Trials@uspto.gov
`571-272-7822
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`Paper 9
`Date: September 24, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MAXELL, LTD.,
`Patent Owner.
`
`IPR2020-00597
`Patent 8,339,493 B2
`
`
`
`
`Before MINN CHUNG, JASON W. MELVIN, and
`FREDERICK C. LANEY, Administrative Patent Judges.
`LANEY, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 9
`Date: September 24, 2020
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MAXELL, LTD.,
`Patent Owner.
`
`IPR2020-00597
`Patent 8,339,493 B2
`
`
`
`
`Before MINN CHUNG, JASON W. MELVIN, and
`FREDERICK C. LANEY, Administrative Patent Judges.
`LANEY, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`IPR2020-00597
`Patent 8,339,493 B2
`
`I. INTRODUCTION
`Petitioner, Apple Inc., filed a Petition for inter partes review of
`claims 1, 3–6, 10, and 11 (the “challenged claims”) of U.S. Patent
`No. 8,339,493 B2 (Ex. 1001, “the ’493 patent”). Paper 1 (“Pet.”). Patent
`Owner, Maxell, Ltd., filed a Preliminary Response. Paper 6 (“Prelim.
`Resp.”). Pursuant to our authorization for supplemental briefing, Petitioner
`filed a Reply to Patent Owner’s Preliminary Response, and Patent Owner
`filed a Sur-reply. Paper 7 (“Pet. Reply”); Paper 8 (“PO Sur-reply”); see
`Ex. 1056 (authorizing reply and sur-reply).
`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 the petition.” 35 U.S.C. § 314(a). The Board, however, 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.”); NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential, designated
`May 7, 2019) (“NHK”).
`Having considered the parties’ submissions, and for the reasons
`explained below, we exercise our discretion under 35 U.S.C. § 314(a) to
`deny institution of inter partes review.
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`Patent 8,339,493 B2
`
`II. BACKGROUND
`
`A. Related Matters
`The parties identify the following pending district court proceeding
`related to the ’493 patent: Maxell, Ltd. v. Apple Inc., No. 5:19-cv-00036
`(E.D. Tex., filed Mar. 15, 2019) (“the underlying litigation”). Pet. 81;
`Paper 5, 1 (Patent Owner’s Mandatory Notices).
`
`B. Overview of the ’493 Patent
`The ’493 patent, is titled “Electric Camera.” Ex. 1001, code (54). It
`issued on December 25, 2012, based on an application filed July 28, 2010.
`Id. at code (22), (45). It claims priority as a continuation of a U.S.
`application filed September 12, 2003, which in turn claims priority as a
`division of a U.S. application filed March 8, 2000. Id. at code (60). Priority
`is also claimed to a Japanese patent application filed January 11, 2000. Id. at
`code (30), 1:6–14.
`The ’493 patent relates to “video cameras, camcorders, digital still
`cameras and others using a solid-state image sensing device, and more
`particularly to an electric camera using a solid-state image sensing device
`with a large number of pixels.” Id. at 2:57–61. An object of the invention is
`to provide an electric camera “which uses an image sensing device with a
`sufficient number of pixels for still images and enables the taking of highly
`detailed still images and a moving video taking with reduced image quality
`degradation without increasing circuitry such as field memory.” Id. at 3:8–
`13. “It is also an object of the present invention to provide an electric
`camera that can also realize the image stabilizing function.” Id. at 3:13–15.
`
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`Patent 8,339,493 B2
`
`C. Illustrative Claim
`Challenged claims 1, 5, and 10 are independent. Challenged claims 3
`and 4 depend directly from claim 1, challenged claim 6 depends directly
`from claim 5, and challenged claim 11 depends directly from claim 10.
`Claims 5 and 6 are illustrative of the claimed subject matter. Claims 5 and 6
`recite:
`5. An electric camera comprising:
`an image sensing device with a light receiving sensor having an
`array of pixels arranged vertically and horizontally in a grid
`pattern, in an N number of vertically arranged pixel lines;
`a signal processing unit that generates image signals by
`processing the output signals of the image sensing device; and
`a display unit with a display screen, that displays an image
`corresponding to the image signals;
`wherein when recording an image in a static image mode, the
`signal processing unit generates the image signals by using all
`signal charges accumulated in all N number of vertically
`arranged pixel lines of the image sensing device, to provide N
`pixel lines;
`wherein when monitoring the image in the static image mode,
`the signal processing unit generates the image signals by using
`pixel lines that have been mixed or culled from the N number
`of vertically arranged pixel lines to only include pixel lines
`separated from one another by intervals of a first distance; and
`wherein when recording the image in a moving video mode, the
`signal processing unit generates the image signals by using a
`portion of, or the entirely of, pixel lines which have been
`mixed or culled from the N number of vertically arranged
`pixel lines to only include pixel lines separated from one
`another by intervals of a second distance, where the second
`distance is different from the first distance.
`
`
`6. An electric camera according to the claim 5, further
`comprising:
`an image-instability detector which detects an image-instability
`of the electric camera; and
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`4
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`IPR2020-00597
`Patent 8,339,493 B2
`wherein when recording in the moving video mode, in order to
`correct the image-instability, the signal processing unit
`generates the image signals by changing the pixel lines used,
`and the portion of the pixel lines used, according to an amount
`of image-instability detected by the instability detector.
`
`
`Ex. 1001, 16:32–17:3.
`
`D. Prior Art and Declaration Evidence
`Petitioner cites the following references in its challenge to
`patentability:
`Casio LCD Digital Camera QV-8000SX User’s Guide (Ex. 1004,
`“Casio”);
`U.S. Patent No. 7,903,162 B2, issued March 8, 2011 (Ex. 1005,
`“Juen”);
`U.S. Patent No. 5,502,483, issued March 26, 1996 (Ex. 1006,
`“Takase”); and
`U.S. Patent No. 5,444,482, issued August 22, 1995 (Ex. 1008,
`“Misawa”).
`Petitioner supports its challenge with a declaration from Dr. Jeffrey J.
`Rodriguez (Ex. 1003).
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims are unpatentable based on
`the following ground (Pet. 4):
`
`Claims Challenged
`1, 3, 5, and 10
`
`35 U.S.C. §
`103(a)1
`
`References
`Casio, Juen
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011), amended 35 U.S.C. §103 effective March 16, 2013. Because the
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`Patent 8,339,493 B2
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`Claims Challenged
`4
`6 and 11
`
`35 U.S.C. §
`103(a)
`103(a)
`
`References
`Casio, Juen, Takase
`Casio, Juen, Misawa
`
`
`
`III. ANALYSIS
`Patent Owner contends 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 in the United States District
`Court for the Eastern District of Texas. Prelim. Resp. 2–28;
`PO Sur-reply 1–11. According to Patent Owner, instituting an inter partes
`review “would needlessly duplicate” the district court action and
`“unnecessarily waste the Board’s resources.” Prelim. Resp. 4 (citing NHK,
`Paper 8 at 20 (denying institution)).
`After Patent Owner filed its Preliminary Response, we authorized the
`parties to submit supplemental briefing on the issue of discretionary denial
`under 35 U.S.C. § 314(a). Ex. 1056, 1. We specifically authorized the
`parties to address the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-
`00019, Paper 11 (PTAB Mar. 20, 2020) (precedential, designated May 5,
`2020) (“Fintiv”). Id. Fintiv provides several factors that balance
`considerations of system efficiency, fairness, and patent quality when a
`patent owner raises an argument for discretionary denial due to the advanced
`state of a parallel proceeding. Fintiv, Paper 11 at 5–6. These factors are:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`
`
`’493 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.
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`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.
`
`We now consider these factors to determine whether we should
`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 moved for a stay in the underlying litigation, but the district
`court denied the motion. See Pet. Reply 1; PO Sur-reply 2; Ex. 1052.
`Among other reasons, the court stated “[t]he case is not in its infancy and is
`far enough along that a stay would interfere with ongoing proceedings.”
`Ex. 1052, 4. Notably, the court denied the motion without prejudice.
`Id. at 6. Although the court stated that “[t]he late stage of the proceedings
`will certainly weigh against granting a stay” if Petitioner were to file a
`renewed motion for a stay, the court also stated it could not “say now that
`the late stage would necessarily outweigh the potential simplification of
`issues following institution decisions” in this and other inter partes review
`proceedings. Id. Given the court’s apparent willingness to reconsider a
`motion to stay if an institution decision simplified issues for trial, but also
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`Patent 8,339,493 B2
`considering the late stage of the district court proceeding, with trial
`scheduled to begin in less than three months, we view the first Fintiv factor
`as neutral in determining whether to exercise discretion to deny institution.
`
`B. Fintiv Factor 2: Trial Date in the Underlying Litigation
`The district court trial date, previously set for October 26, 2020, has
`been reset for December 7, 2020. Ex. 3001 (August 10, 2020 Order
`resetting trial date); see PO Sur-reply 2–3. A trial beginning this December
`would be completed about nine months before a final written decision would
`be due in this proceeding. Petitioner does not directly address factor 2 in its
`supplemental briefing. See Pet. Reply 1–7.
`Petitioner, however, does suggest that the COVID-19 pandemic may
`affect the trial schedule, and indeed the trial has been delayed by six weeks
`due to the effects of COVID-19. Pet. Reply 6–7; Ex. 3001, 1. Patent Owner
`counters by citing an order by another judge in the Eastern District of Texas
`for a different case involving the Petitioner that denied its request to
`continue a patent trial scheduled for August 2020 because of concerns with
`COVID-19. PO Sur-reply 3 (citing Ex. 2031). In addition, Patent Owner
`argues, even if the trial date were delayed by three to five months, the trial
`still would precede a final written decision by several months. Id. Although
`we consider further delays due to the COVID-19 pandemic to be a real
`possibility despite the trial court’s recent order resetting the trial date for
`December 7, 2020, a delayed trial still seems likely to precede a final written
`decision in this proceeding, which would be due in September 2021. This
`factor, therefore, favors the exercise of discretionary denial.
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`C. Fintiv Factor 3: Investment by the Court and the Parties in
`the Underlying Litigation
`Petitioner does not address factor 3 in its supplemental briefing, but
`instead argues that its Petition was not purposefully delayed. See Pet. Reply
`2–3. Thus, Petitioner notably does not dispute Patent Owner’s contention
`that significant time and resources have already been used by the district
`court and the parties in preparation for the upcoming December trial. PO
`Sur-reply 3; see Prelim. Resp. 13–14.
`Regardless of Petitioner’s diligence to file the Petition, it appears
`undisputed that the court and the parties have invested significant work
`related to invalidity in preparation for trial. Because some of this invested
`effort, including claim construction and expert discovery, likely has
`relevance to issues that would arise in this proceeding, this factor favors the
`exercise of discretionary denial in this case to prevent duplication of work
`on similar issues by the Board and the district court, and by the parties in
`multiple forums.
`
`D. Fintiv Factor 4: Overlap Between Issues Raised in the
`Petition and Underlying Litigation
`Petitioner contends “the subject matter that the Board will consider
`does not overlap with the [underlying] litigation.” Pet. Reply 3. Petitioner
`notes that the Petition challenges claims 1, 3–6, 10, and 11, whereas only
`claims 5 and 6 are at issue in the underlying litigation, and argues that
`claim 1 has a materially different scope than those in the underlying
`litigation. Id.
`Petitioner asserts also that the Petition presents the unique issue of
`whether “Juen disclose[s] mixing and culling.” Id. In particular, for the
`element “signal processing unit generates the image signals by using pixel
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`Patent 8,339,493 B2
`lines that have been mixed or culled from the N number of vertically
`arranged pixel lines” of claim 5, Petitioner contends that it only relies on
`Juen to disclose this limitation in the Petition, whereas only Sony is relied
`upon to disclose this limitation in the litigation. Id. at 3–4. Petitioner argues
`that although Casio and Sony disclose similar technology they are still “two
`different cameras from two different manufactures” that “invalidate [the
`challenged claim] limitations in different ways, with different teachings, and
`different motivations to combine.” Id. at 4. As support, Petitioner points out
`that in these proceedings it is “limited to a user manual” for Casio and, for
`Sony in the litigation, Petitioner is able to present “the Sony device itself and
`a supporting body of evidence outlining the operation of that device that
`includes the printed manual, a service manual, advertisements, microscopic
`images of the sensors, tear down testing, Sony’s employees, and other
`evidence that is unavailable in the IPR.” Id.
`Patent Owner contends that claims 1, 3–6, 10, and 11 were asserted
`against Petitioner in the underlying litigation at the time the Petition was
`filed and, thus, the “proper time at which to evaluate facts with respect to
`Fintiv Factor 4 is the time the Petition is filed.” PO Sur-reply 5.
`Nevertheless, Patent Owner argues that Petitioner’s suggestion that the
`scope of claim 1 is materially different than claim 5 is disingenuous because
`Petitioner’s invalidity contentions regarding claim 5 “points back to its
`[c]laim 1 analysis for every limitation of [c]laim 5.” Id. (citing Ex. 2009,
`153–154; Ex. 2010, 116–119). Moreover, Patent Owner argues that the
`Petition itself undermines Petitioner’s suggestion claim 1 is “materially
`different” than claim 5 because the analysis presented for claim 5 likewise
`consists largely of referencing the analysis presented for claim 1. Id. (citing
`Pet. 57–59).
`
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`Patent 8,339,493 B2
`
`Patent Owner disputes Petitioner’s contention that Juen is only used in
`this proceeding to disclose the mixing and culling limitation. Id. at 5–6.
`Patent Owner contends the opposite is true because Petitioner uses Juen the
`same way in the underlying litigation to show the mixing and culling
`limitation for video recording and monitoring. Id. at 6 (citing Ex. 1058,
`104–105, 107)2. Patent Owner argues additionally that Petitioner’s “effort to
`distinguish the Casio and Sony references fares no better” because Petitioner
`“has not pointed out a single difference between the Sony and Casio devices
`(or the manuals) related to purported application to the challenged claims.”
`Id. at 6–9. Lastly, Patent Owner notes that Petitioner “ignores that it uses
`Misawa both in the Petition and the [underlying] litigation for the image-
`instability correction features of Claim 6.” Id. at 6 (citing Pet. 74–78;
`Ex. 1058, 82–88).
`After considering the parties’ arguments and the record before us, we
`determine that substantial overlap exists between the issues raised in the
`Petition and the underlying litigation.
`First, regarding the difference between the challenged claims in this
`proceeding (i.e., claims 1, 3–6, 10, 11) and those claims that the parties have
`elected to pursue during the upcoming trial (i.e., claims 5, 6), Petitioner only
`suggests claim 1 “has a materially different scope” than the ones in this
`proceeding (Pet. 3), but Patent Owner correctly notes that this contention is
`undermined by the fact that Petitioner cross-references its unpatentability
`
`
`2 For Exhibit 1058, Patent Owner appears to cite to the page number of the
`original document rather than the exhibit page number added by Petitioner
`(i.e., the page number added at the lower right corner). Our subsequent
`reference to Exhibit 1058 refers to the added exhibit page number.
`
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`analysis presented for claim 1 extensively in the Petition to also show the
`unpatentability of claim 5. See Pet. 57–59. Similarly, Petitioner’s invalidity
`contentions in the underlying litigation likewise rely exclusively on the
`analysis presented for claim 1 to support the contentions for claim 5. See
`Ex. 2009, 153–154; Ex. 2010, 116–119. Furthermore, we note that both
`parties agree that the ’493 patent claims priority to January 11, 2000, which
`means that the ’493 patent has expired3 and that the unelected claims can no
`longer be asserted against future products of the Petitioner (or anyone else).
`See 35 U.S.C. § 154(a)(2). Thus, although the challenged claims asserted in
`this proceeding are not identical to those that the parties have elected to
`pursue at trial in the underlying litigation, we do not find this difference to
`be meaningful in this case.
`Second, Petitioner’s assertion that the issue of whether Juen discloses
`mixing and culling is unique to this proceeding lacks merit. An expert
`report provided by Petitioner in the underlying litigation indicates that
`Petitioner intends to offer testimony that Juen discloses mixing and culling
`to support its invalidity contentions. See Ex. 1058, 107–108, 110–111. We
`have considered the expert’s analysis and evidence offered in the report for
`the underlying litigation and find it to be substantively similar to the analysis
`and evidence being offered in this proceeding on this issue. Therefore,
`contrary to Petitioner’s assertion that Juen’s disclosure of mixing and culling
`presents unique subject matter for the Board to consider in this proceeding,
`we find this subject matter to be exemplary of the kind of issues that “would
`
`
`3 Additionally, a terminal disclaimer was filed disclaiming the terminal part
`of the statutory term granted to the ’493 patent that may extend beyond the
`expiration date of prior Patent No. 6,765,616. See Ex. 1002, 79.
`
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`needlessly duplicate” the district court action and “unnecessarily waste the
`Board’s resources.” NHK, Paper 8 at 20.
`Third, although Sony and Casio are two different cameras from two
`different manufactures, we do not find any relevant difference in their
`structures and operations that are relied upon to show the unpatentability of
`the challenged claims. For example, for both Sony and Casio, Petitioner
`alleges each discloses: (1) a charge-coupled device (“CCD”) that can
`produce signals that are used to create an image size of 1280 x 960 pixels,
`which is relied upon to show the recited “image sensing device” (Pet. 22, 24;
`Ex. 1058, 59); (2) the ability to convert or encode images to JPEG format,
`which is relied upon to show the recited “signal processing unit” (Pet. 28;
`Ex. 1058, 67); (3) a LCD screen, which is relied upon to show the recited
`“display unit” (Pet. 32; Ex. 1058, 67–68); (4) the ability to use the monitor
`as a “viewfinder” to display images prior to recording, which is relied upon
`to show the recited “monitoring in a static image mode” (Pet. 34–37;
`Ex. 1058, 77–78); (5) the ability to display on the monitor an image that has
`a resolution lower than the image subsequently recorded, which is relied
`upon to show the recited mixing or culling at a first interval (Pet. 37–40, 43–
`44; Ex. 1058, 77–80); and (6) the ability to record movies in 320 x 240 pixel
`AVI format, which is relied upon to show the recited mixing or culling at a
`second interval (Pet. 44–47; Ex. 1058, 81–84). While Sony and Casio may
`disclose different cameras from different manufactures, the record before us
`shows that Petitioner is relying on structural and operational components
`that both devices share. In other words, the relevant structures and
`operations in Sony and Casio that Petitioner relies on in the underlying
`litigation and in this proceeding to show either invalidity or unpatentability
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`are substantially the same despite being incorporated into two different
`devices.
`Consistent with our understanding that Sony and Casio are
`substantially the same, we note that the district court in the underlying
`litigation likewise found “the Casio Camera seems cumulative to the already
`disclosed references” and the Sony Camera had already been disclosed at the
`time of that ruling. See Ex. 2006, 6; Ex. 2003, 36–38. Petitioner’s
`statements to the contrary that Sony and Casio invalidate the challenged
`claims in different ways is notably conclusory without any basis provided to
`substantiate the position. See Pet. Reply 4.
`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. As discussed, there is
`substantial overlap between the grounds asserted in the underlying litigation
`and those asserted in the Petition, so that institution of an inter partes review
`likely will result in duplicative efforts by the Board and the trial court as to
`how the references teach limitations of the challenged claims. Further,
`accepting Petitioner’s representation that it has substantially more evidence
`regarding Sony’s structure and operation in the underlying litigation than it
`has of Casio’s structure and operation in this proceeding, we find that
`efficiency and fairness tips toward giving way to the underlying litigation
`that is set to begin trial in less than three months. For these reasons, we
`determine that this factor on balance favors the exercise of discretionary
`denial.
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`E. Fintiv Factor 5: Whether Petitioner is the Defendant in the
`Underlying Litigation
`It is undisputable that Petitioner here is the defendant in the
`underlying litigation. See Ex. 1010. Because the trial court may reach the
`overlapping issues before the Board would in a final written decision, this
`factor favors the exercise of discretionary denial in this case. See Apple Inc.
`v. Fintiv, Inc., IPR2020-00019, Paper 15, 15 (PTAB May 13, 2020)
`(informative, designated July 13, 2020) (determining factor 5 weighs in
`favor of discretionary denial when the parallel proceeding involves the same
`parties and the trial court may reach overlapping issues before the Board
`would in a final written decision).
`
`F. Fintiv Factor 6: Other Considerations
`Under the sixth Fintiv factor, which takes into account any other
`relevant circumstances, Patent Owner argues that Petitioner unreasonably
`delayed in filing the Petition. Prelim. Resp. 13–22. Petitioner explains that
`it needed time to locate relevant prior art and prepare petitions for inter
`partes review. Pet. Reply 2–3. Having considered the particular factual
`circumstances of this case, we do not consider Petitioner’s filing untimely.
`Petitioner also presents extensive policy arguments against the
`Board’s application of Fintiv and NHK in determining whether to exercise
`discretion to deny institution under 35 U.S.C. § 314(a). Pet. Reply 8–11.
`We need not address these arguments, as the Under Secretary of Commerce
`for Intellectual Property and Director of the U.S. Patent and Trademark
`Office has designated Fintiv and NHK as precedential decisions of the
`Board.
`As noted in Fintiv, a balanced assessment of factors may include
`consideration of the merits. Fintiv, Paper 11 at 14–15. Although we do not
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`undertake here a full analysis of the merits, our initial inspection of the
`record and the parties’ arguments suggests a potential deficiency in
`Petitioner’s evidence supporting its contention that Casio and Juen disclose
`using different intervals when mixing or culling signal charges accumulated
`in the vertically arranged pixel lines based on whether the electric camera is
`monitoring in a static image mode or recording in a moving video mode.
`See Pet. 34–47; Prelim. Resp. 61–63. In a balanced assessment of the
`relevant evidence of record, and in view of the possible weakness in
`Petitioner’s showing on the present record, this factor is neutral or weighs
`slightly in favor of discretionary denial.
`
`G. Conclusion
`Based on the particular circumstances of this case, we determine that
`instituting an inter partes review would be an inefficient use of Board
`resources. As discussed above, the trial in the underlying litigation is
`currently scheduled to begin in less than three months and may conclude
`several months before we would reach a final decision in this proceeding.
`The district court and the parties have expended effort in preparing for the
`upcoming trial that will address issues that substantially overlap with those
`raised in the Petition. Further, based on our preliminary assessment of the
`merits, we have identified a potential deficiency in Petitioner’s evidence
`regarding the use of different intervals when mixing or culling signal
`charges accumulated in the vertically arranged pixel lines based on whether
`the electric camera is monitoring in a static image mode or recording in a
`moving video mode. All of the Fintiv factors discussed above either weigh
`in favor of exercising discretion to deny institution or are neutral. On
`balance, after a holistic consideration of the relevant facts, we conclude that
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`Patent 8,339,493 B2
`efficiency and integrity of the system are best served by denying institution.
`Thus, we exercise our discretion under § 314(a) to deny institution of inter
`partes review.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that the Petition is denied; and
`FURTHER ORDERED that no inter partes review is instituted.
`
`
`
`
`17
`
`
`
`IPR2020-00597
`Patent 8,339,493 B2
`PETITIONER:
`
`Adam P. Seitz
`Paul R. Hart
`Jennifer C. Bailey
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`jennifer.bailey@eriseip.com
`
`
`PATENT OWNER:
`
`Robert G. Pluta
`Amanda S. Bonner
`James A. Fussell
`Bryan Nese
`Saqib Siddiqui
`MAYER BROWN LLP
`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
`jfussell@mayerbrown.com
`bnese@mayerbrown.com
`ssiddiqui@mayerbrown.com
`
`18
`
`
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