UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC, SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC., LG ELECTRONICS INC., and LG
`ELECTRONICS U.S.A., INC.,
`Petitioners,
`
`v.
`
`PARUS HOLDINGS, INC.,
`Patent Owner.
`
`Case No. IPR2020-00846
`U.S. Patent No. 7,076,431
`
`PATENT OWNER’S REQUEST FOR REHEARING
`OF INSTITUTION DECISION
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC, SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC., LG ELECTRONICS INC., and LG
`ELECTRONICS U.S.A., INC.,
`Petitioners,
`
`v.
`
`PARUS HOLDINGS, INC.,
`Patent Owner.
`
`Case No. IPR2020-00846
`U.S. Patent No. 7,076,431
`
`PATENT OWNER’S REQUEST FOR REHEARING
`OF INSTITUTION DECISION
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`
`I.
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`BASIS FOR REHEARING ............................................................................. 2
`A.
`Legal Standards ..................................................................................... 2
`B.
`New Facts Alter The Board’s Fintiv Analysis ...................................... 3
`1.
`Fintiv Factors 2 and 5: There Is No Longer Any
`Uncertainty That The Trial Will Proceed Before The
`Final Written Decision ................................................................ 3
`III. CONCLUSION ................................................................................................ 4
`
`i
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`PNY Techs. Inc. v. Phison Elecs. Corp.,
`IPR2013-00472, Paper No. 16 (P.T.A.B. Apr. 23, 2014) .................................... 2
`
`Sand Revolution II, LLC. v. Continential Intermodal Group –
`Trucking LLC,
`IPR2019-01393, Paper No. 24 (P.T.A.B. June 16, 2020) .................................... 2
`Other Authorities
`37 C.F.R. § 42.71(c) ................................................................................................... 2
`37 C.F.R. § 42.71(d) .............................................................................................. 1, 2
`
`ii
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`
`TABLE OF EXHIBITS
`Description
`Order Denying Motion to Stay Pending Inter Partes Review, C.A.
`No. 6-18-cv-00201
`Exhibit A9 Kovatch Claim Chart 7076431
`Exhibit C Obviousness Claim Chart 7076431 (Corrected)
`Reserved
`Reserved
`Standing Order Re Scheduled Hearings in Civil Cases, 19-cv-00432
`Claim Construction Order, 1-20-cv-00351
`Claim Construction Order, 6-19-cv-00532
`Claim Construction Order, 6-18-cv-00308
`U.S. Patent No. 6,157,705 (Perrone)
`Defendants’ Corrected Invalidity Contentions, 6-19-cv-00432
`Excerpt of Case Docket Sheet, 6-19-cv-00278-ADA
`Excerpt of Case Docket Sheet, 6-19-cv-00514-ADA
`Excerpt of Case Docket Sheet, 6-19-cv-00515-ADA
`Markman Hearing Transcript, 6-19-cv-00432-ADA
`Claim Construction Order, 6-19-cv-00432-ADA
`Order Consolidating Cases, 6-19-cv-00432-ADA
`10/13/2020 Email from the Court
`Excerpt of Case Docket Sheet, 6:18-cv-00308-ADA
`
`Exhibit
`2001
`
`2002
`2003
`2004
`2005
`2006
`2007
`2008
`2009
`2010
`2011
`2012
`2013
`2014
`2015
`2016
`2017
`2018
`2019
`
`iii
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`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`
`I.
`
`INTRODUCTION
`Patent Owner Parus Holdings, Inc. (“Parus”) respectfully submits this Request
`
`for Rehearing of Institution Decision pursuant to 37 C.F.R. § 42.71(d). In particular,
`
`Parus respectfully requests that the Board reconsider its October 21, 2020 decision
`
`to institute inter partes review (Paper 9, hereafter “Decision”) of claims 1, 2, 4–7, 9,
`
`10, 13, and 14 of U.S. Patent No. 7,076,431 B2 (“the ’431 Patent”), and instead deny
`
`inter partes review on those claims. The basis for this request is new facts that have
`
`arisen since the Board’s Decision, which decidedly tilt the Fintiv factors in favor of
`
`denying institution in light of the earlier trial in the Parallel Proceeding in the District
`
`Court for Western District of Texas.
`
`In particular, the underlying assumptions on which the Board based its Fintiv
`
`analysis have now changed. For example, where the Board found factors 2 and 5
`
`neutral because it was unclear whether the trial in the Parallel Proceeding would go
`
`forward before the final written decision deadline, that is no longer true. For
`
`example, the parties (including the Petitioner) have confirmed to the District Court
`
`that they are available and ready to go forward with the trial in July 2021 as proposed
`
`by the Court, which is three months before the final written decision deadline.
`
`Moreover, since the Decision, jury trials in the Western District of Texas are again
`
`moving forward. More specifically, Judge Albright, the presiding Judge in the
`
`Parallel Proceeding in the Western District, has been hearing a jury trial in patent
`
`1
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`Case No. IPR2020-00846
`Patent No. 7,076,431
`cases. There is thus no longer any reason to doubt that the District Court trial will
`
`go forward in July 2021 and precede any final written decision here.
`
`Because of these new and emerging facts, factors 2 and 5 now weigh heavily
`
`against institution. Therefore, in light of these new facts, the Board would have
`
`found that it should exercise its discretion to deny the institution.
`
`II.
`
`BASIS FOR REHEARING
`A.
`Legal Standards
`A party may request rehearing of a decision by the Board instituting trial
`
`pursuant to 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel
`
`will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “An abuse
`
`of discretion may be determined if a decision is based on an erroneous interpretation
`
`of law, if a factual finding is not supported by substantial evidence, or if the decision
`
`represents an unreasonable judgment in weighing relevant factors.” PNY Techs. Inc.
`
`v. Phison Elecs. Corp., IPR2013-00472, Paper No. 16 at 2 (P.T.A.B. Apr. 23, 2014)
`
`(citing Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005).
`
`New or evolving facts have been the basis for changing a decision to institute. See
`
`Sand Revolution II, LLC v. Continental Intermodal Group-Trucking LLC, IPR2019-
`
`01393, Paper 24 at 2-3.
`
`2
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`
`New Facts Alter The Board’s Fintiv Analysis
`B.
`The Board’s Decision is based on facts that have changed since the briefing
`
`in this matter. Id. The parties have agreed, and the District Court has stated, that
`
`the trial will go forward in July 2021, two months prior to the final written decision
`
`deadline, and there is no reason to believe that this trial will be delayed because the
`
`Western District of Texas and Judge Albright are moving forward with jury trial in
`
`patent cases. Further, there is now an opposed motion to stay before Judge Albright,
`
`and he has never granted an opposed motion to stay.
`
`1.
`
`Fintiv Factors 2 and 5: There Is No Longer Any
`Uncertainty That The Trial Will Proceed Before The Final
`Written Decision
`The Board previously found that factors 2 and 5 did not weigh against
`
`institution because there was uncertainty regarding whether the trial in the Parallel
`
`Proceeding would precede a final written decision in the requested IPR. Recent facts
`
`eliminate any such uncertainty, and factors 2 and 5 thus now weigh heavily against
`
`institution.
`
`Namely, there is no doubt that the trial will proceed in July 2021, prior to the
`
`FWD deadline. At the time of the briefing for the Decision, as referenced in the
`
`Decision, the District Court had only set the “Predicted Jury Selection / Trial” for
`
`July 12-30 and an order was in place continuing all jury trials. (Decision at 11-12;
`
`see Exhs 1035, 1036). Since that time, however, Judge Albright has squarely
`
`3
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`
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`Case No. IPR2020-00846
`Patent No. 7,076,431
`addressed the issue of trial timing during a Markman hearing held on August 21,
`
`2020. See Ex. 2015, Markman Hearing Transcript at 52-53, Docket Index 165, Parus
`
`Holdings, Inc. v. Apple, Inc., et. al, CA No. W-19-CV-432 (W.D.TX. July 22, 2019).
`
`At that Markman hearing, Judge Albright stated that the case would go forward
`
`during the latter half of July 2021 and requested that the parties provide their
`
`availability. Id.
`
`Now, after the Decision, both Parus and Petitioner Google have both told
`
`the Court they are available July 12 – 23, and the Court has informed the parties that
`
`they may use July 12, 2021 as the scheduled trial date. See Ex. 2018, 10/13/2020
`
`Email from the Court. There is thus no reason to doubt that the district court trial
`
`will go forward in July 2021.
`
`This is particularly true because jury trials are now going forward in the
`
`Western District of Texas. In fact, Judge Albright has been hearing patent cases.
`
`See Ex. 2019.
`
`Accordingly, the basis for the Board finding that factors 2 and 5 did not weigh
`
`heavily against institution—uncertainly about when the Court would schedule and
`
`hold the trial in the Parallel Proceeding—no longer exists and those factors now
`
`weigh heavily against institution.
`
`III. CONCLUSION
`In the Decision, the Board erred because it did not have the requisite
`
`4
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`Case No. IPR2020-00846
`Patent No. 7,076,431
`facts. Since the briefing that led to the Decision, Judge Albright has made clear that
`
`the trial in this case will occur in the latter half of July 2021. The Western District
`
`of Texas has begun to conduct jury trials. And Judge Albright’s court has continued
`
`to deny opposed motions to stay cases. These facts render the Fintiv factors 2 and 5
`
`and the analysis as a whole in favor of the Board exercising its discretion to deny
`
`institution of the petition for IPR. For these reasons, Patent Owner respectfully
`
`requests rehearing and denial of the inter partes review on the instituted claims.
`
`Dated: November 4, 2020
`
`/Michael J. McNamara/
`Michael J. McNamara (Reg. No. 52,017)
`Michael T. Renaud (Reg. No. 44,299)
`William A. Meunier (Reg. No. 41,193)
`Andrew H. DeVoogd (pro hac vice to be filed)
`MINTZ, LEVIN, COHN, FERRIS, GLOVSKY
`AND POPEO, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: 617-348-1884
`Facsimile: 617-542-2241
`E-mails: mmcnamara@mintz.com
` mtrenaud@mintz.com
` wameunier@mintz.com
` ahdevoogd@mintz.com
`
`5
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`
`CERTIFICATE OF SERVICE
`
`I certify that a copies of Patent Owner’s Request for Rehearing of Institution
`
`Decision and accompanying exhibits are being served by electronic mail on the
`
`following counsel of record:
`
`Lead Counsel
`Elisabeth H. Hunt (Reg. No. 67,336)
`Wolf, Greenfield & Sacks, P.C.
`600 Atlantic Avenue
`Boston, MA 02210-2206
`Telephone: (617) 646-8000
`Facsimile: (617) 646-8646
`EHunt-PTAB@wolfgreenfield.com
`
`Backup Counsel
`Gregory S. Nieberg (Reg. No. 57,063)
`Wolf, Greenfield & Sacks, P.C.
`600 Atlantic Avenue
`Boston, MA 02210-2206
`Telephone: (617) 646-8000
`Facsimile: (617) 646-8646
`GNieberg-PTAB@wolfgreenfield.com
`
`Richard F. Giunta (Reg. No. 36,149)
`Wolf, Greenfield & Sacks, P.C.
`600 Atlantic Avenue
`Boston, MA 02210-2206
`Telephone: (617) 646-8000
`Facsimile: (617) 646-8646
`RGiunta-PTAB@wolfgreenfield.com
`
`Dated: November 4, 2020
`
`/Michael J. McNamara/
`Michael J. McNamara (Reg. No. 52,017)
`
`6
`
`
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