Filed: May 26, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`
`PETITIONER,
`
`V.
`
`BELL NORTHERN RESEARCH, LLC,
`PATENT OWNER.
`___________________
`Case No. IPR2020-00613
`U.S. Patent No. 8,416,862
`___________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 35 U.S.C. § 313 AND 37 C.F.R. § 42.107
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`I. 
`II. 
`
`INTRODUCTION ........................................................................................... 1 
`OVERVIEW OF THE ’862 PATENT ............................................................ 2 
`A.  Development of the Claimed Inventions ............................................... 2 
`B. 
`Description of the ’862 Patent’s Inventions .......................................... 3 
`C. 
`Challenged Claims of the ’862 Patent ................................................... 8 
`III.  LEVEL OF ORDINARY SKILL .................................................................. 10 
`IV.  CLAIM CONSTRUCTION .......................................................................... 10 
`A. 
`transmitter beamforming information ................................................. 10 
`STANDARD FOR GRANTING INTER PARTES REVIEW ..................... 12 
`V. 
`VI.  THE FINTIV FACTORS SUPPORT DISCRETIONARY DENIAL
`UNDER § 314(A). ......................................................................................... 13 
`A. 
`Factor 1: whether the court granted a stay or evidence exists
`that one may be granted if a proceeding is instituted .......................... 15 
`Factor 2: proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision ..................... 17 
`Factor 3: investment in the parallel proceeding by the court and
`the parties ............................................................................................ 18 
`Factor 4: overlap between issues raised in the petition and in the
`parallel proceeding .............................................................................. 22 
`Factor 5: whether the petitioner and the defendant in the parallel
`proceeding are the same party ............................................................. 23 
`Factor 6: other circumstances that impact the Board’s exercise
`of discretion, including the merits ....................................................... 24 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`
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`i
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`

`

`B. 
`
`2. 
`
`3. 
`
`VII.  PETITIONER HAS FAILED TO SHOW A REASONABLE
`LIKELIHOOD OF SUCCESS FOR EACH CHALLENGED CLAIM ....... 26 
`A.  Ground 1: Claims 9, 11, 12 (Maltsev, Haykin, and Sadrabadi) ......... 28 
`1. 
`The Maltsev-Haykin-Sadrabadi Combination Fails to
`Disclose the Claimed “Estimated Transmitter
`Beamforming Unitary Matrix (V)” ........................................... 28 
`The Maltsev-Haykin-Sadrabadi Combination Fails to
`Disclose “transmitter beamforming information” .................... 31 
`Ground 2: Claim 10 (Maltsev, Haykin, Sadrabadi and Yang) ............ 34 
`1. 
`Standard for Analogous Art ...................................................... 36 
`2. 
`Yang Does Not Qualify as Analogous Art Under the
`“Same Field of Endeavor” Test. ............................................... 38 
`Yang Does Not Qualify as Analogous Art Under the
`“Reasonably Pertinent to the Particular Problem with
`Which the Inventor is Involved” Test ....................................... 40 
`VIII.  THE PETITON DOES NOT ESTABLISH THAT HAYKIN AND
`SADRABADI ARE PRIOR ART ................................................................... 42 
`A. 
`Petitioner Has Not Met Its Burden to Show Haykin Was
`Publicly Available to Qualify as Prior Art .......................................... 43 
`1. 
`The Board Should Refuse to Consider Petitioner’s
`Improperly-Incorporated Arguments Regarding Haykin.......... 43 
`Petitioner Cannot Meet its Burden that Haykin Qualifies
`As Printed Publication From Contradictory and
`Speculative Information ............................................................ 45 
`Petitioner Has Not Shown a Reasonable Likelihood that
`Sadrabadi was Publicly Accessible .................................................... 49 
`IX.  CONCLUSION .............................................................................................. 51 
`
`2. 
`
`B. 
`
`
`
`
`
`
`
`
`ii
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`

`

`TABLE OF AUTHORITIES
`
`Cases 
`
`Apple Inc. v. Contentguard Holdings, LLC,
`IPR2015-00448, Paper 9 (PTAB Jul. 10, 2015) ........................................... 44, 50
`
`Apple Inc. v. Fintiv, Inc.,
`IPR2020–00019, Paper 11 (PTAB Mar. 20, 2020) ...................................... passim
`Apple Inc. v. Fintiv, Inc.,
`IPR2020–00019, Paper 15 (PTAB May 13, 2020) ...................................... passim
`Apple Inc. v. Luxembourg S.A.,
`IPR2017-02041, Paper 10 (PTAB Mar. 8, 2018) ......................................... 27, 31
`Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331 (Fed. Cir. 2016) ............................................................................ 42
`Cisco Systems, Inc. v. Ramot At Tel Aviv University Ltd.,
`IPR2020-00122, Paper 15 (PTAB May 15, 2020) ....................................... passim
`
`Huawei Device Co., Ltd. v. Maxell, Ltd.,
`IPR2018-00246, Paper 8 (PTAB June 29, 2019) .......................................... 27, 30
`Hulu, LLC v. Sound View Innovations, LLC,
`IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) .............................................. 42
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) ............................................................... 36, 37, 41
`
`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992) ................................................................. 36, 37, 41
`In re Gurley,
`27 F.3d 551 (Fed. Cir. 1994) ................................................................................ 33
`In re Hall, 781 F.2d 897 (Fed. Cir. 1986) ................................................................ 42
`In re Icon Health and Fitness, Inc.,
`496 F.3d 1374 (Fed. Cir. 2007) ............................................................................ 37
`
`
`
`iii
`
`

`

`In re Klein,
`647 F.3d 1343 (Fed. Cir. 2011) ..................................................................... 36, 38
`In re Oetiker,
`977 F.2d 1443 (Fed. Cir. 1992) ............................................................................ 38
`
`Innovention Toys, LLC v. MGA Entm’t, Inc.,
`637 F.3d 1314 (Fed. Cir. 2011) ..................................................................... 36, 37
`Johns Manville Corp. v. Knauf Insulation, Inc.,
`IPR2018-00827, Paper 9 (PTAB Oct. 16, 2018) ................................................. 36
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 26, 38
`Kyocera Wireless Corp. v. Int’l Trade Comm’n,
`545 F.3d 1340 (Fed. Cir. 2008) ............................................................................ 42
`
`Metalcraft of Mayville, Inc. v. The Toro Co.,
`848 F.3d 1358 (Fed. Cir. 2017) ............................................................................ 27
`NHK Spring Co., Ltd. v. Intri-Plex Technologies, Inc.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) ......................................... 14, 22
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ............................................................................ 12
`Samsung Electronics America, Inc. v. Uniloc 2017 LLC,
`IPR2019-01219, Paper 7 (PTAB Jan. 9, 2020) .................................................... 21
`Schott Gemtron Corp., v. SSW Holding Co., Inc.,
`IPR2014-00367, Paper 62 (PTAB May 26, 2015) ............................................... 41
`Uniloc 2017 LLC v. Samsung Elecs. Am., Inc.,
`No. 219CV00259JRGRSP, 2020 WL 1433960 (E.D. Tex. Mar. 24,
`2020)..................................................................................................................... 16
`Statutes 
`35 U.S.C. § 103(a) ................................................................................................... 26
`35 U.S.C. § 282(b) ................................................................................................... 10
`35 U.S.C. § 314(a) .......................................................................................... 1, 2, 13
`
`
`
`iv
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`I.
`
`INTRODUCTION
`Patent Owner submits this Preliminary Response, which is timely filed on
`
`May 26, 2020. The Board should deny institution of the Petition for at least three
`
`reasons.
`
`First, the Board should exercise its discretion under 35 U.S.C. § 314(a)
`
`because, on balance, the factors set forth in Fintiv I support denial of institution.
`
`The combination of the advanced stage of litigation, short time until trial, and
`
`overlap of asserted prior art weigh heavily toward denying institution under §
`
`314(a) and the remaining factors support the same conclusion.
`
`Second, Petitioner has asserted Grounds that require the Board to conclude
`
`that the ’862 Patent includes a typographical error that, instead, should be read to
`
`be the same as the disclosure in Petitioner’s lead prior art reference. Despite this
`
`bold assertion, Petitioner made no attempt to explain its assertion of a
`
`typographical error. Petitioner seeks to combine references that, at best, do not
`
`disclose a key limitation. The bedrock of Petitioner’s arguments is conclusory and
`
`unsupported (except by similarly conclusory expert testimony) and fails to
`
`establish a rational underpinning for the asserted combinations, or explain how the
`
`references should be combined. Petitioner’s hindsight-driven stitching together of
`
`disparate references is insufficient under well-established Federal Circuit law.
`
`
`
`1
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`

`

`Third, Petitioner has failed to show a reasonable likelihood that the Haykin
`
`and Sadrabadi references, both necessary for all of Petitioner’s Grounds, were
`
`publicly available to qualify as prior art. Instead, Petitioner relies on improper
`
`incorporation by reference and conclusory statements that the Board has previously
`
`deemed insufficient as a matter of law to establish public availability at the
`
`institution stage.
`
`These shortcomings are fatal to the Petition. Pursuant to 35 U.S.C. § 314(a),
`
`Patent Owner respectfully requests that the Board deny institution of a trial on all
`
`challenged claims (i.e., claims 9, 10, 11, and 12) of the ’862 Patent.
`
`II. OVERVIEW OF THE ’862 PATENT
`A. Development of the Claimed Inventions
`Inventors Carlos Aldana and Joonsuk Kim developed the inventions
`
`described in the ’862 Patent while working at Broadcom Corporation, a leading
`
`technology company that marketed products for the wireless and broadband
`
`communication industry. (EX2003, EX2004.) In the time leading up to the ’862
`
`Patent and its parent applications, Broadcom was heavily involved in industry
`
`organizations relating to wireless networks, including the IEEE. (EX2005,
`
`EX2006.) Inventors Aldana and Kim both participated in those organizations, and
`
`interfaced and collaborated with other leading technology companies. (EX2003,
`
`EX2004.) Indeed, Inventor Kim chaired or vice-chaired various groups developing
`
`
`
`2
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`

`

`IEEE 802.11 standards, and Inventor Kim was a contributing member with respect
`
`to the IEEE 802.11n standard, including, but not limited with respect to certain
`
`beamforming compression technologies. (EX2003, EX2004.)
`
`B. Description of the ’862 Patent’s Inventions
`The ’862 Patent is entitled “Efficient Feedback of Channel Information in a
`
`Closed Loop Beamforming Wireless Communication System” and claims priority
`
`to an application filed on April 21, 2005. It is directed to transmitting beamforming
`
`feedback information back to a receiver in efficient way. (EX2001, ¶40.)
`
`Beamforming improves wireless communications, and the ’862 Patent describes a
`
`“technique to create a focused antenna beam by shifting a signal in time or in phase
`
`to provide gain of the signal in the desired direction and attenuate the signal in
`
`other directions.” (EX1001, 2:66–3:4; EX2001, ¶41.)
`
`Figure 3 depicts a wireless communication device as claimed:
`
`
`
`3
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`

`

`
`
`(EX1001, Fig. 3.) The ’862 Patent is taught in context of an ODFM modulation
`
`scheme for digital baseband signals. (EX2001, ¶43–45; EX1001, 8:21–67.) This
`
`can be seen in (1) Figure 3 (as well as other figures), (2) the disclosures of the
`
`specification regarding a plurality of symbol streams from the RF receivers to the
`
`baseband processing modules, (3) the disclosed modes of modulation (BPSK,
`
`QPSK, CCK, 16 QAM and/or 64 QAM), (4) the multiple tone or channel of the
`
`frequency (here divided up at 20 or 22 MHz, the specific reference to 802.11
`
`standard, and (5) specific references to OFDM throughout the specification.
`
`(EX2001, ¶43.)
`
`
`
`In digital systems, like that of the ’862 Patent, bit sequences can be
`
`converted into a sequence of symbols, representing a baseband signal. (EX2001,
`
`¶46) The symbols can then be modulated using differing techniques or “modes,”
`
`
`
`4
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`

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`ranging from BPSK (“Binary Phase Shifting Keying”) to QAM (“Quadrature
`
`Amplitude Modulation”). (EX2001, ¶46; EX1001, 8:34-37).
`
`
`
`To explain further, QAM for example, uses the concept of constellation
`
`mapping, whereby symbols (shown below as four bit-size words) are mapped on a
`
`polar coordinate plane as shown below:
`
`
`
`(EX2001, ¶47.) So, for example, if bits (say 0101) were to be passed, the
`
`constellation mapper would represent those bits by mapping in angle (radian) and
`
`amplitude and this converting the data into a condition ready for beamforming
`
`adjustment and conversion to symbols. (EX2001, ¶48.) Figure 4 of the ’862 Patent
`
`shows the constellation mapper (128, 130) within the transmit portion of the
`
`baseband processing module (100-TX):
`
`
`
`5
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`

`

`
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`(EX1001, Fig. 4, 9:31–48) (describing Fig. 4 and the identified components);
`
`(EX2001, ¶48.) After constellation mapping, the baseband signal is passed through
`
`the beamforming module before being converted from outbound data into
`
`outbound symbol streams through the IFFT modules. (EX1001, Fig. 4, 9:31–48;
`
`EX2001, ¶48.)
`
`In order for a transmitter to properly implement beamforming, it needs to
`
`know properties of the channel over which the wireless communication is
`
`conveyed. (EX1001, 3:14–17.) The transmitter derives that knowledge through
`
`feedback information sent from the receiver. (Id., 3:17–23.) A straight-forward
`
`approach to sending this feedback information is for the receiver to determine the
`
`channel response (H), and send the entire response as feedback information to the
`
`transmitter. (Id., 3:19–25.) But due to the size of that information, by the time the
`
`entire channel response (H) is fed back, the response of the channel is likely to
`
`change, diminishing the value of any feedback information. (Id. at 3:20–25.) Thus,
`
`it is important to find ways to reduce the size of the feedback. (EX2001, ¶49.)
`
`
`
`6
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`

`

`One way to reduce the feedback size is to decompose the channel using
`
`singular value decomposition (“SVD”) to send back only information related to a
`
`calculated value of the transmitter’s beamforming matrix (V). (EX1001, 3:26–30.)
`
`This requires computing (V) based on the matrix equation H=UDV* (where H
`
`represents the channel response, D is a diagonal matrix, and U is a receiver unitary
`
`matrix). (Id., 3:30–34.) Yet this approach still presents challenges for feedback in
`
`multiple-input-multiple-output wireless communications (“MIMO”), where the
`
`transmitter and receiver each include multiple paths, requiring 1728 bits per tone
`
`(or sub-channel) for a 2x2 MIMO OFDM wireless communication. (Id., 3:35–49.)
`
`Despite reducing the volume of feedback information as compared to
`
`sending the entire channel responses H, this solution still presents a significant
`
`amount of feedback data that does not maximize efficiency. (See id., 3:35–49;
`
`12:47–13:24; EX2001, ¶51.) This is because the resulting feedback requires four
`
`elements, which are all complex Cartesian coordinate values fitting the equation
`
`Vik=aik+j*bik (where aik and bik are values between [-1, 1]). (EX1001, 3:35–41.)
`
`It is in this context that the ’862 Patent identifies a need for further reducing
`
`beamforming feedback information for wireless communications to achieve more
`
`efficient communication between wireless devices. (Id. at 49–51.)
`
`To address this need, the ’862 Patent discloses and claims systems and
`
`methods that are directed to improved efficiencies in transmitting feedback of
`
`
`
`7
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`

`

`transmitter beamforming information, including through the use of polar
`
`coordinates. (Id. at 15:34–16:6.) For example, the ’862 Patent discloses Cartesian
`
`to polar conversion, which further reduces feedback information over the prior art.
`
`(See id.,12:54–64.)
`
`The ’862 Patent also discloses the use of Givens rotations to further reduce
`
`(through decomposition) the number of angles that must be fed back to the
`
`transmitter. (See id., 14:27–15:9.) These angles, which are quantized before being
`
`fed back as transmitter beamforming information, result in a drastic reduction in
`
`the amount of data that must be sent to the transmitter. (Id., 15:10–67.) By
`
`reducing the elements that must be sent back (through, e.g., Givens rotation) and
`
`quantization of those angles, the ’862 Patent elegantly solves problems associated
`
`with inefficient feedback in MIMO systems. (EX2001, ¶52.)
`
`C. Challenged Claims of the ’862 Patent
`Petitioner challenges claims 9–12 of the ’862 Patent. Independent claim 9
`
`states as follows:
`
`A wireless communication device comprising:
`a plurality of Radio Frequency (RF) components operable to receive an RF
`signal and to convert the RF signal to a baseband signal; and
`a baseband processing module operable to:
`receive a preamble sequence carried by the baseband signal;
`estimate a channel response based upon the preamble sequence;
`
`
`
`8
`
`

`

`determine an estimated transmitter beamforming unitary matrix (V) based
`upon the channel response and a receiver beamforming unitary matrix
`(U);
`decompose the estimated transmitter beamforming unitary matrix (V) to
`produce the transmitter beamforming information; and
`form a baseband signal employed by the plurality of RF components to
`wirelessly send the transmitter beamforming information to the
`transmitting wireless device.
`(EX1001, 17:15–35.)
`
`Dependent claim 10 recites as follows:
`
`The wireless communication device of claim 9, wherein in determining an
`estimated transmitter beamforming unitary matrix (V) based upon the channel
`response and a receiver beamforming unitary matrix (U), the baseband
`processing module is operable to:
`produce the estimated transmitter beamforming unitary matrix (V) in
`Cartesian coordinates; and
`convert the estimated transmitter beamforming unitary matrix (V) to polar
`coordinates.
`(EX1001, 17:36–44.)
`
`Dependent claim 11 further claims the following:
`
`The wireless communication device of claim 9, wherein the channel response
`(H), estimated transmitter beamforming unitary matrix (V), and the receiver
`beamforming unitary matrix (U) are related by the equation:
`H=UDV*
`Where, D is a diagonal matrix.
`(EX1001, 17:45–52.)
`
`Finally, dependent claim 12 recites the following:
`
`
`
`9
`
`

`

`The wireless communication device of claim 9, wherein in determining the
`estimated transmitter beamforming unitary matrix (V) based upon the channel
`response and the receiver beamforming unitary matrix (U), the baseband
`processing module performs Singular Value Decomposition (SVD)
`operations.
`(EX1001, 17:53–58.)
`
`III. LEVEL OF ORDINARY SKILL
`While Patent Owner disputes Petitioner’s POSA definition, Patent Owner
`
`does not believe that the differences need be addressed at this time because of the
`
`nature of the issues addressed herein. If institution is granted (which it should not),
`
`Patent Owner reserves the right to further address Petitioner’s improper POSA
`
`definition and its impact on the asserted Grounds.
`
`IV. CLAIM CONSTRUCTION
`The challenged claims of the ’862 Patent are to be construed “using the same
`
`claim construction standard that would be used to construe the claim in a civil
`
`action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (Nov. 13, 2018). The
`
`Petition does not seek construction of any terms of the ’862 Patent. (Pet. 8.)
`
`A.
`transmitter beamforming information
`The Board should interpret the term “transmitter beamforming information”
`
`in accordance with its plain and ordinary meaning to a POSA, which is a reduced
`
`set of angles or coefficients derived from the estimated transmitter beamforming
`
`unitary matrix V.
`
`The specification teaches:
`
`
`
`10
`
`

`

`With the estimated transmitter beam forming unitary matrix (V)
`determined, the receiving wireless device then decomposes the
`estimated transmitter beam forming unitary matrix (V) to produce the
`transmitter beam forming information (step 708).
`
`According to one embodiment of this operation, the decomposition
`operations of step 708 employ a Givens Rotation operation. The
`Givens Rotation relies upon the observation that, with the condition of
`V*V=VV=I, some of angles of the Givens Rotation are redundant.
`With a decomposed matrix form for the estimated transmitter beam
`forming matrix (V), the set of angles fed back to the transmitting
`wireless device are reduced.
`
`
`(EX1001, 13:58-14:3 (emphasis added).)
`
`Additionally, the specification describes reducing the size of the feedback by
`
`decomposing “the channel using [SVD] and send[ing] information relating only to
`
`a calculated value of the transmitter’s beamforming matrix (V) as the feedback
`
`information.” (Id. 3:26–30.) But, according to the specification, “[w]hile this
`
`approach reduces the size of feedback information, its size is still an issue for
`
`MIMO wireless communication.” Id. 3:30–35. “Therefore, a need exists for a
`
`method and apparatus for reducing beamforming feedback information for wireless
`
`communication,” which demonstrates that the beamforming feedback information
`
`must be less than the coefficients of the transmitter beamforming matrix (V), as a
`
`
`
`11
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`

`

`contrary reading would ignore the aim of the invention. (See id. 3:35–51; EX2001,
`
`¶35.)
`
`The specification further teaches one decomposition of the V matrix to
`
`reduce the set of coefficients or angles:
`
`As the reader will appreciate, the coefficients of the Givens Rotation
`and the phase matrix coefficients serve as the transmitter
`beamforming information that is sent from the receiving wireless
`communication device to the transmitting wireless communication
`device.
`(EX1001, 15:34–38.) See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir.
`
`2005) (The “specification is always highly relevant to the claim construction
`
`analysis. Usually, it is dispositive; it is the single best guide to the meaning of a
`
`disputed term.” The Givens rotation is one of the embodiments of the
`
`“decomposition” that reduces the set of coefficients or angles by taking advantage
`
`of redundant angles and therefore “[w]ith a decomposed matrix form for the
`
`estimated transmitter beam forming matrix (V), the set of angles fed back to the
`
`transmitting wireless device are reduced.” (EX1001, 13:58-14:3d. 12:54–67;
`
`EX2001, ¶¶36–39.)
`
`V.
`
`STANDARD FOR GRANTING INTER PARTES REVIEW
`A petition for inter partes review may only be granted when “the
`
`information presented in the petition . . . shows that there is a reasonable likelihood
`
`that the petitioner would prevail with respect to at least 1 of the claims challenged
`
`
`
`12
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`

`

`in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c). The burden of
`
`proof lies with the Petitioner to show that the statutory threshold is satisfied. See
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012).
`
`VI. THE FINTIV FACTORS SUPPORT DISCRETIONARY DENIAL
`UNDER § 314(A).
`Patent Owner filed suit against Petitioner on August 22, 2019 in the Eastern
`
`District of Texas (“EDTX Litigation”). (EX2007, 1.) Petitioner waited until
`
`February 20, 2020—nearly six months—to file two petitions, this petition and
`
`IPR2020–00611. Those petitions seek institution for only four claims (of which
`
`only one is independent), asserting a three-reference obviousness combination in
`
`each—where Maltsev, Haykin, and Yang are combined with Sadrabadi (here) or
`
`one of Roh or Lin (IPR2020–00611). Each of these references (along with more)
`
`are asserted in the EDTX Litigation. For reasons detailed below, the Board should
`
`exercise its discretion to deny institution on the Petition under § 314(a).
`
`The Board’s recent precedential order in Apple Inc. v. Fintiv, Inc., identifies
`
`six relevant factors in determining whether “efficiency, fairness, and the merits
`
`support the exercise of authority to deny institution in view of an earlier trial date
`
`in parallel proceedings.” Apple Inc. v. Fintiv, Inc., IPR2020–00019, Paper 11 at 5–
`
`6 (PTAB Mar. 20, 2020) (“Fintiv I”). Fintiv I also provided additional factors to
`
`consider when addressing efficiency considerations that the Board previously
`
`determined favored denying institution in the precedential NHK opinion. Id. at 2–3
`
`
`
`13
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`

`

`(citing NHK Spring Co., Ltd. v. Intri-Plex Technologies, Inc., IPR2018-00752,
`
`Paper 8 at 20 (PTAB Sept. 12, 2018))
`
`Here, trial in the EDTX Litigation is set before the statutory deadline for a
`
`final written decision: the final Pretrial Conference in the EDTX Litigation is
`
`scheduled for January 25, 2021 with jury selection and trial to commence on
`
`March 1, 2021 while the statutory deadline for a final written decision is around
`
`August 2021—roughly six months after trial in the EDTX Litigation. (EX2008,
`
`DCO.) Thus, Fintiv I guides the Board’s review of whether to exercise its
`
`discretion and deny institution under § 314(a). Fintiv I, IPR2020-00019, Paper 11
`
`at 5–6.
`
`The six factors the Board enumerated in Fintiv I are:
`
`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
`6. other circumstances that impact the Board’s exercise of discretion,
`including the merits.
`
`
`
`14
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`

`

`Id. at 6 (the “Fintiv Factors”). As shown below, these factors strongly favor
`
`denying institution of the Petition.
`
`A.
`
`Factor 1: whether the court granted a stay or evidence exists that
`one may be granted if a proceeding is instituted
`In Fintiv I, the Board indicated that if a district court had stayed the parallel
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`
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`litigation or if the district court denied a motion for stay without prejudice “and
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`indicated to the parties that it will consider a renewed motion or reconsider a
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`motion to stay if a PTAB trial is instituted,” then such guidance “if made of
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`record” weighs against exercising authority to deny institution under NHK.” Fintiv
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`I, IPR2020-00019, Paper 11 at 6–7. Where “neither party has requested a stay” and
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`“the court has not ruled on this issue” the Board declined “to infer, based on
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`actions taken in different cases with different facts, how the District Court would
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`rule should a stay be requested . . . .” See Apple Inc. v. Fintiv, Inc., IPR2020–
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`00019, Paper 15 at 12 (PTAB May 13, 2020) (“Fintiv II”) (applying the Fintiv
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`Factors after supplemental briefing and denying institution under § 314(a)). As a
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`result, the Board considered this factor neutral. Id. Likewise, in Cisco Systems, Inc.
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`v. Ramot At Tel Aviv University Ltd., the Board recently underscored its refusal to
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`speculate as to how a district court would rule on a renewed stay request after
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`denial without prejudice and therefore said this factor was neutral. See Cisco
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`Systems, Inc. v. Ramot At Tel Aviv University Ltd., IPR2020-00122, Paper 15 at 6–
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`7 (PTAB May 15, 2020).
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`15
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`
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`Here, Petitioner has not moved for a stay1 and the district court has offered
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`no guidance in the EDTX Litigation as to whether it would be willing to stay the
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`litigation pending the Board’s final resolution. Thus, Factor 1 is, at worst, neutral.2
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`See Fintiv II, IPR2020–00019, Paper 15 at 12; Cisco, IPR2020-00122, Paper 15 at
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`6–7.
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`1 On May 24, 2020, counsel for Petitioner in the EDTX Litigation informed Patent
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`Owner that it intends to seek a stay in the EDTX Litigation and anticipated filing it
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`on May 26, 2020—the same date as this preliminary response is due.
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`2 Further, if one were to speculate, this factor would actually favor denying
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`institution instead of being neutral. Recently, the Eastern District of Texas denied
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`Samsung’s motion to stay in another matter despite a pending appeal from a ruling
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`declaring one patent-in-suit ineligible under § 101, pending IPRs (which were
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`third-party IPRs that were instituted, and one pending Samsung IPR) that do not
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`involve all of the asserted claims of the asserted patents, and where trial is set for
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`August 17, 2020. See Uniloc 2017 LLC v. Samsung Elecs. Am., Inc., No.
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`219CV00259JRGRSP, 2020 WL 1433960, at *6 (E.D. Tex. Mar. 24, 2020).
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`16
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`B.
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`Factor 2: proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision
`As Fintiv I noted, “[i]f the court’s trial date is earlier than the projected
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`statutory deadline, the Board generally has weighed this fact in favor of exercising
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`authority to deny institution under NHK.” Fintiv I, IPR2020–00019, Paper 11 at 9.
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`Here, the district court trial is set to begin on March 1, 2021. (EX2008.)3
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`The projected statutory deadline for final written decision will be around August
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`2021—six months after trial. In Cisco, the Board characterized the same six month
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`gap between trial and subsequent statutory deadline as “substantially earlier” than
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`the projected statutory deadline and one that makes this factor “weigh[] in favor of
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`discretionary denial.” Cisco, IPR2020-00122, Paper 15 at 7–8 (emphasis added).
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`Cf. Fintiv II, IPR2020-00019 at 13 (weighing this factor “somewhat in favor of
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`discretionary denial” where the trial was scheduled to begin two months before
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`projected statutory deadline).
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`In Fintiv II, the Board continued its practice of refusing to base its decisions
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`on speculation, this time with respect to whether a trial date would be continued or
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`impacted by the current COVID-19 pandemic. Fintiv II, IPR2020-00019, Paper 15
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`3 Further, the final Pretrial Conference is scheduled for January 25, 2021, and is
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`highly relevant to other factors concerning the parties’ investment in the district
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`court litigation and progress is based on the January 25, 2021 date.
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`17
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`at 12–13. There, the Board would not guess at whether an agreed-upon trial date
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`would be later postponed due to the COVID-19 pandemic. See id. Instead, the
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`Board made clear that it “generally take[s] courts’ trial schedule at face value
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`absent some strong evidence to the contrary.” Id.
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`Here, there is a six-month gap between trial and projected statutory deadline
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`and no evidence (let alone strong evidence) that would suggest to the Board to
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`doubt the existing trial schedule. Thus, Factor 2 weighs in favor of discretionary
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`denial.
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`C.
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`Factor 3: investment in the parallel proceeding by the court and
`the parties
`The Board considers “the amount and type of work already completed in the
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`parallel litigation by the court and the parties at the time of institution decision.”
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`See Fintiv I, IPR2020-00019, Paper 11 at 9. The Board also made clear that this
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`“investment factor is related to the trial date factor, in that more work completed
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`by the parties and court in the parallel proceeding tends to support the arguments
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`that the parallel proceeding is more advanced, a stay may be less likely, and
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`instituting would lead to duplicative costs.” Id. at 10. And the Board indicated that
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`while it takes a holistic view in each case, instances where the “court’s trial date is
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`at or around the same time as the projected statutory deadline . . . the decision
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`whether to institute will likely implicate other [Fintiv] factors . . . such as the
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`resources that have been invested in the parallel proceeding.” Fintiv