June 29,
`2007. Ex. 1008 (“Samsung”).
`8 Qualcomm Europe, Rate matching details for control and data
`multiplexing, 3GPP TSG-RAN #50 Document R1-073269, published by
`August 24, 2007. Ex. 1007 (“Qualcomm-269”).
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`Patent 8,102,833 B2
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`the substantive grounds discussed in the Petition. Pet. 10 (citing General
`Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19,
`9–10 (PTAB Sept. 6, 2017) (precedential in relevant part); see also Pet. 7–9.
`In its Preliminary Response, Patent Owner asserts that the trial in the parallel
`district court case is scheduled to start on August 3, 2020 (Prelim. Resp. 7
`(citing Ex. 2002, 1)), and argues that we should exercise our discretion under
`35 U.S.C. § 314(a) to deny institution of inter partes review due to the
`advanced stage of the underlying litigation. Prelim. Resp. 6–15 (citing
`Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB, March 20, 2020)
`(precedential, designated May 5, 2020). According to Patent Owner,
`“[i]nstituting this duplicative petition would prejudice Patent Owner and
`waste the Board’s resources, may introduce the risk of inconsistent results
`from different fora, and contravenes Congressional intent for a speedy, just
`and inexpensive adjudication of the patent validity issues.” Id. at 14.
`
`On June 25, 2020, we authorized the parties to submit supplemental
`briefing on the issue of discretionary denial under 35 U.S.C. § 314(a).
`Ex. 1073, 1. We specifically authorized Petitioner to file an 8-page Reply to
`Patent Owner’s Preliminary Response, and Patent Owner to file a 4-page
`Sur-reply, limited to “the six Fintiv factors the Board considers in
`determining whether to exercise its discretion to institute review when there
`is a related proceeding pending in district court.” Id. On July 7, 2020, after
`the filing of Petitioner’s Reply on July 2, 2020, we modified our prior
`authorization for supplemental briefing by authorizing Patent Owner to file
`an 8-page Sur-reply to address the Fintiv factors and respond to arguments
`raised in Petitioner’s Reply. Ex. 2036, 1.
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`In determining whether to exercise our discretion under § 314(a), we
`
`are guided by the Board’s precedential decisions in NHK9and Fintiv. In
`NHK, the Board found that the “advanced state of the district court
`proceeding” was a “factor that weighs in favor of denying” the petition
`under § 314(a). NHK, Paper 8 at 20. The Board determined that institution
`of an inter partes review under the circumstances present in that case
`“would not be consistent with ‘an objective of the AIA . . . to provide an
`effective and efficient alternative to district court litigation.’” Id. (citing
`Gen. Plastic, Paper 19 at 16–17). The Board’s cases considering the
`advanced state of a parallel proceeding “as a basis for denial under NHK
`have sought to balance considerations such as system efficiency, fairness,
`and patent quality.” Fintiv, Paper 11 at 5 (collecting cases). Fintiv sets forth
`the following factors the Board balances when determining whether to
`exercise its discretion to deny institution:
`
`1. whether the court granted a stay or evidence exists that one may be
`granted if a proceeding is instituted;
`
`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
`
`
`9 NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8
`(PTAB Sept. 12, 2018) (precedential, designated May 7, 2019).
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`6. other circumstances that impact the Board’s exercise of discretion,
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`including the merits.
`Id. at 5–6.
`
`We now consider the Fintiv factors to determine whether to exercise
`discretion to deny institution under 35 U.S.C. § 314(a). “[I]n evaluating the
`factors, the Board takes a holistic view of whether efficiency and integrity of
`the system are best served by denying or instituting review.” Id. at 6.
`A. Fintiv Factor 1: Stay in the Underlying Litigation
`Petitioner argues that “[b]ecause no stay has been requested in the
`
`Texas case, this factor is neutral.” Pet. Reply 1. Patent Owner argues that
`this factor favors discretionary denial because a stay is highly improbable in
`view of the advanced stage of the underlying litigation, including that a trial
`is scheduled to start on August 3, 2020, and Petitioner has only filed
`petitions for inter partes review against three of the six asserted patents in
`the litigation, thereby diminishing the chance Petitioner can get a stay before
`the jury trial. Prelim. Resp. 7–8; see also PO Sur-reply 1.
`
`As discussed below, the trial in the underlying litigation already has
`taken place. PO Updated Notice, Paper 11, 1–2. On the present record,
`neither party has produced evidence that a stay of any post-trial proceedings
`may be requested or granted. See generally Pet.; Pet. Reply; Prelim. Resp.;
`PO sur-reply). Accordingly, this factor does not weigh in favor of or against
`exercising our discretion to deny institution pursuant to § 314(a).
`B. Fintiv Factor 2: Trial Date in the Underlying Litigation
`Between August 3 and August 11, 2020, a jury trial was held in the
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`United States District Court for the Eastern District of Texas, Marshall
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`Division, in the underlying litigation. PO Updated Notice 1–2. On August
`11, 2020, the jury returned a verdict that Petitioner had not proven by clear
`and convincing evidence that claim 8 of the ’833 patent is invalid. Id. at 2
`(citing Ex. 2041, 5). A final written decision in this proceeding would be
`due in September 2021, approximately thirteen months after completion of
`the district court trial. See Prelim. Resp. 8–10. Petitioner does not directly
`address this issue. See generally Pet. 7–10; Pet. Reply.
`
`Accordingly, in view of the thirteen-month gap between the date of
`the district court jury verdict and the projected due date for a final written
`decision in this proceeding, this factor strongly favors exercising our
`discretion to deny institution pursuant to § 314(a).
`C. Fintiv Factor 3: Investment by the Court and the Parties in the
`Underlying Litigation
`Patent Owner contends there has been immense investment in the
`
`underlying litigation. PO Prelim. Resp. 10. In particular, Patent Owner
`argues the district court held a Markman hearing in late January and issued a
`claim construction order on April 7, 2020. Id. (citing Ex. 2005). Patent
`Owner also argues that the parties have exchanged expert reports and they
`have filed dispositive and Daubert motions. Id. (citing Ex. 2002). Patent
`Owner further argues that “more resources” will be devoted to the district
`court case in the coming months in preparation for the August trial, and that
`the parties “have already made and will continue to make in the next couple
`of months tremendous ‘investment in the parallel proceeding.’” Id. In that
`regard, Patent Owner states that, since the filing of the Preliminary
`Response, “the parties have filed oppositions to each other’s dispositive and
`Daubert motions and have agreed to file the associated replies.” PO Sur-
`15
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`reply 1–2. We also note that the amended docket control order set a
`deadline of July 17, 2020, for filing the joint pretrial order, joint proposed
`jury instructions, joint proposed verdict form, responses to motions in
`limine, updated exhibit lists, updated witness lists, and updated deposition
`designations, and set a deadline of July 27, 2020, for the pretrial conference.
`Ex. 2002, 1–2.
`
`As Patent Owner argues, Petitioner “does not dispute any of the facts
`regarding Fintiv factor 3 presented in [Patent Owner’s Preliminary
`Response].” PO Sur-reply 1 (citing Pet. Reply 1–2). Instead, Petitioner
`argues that it exercised diligence in filing the Petition based on one ground
`for fourteen claims and gained no “tactical advantage for the Petition from
`the litigation based on the time the Petition was filed.” Pet. Reply 1–2. In
`response, Patent Owner argues that “diligence and tactical advantage are
`factors addressed under General Plastic.” PO Sur-reply 2.
`
`Contrary to Patent Owner’s argument, Fintiv does provide that a
`petitioner’s diligence or delay in filing a petition may be relevant under the
`third Fintiv factor. Fintiv, Paper 11 at 11–12. However, in view of the
`undisputed evidence of the expenditure of substantial time and effort by the
`court and the parties in preparing for and conducting a jury trial in the
`district court, we find this factor strongly favors exercising our discretion to
`deny institution pursuant to § 314(a) to prevent the inefficient use of Board
`resources.
`D. Fintiv Factor 4: Overlap Between Issues Raised in the Petition and
`Underlying Litigation
`The parties disagree on the extent to which the issues overlap in the
`
`Petition and the underlying litigation with respect to the ’833 patent.
`16
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`IPR2020-00465
`Patent 8,102,833 B2
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`Petitioner contends that the issues in the two proceedings do not
`substantially overlap. Pet. Reply 2. Petitioner argues that, at Patent
`Owner’s request, it agreed to drop the grounds involving Qualcomm-269
`and Cho in the district court case, which “mitigates concerns of duplicative
`efforts.” Id. Petitioner also argues that fourteen claims are challenged in the
`Petition, and Patent Owner’s argument about the relative amount of space in
`the Petition devoted to overlapping and non-overlapping claims fails because
`Patent Owner does not concede that the dependent claims fall with the
`independent claims. Id.
`
`Patent Owner contends that the Petition and the district court case
`overlap substantially. PO Sur-reply 2–3. Patent Owner argues that
`Petitioner “fails to inform the Board that the ground of challenge remaining
`in the district court . . . relies on two of the same references (Exs. 1006 and
`1008) as the Petition.” Id. at 3–4. Patent Owner also argues that Petitioner’s
`invalidity contentions and Dr. Wells’ declaration show there are numerous
`similarities in Petitioner’s analysis of the ground remaining in the district
`court and the analysis in the Petition. Id. at 4–5 (citing Ex. 2028, 80–83, 88–
`91; Compare Ex. 1002 ¶¶ 76–78, 79–84, 85–94, 95–101, 102–104, 105–113,
`114–119, 120–123 (Petition ground) with Ex. 2037 ¶¶ 268–270, 271–278,
`279– 288, 289–294, 295, 296–306, 307–312, 313–316 (Malladi ground).
`Patent Owner further argues that the fact there are more claims at issue in
`the Petition than those elected for trial does not favor institution because
`Petitioner’s analysis of the dependent claims relies on essentially the same
`evidence and argument as for the independent claims, and therefore, there is
`
`
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`IPR2020-00465
`Patent 8,102,833 B2
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`substantial overlap between this proceeding and the district court case. PO
`Prelim. Resp. 11–12.
`
`This fourth Fintiv factor involves consideration of inefficiency
`concerns and the possibility of conflicting decisions. Fintiv, Paper 11 at 12.
`Therefore, “if the petition includes the same or substantially the same
`claims, grounds, arguments, and evidence as presented in the parallel
`proceeding, this fact has favored denial.” Id. “Conversely, if the petition
`includes materially different grounds, arguments, and/or evidence than those
`presented in the district court, this fact has tended to weigh against
`exercising discretion to deny institution.” Id. at 12–13.
`
`In considering issues pertaining to the claims and the prior art asserted
`in the Petition and in the jury trial in the underlying litigation, there are
`similarities and differences with respect to both. We first consider issues of
`overlap with respect to the claims. At the trial in the district court, Patent
`Owner asserted only one claim of the ’833 patent, independent claim 8. Pet.
`Notice 1; PO Updated Notice 1–2. The Petition, however, challenges all
`fourteen claims of the ’833 patent; independent claims 1 and 8, as well as
`dependent claims 2–7 and 9–14. Pet. 6. Independent claim 8 is directed to a
`mobile station for transmitting uplink signals, and independent claim 1 is
`directed to a method for transmitting uplink signals. See Ex. 1001, 8:65–67,
`9:65–67. A comparison of the limitations of claims 8 and 1 indicates that,
`except for the claimed processor of claim 8, the “multiplexing,” “mapping
`the multiplexed signals to a 2-dimensional resource matrix,” and “mapping
`ACK/NACK control signals” limitations of claim 8 are essentially the same
`as limitations (a), (b), and (c) of claim 1, respectively. We also note that in
`
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`IPR2020-00465
`Patent 8,102,833 B2
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`the Petition, Petitioner argues that the prior art discloses each of the
`limitations of claim 1 (see Pet. 31–65), and then for each limitation of claim
`8, argues that the limitation of claim 8 is disclosed by the art cited in the
`section of the Petition addressing the corresponding limitation of claim 1
`(see id. 77–79). Besides the three limitations identified above (and being a
`method claim), claim 1 differs from claim 8 in that it includes a
`“transmitting” step. See Ex. 1001, 9:30–32. Thus, although only claim 8
`was asserted at trial, it is substantially similar to claim 1, which is also
`asserted in the Petition. However, none of the twelve dependent claims were
`asserted at trial.
`
`Second, we consider the overlap of issues with respect to the prior art.
`At trial, Petitioner asserted, and Patent Owner acknowledges that Dr. Wells
`testified, that claim 8 of the ’833 patent was invalid for obviousness over the
`combination of Qualcomm, Malladi-161,10 Samsung, and Malladi-367.11
`Pet. Notice 1; PO Updated Notice 2. Although this combination of prior art
`is different from the combination asserted in the Petition—Qualcomm, Cho,
`Samsung, and Qualcomm-269—as Patent Owner argues, two of the
`references—Qualcomm and Samsung—are the same. PO Sur-reply 3 (citing
`Exs. 1006, 1008). Patent Owner also argues that, at trial, Petitioner replaced
`the Petition’s Qualcomm-269 (Ex. 1007) with Malladi-367 (Ex. 2034), and
`replaced the Petition’s Cho (Ex. 1005) with Malladi-161 (Ex. 2035). Id. at
`4. Patent Owner also argues, and we agree, that based on Petitioner’s
`
`
`10 US 8,374,161 B2, issued on February 12, 2013. Ex. 2035.
`11 US 8,467,367 B2, issued June 18, 2013. Ex. 2034.
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`IPR2020-00465
`Patent 8,102,833 B2
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`second amended invalidity contentions (Ex. 2038) served on March 31,
`2020, in the underlying litigation, and Dr. Wells’ analysis in his declaration
`(Ex. 1002) and in his expert report in the underlying litigation (Ex. 2037),
`Petitioner and Dr. Wells treat Cho interchangeably with Malladi-161, and
`they treat Qualcomm-926 interchangeably with Malladi-367. Id. (citing
`Ex. 2038, 80–83, 88–91; Compare Ex. 1002 ¶¶ 76–78, 79–84, 85–94, 95–
`101, 102–104, 105–113, 114–119, 120–123 (Petition ground) with Ex. 2037
`¶¶ 268–270, 271–278
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