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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS INC.,
`Patent Owner.
`
`____________
`
`Case IPR2020-00951
`U.S. Patent 9,911,325
`
`____________
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`I.
`
`THE BOARD SHOULD NOT INSTITUTE INTER PARTES
`REVIEW .......................................................................................................... 1
`
`A.
`
`Joinder Should Be Denied, Making Petitioner’s
`Challenge Untimely under 35 U.S.C. § 315(b) ..................................... 2
`
`1.
`
`2.
`
`Same Party Joinder is Not Allowed by 35 U.S.C. §
`315(c) .......................................................................................... 2
`
`Even if Same Party Joinder is Allowed, Joinder
`Should Not be Permitted in this Case ......................................... 4
`
`(a)
`
`Petitioner has been on Notice of the
`Challenged Claims Since September 2018 ...................... 5
`
`(b) Denying Joinder Causes no Undue Prejudice to
`Petitioner ........................................................................... 6
`
`(c) Allowing Joinder Causes Significant Undue
`Prejudice to Patent Owner ................................................ 7
`
`(d) Other Factors Support Denying Joinder ........................... 9
`
`B.
`
`C.
`
`The Board Should Deny Institution Under 35 U.S.C. §
`314(a) in View of the Upcoming ITC Trial ........................................10
`
`The Board Should Deny Institution Under 35 U.S.C. §
`325(d) Because of Petitioner’s Multiple Petitions ..............................14
`
`II.
`
`PETITIONER HAS FAILED TO SHOW THAT THERE IS A
`REASONABLE LIKELIHOOD THAT THE CHALLENGED
`CLAIMS OF THE ‘325 PATENT ARE UNPATENTABLE AS
`OBVIOUS. .....................................................................................................17
`
`A.
`
`B.
`
`C.
`
`Technology Background .....................................................................17
`
`U.S. Patent No. 9,911,325 ...................................................................18
`
`Person of Ordinary Skill in the Art .....................................................20
`
`i
`
`

`

`D.
`
`Claim Construction..............................................................................21
`
`1.
`
`2.
`
`3.
`
`4.
`
`“Key Code” ...............................................................................21
`
`“Keystroke Indicator” ...............................................................22
`
`“Key Code Signal” ....................................................................23
`
`“generate a key code using a keystroke indicator” ...................25
`
`E.
`
`Ground 1: Rye in Combination with Skerlos Does Not
`Render the Challenged Claims Obvious .............................................26
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Petitioner has failed to establish motivation to
`combine Rye and Skerlos ..........................................................26
`
`Neither Rye nor Skerlos, alone or in combination,
`discloses, teaches, or suggests Element [1.3]: “a
`processing device coupled to the receiver and the
`transmitter; and” ........................................................................30
`
`Petitioner has not shown that Rye or Skerlos
`discloses, teaches, or suggests Element [1.4]: “a
`memory storing instructions executable by the
`processing device, the instructions causing the
`processing device to” ................................................................30
`
`Petitioner has not shown that Rye or Skerlos
`discloses, teaches, or suggests Element [1.4.2]:
`“format the key code for transmission to the
`second device” ..........................................................................31
`
`Petitioner has not shown that Rye or Skerlos
`discloses, teaches, or suggests Element [1.4.3]:
`“transmit the formatted key code to the second
`device in a key code signal via use of the
`transmitter” ................................................................................33
`
`Petitioner has not shown that Rye or Skerlos
`discloses, teaches, or suggests Element [1.4.5]:
`“wherein the codeset further comprises time
`information that describes how a digital one and/or
`a digital zero within the selected one of the
`
`ii
`
`

`

`plurality of key code data is to be represented in
`the key code signal to be transmitted to the second
`device”.......................................................................................34
`
`F.
`
`Ground A: Rye in Combination with Skerlos and
`Woolgar Does Not Render the Challenged Claims
`Obvious................................................................................................35
`
`1.
`
`2.
`
`Petitioner has failed to establish a motivation to
`combine Rye, Skerlos, and Woolgar ........................................35
`
`Petitioner has not shown that Rye, Skerlos, or
`Woolgar discloses, teaches, or suggests Element
`[9.4.4]: “transmit the formatted key code to the
`second device in a keycode signal via use of the
`second transmitter and a second communication
`protocol when it is determined that the second
`device is not responsive to the key code signal
`transmitted via use of the first transmitter and the
`first communication protocol” ..................................................38
`
`G. Ground B: Rye in Combination with Skerlos and Gutman
`Does Not Render Claim 6 Obvious. ....................................................42
`
`1.
`
`Petitioner has failed to establish a motivation to
`combine Rye, Skerlos, and Gutman ..........................................42
`
`H. Ground C: Rye in Combination with Skerlos, Woolgar,
`and Gutman Does Not Render Claim 14 Obvious. .............................44
`
`I.
`
`Ground 2.A: Caris in Combination with Dubil Does Not
`Render the Challenged Claims Obvious .............................................45
`
`1.
`
`2.
`
`3.
`
`Petitioner has failed to establish a motivation to
`combine Caris and Dubil ..........................................................45
`
`Neither Caris nor Dubil discloses, teaches, or
`suggests Element [1.3]: “a processing device
`coupled to the receiver and the transmitter; and” .....................49
`
`Neither Caris nor Dubil discloses, teaches, or
`suggests Element [1.4]: “a memory storing
`
`iii
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`

`

`4.
`
`5.
`
`6.
`
`instructions executable by the processing device,
`the instructions causing the processing device to” ...................50
`
`Petitioner has not shown that Caris or Dubil
`discloses, teaches, or suggests Element [1.4.2]:
`“format the key code for transmission to the
`second device” ..........................................................................51
`
`Petitioner has not shown that Caris or Dubil
`discloses, teaches, or suggests Element [1.4.3]:
`“transmit the formatted key code to the second
`device in a key code signal via use of the
`transmitter” ................................................................................54
`
`Neither Caris nor Dubil discloses, teaches, or
`suggests Element [1.4.5]: “wherein the codeset
`further comprises time information that describes
`how a digital one and/or a digital zero within the
`selected one of the plurality of key code data is to
`be represented in the key code signal to be
`transmitted to the second device” .............................................54
`
`J.
`
`Ground D: Caris in Combination with Dubil and
`Woolgar Does Not Render the Challenged Claims
`Obvious................................................................................................55
`
`III. THIS PROCEEDING SHOULD BE DISMISSED AS
`UNCONSTITUTIONAL. ..............................................................................58
`
`IV. CONCLUSION ..............................................................................................59
`
`
`
`
`FEDERAL CASES
`
`TABLE OF ATHORITIES
`
`Page(s)
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .............................................................. 24, 25, 33
`
`iv
`
`

`

`Arthrex, Inc. v. Smith & Nephew, Inc.,
`No. 2018-2140, 2019 U.S. App. LEXIS 32613 (Fed. Cir. Oct. 31,
`2019) ................................................................................................................... 35
`
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .................................................................... 24, 33
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 418 (2007) .................................................................................... 33
`
`Microsoft Corp. v. Enfish, LLC,
`662 Fed. Appx 981 (Fed. Cir. 2016) ............................................................. 23, 32
`
`Personal Web Techs. v. Apple Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ...................................................................... 24, 33
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 12
`
`Sanofi-Aventis Deutschland GMBH v. Mylan Pharms. Inc.,
`No. 2019-1368, 2019 U.S. App. LEXIS 34328 (Fed. Cir. Nov. 19,
`2019) ................................................................................................................... 36
`
`Securus Technologies, Inc. v. Global Tel*Link Corp.,
`701 Fed. Appx. 971 (Fed. Cir. 2017) ............................................................ 23, 32
`
`SpaceCo Business Solutions, Inc. v. Moscovitch,
`IPR2015-00127, Paper 16 (P.T.A.B. May 14, 2015) ....................... 19, 22, 30, 32
`
`REGULATIONS
`
`37 C.F.R. § 42.100(b) .............................................................................................. 12
`
`37 C.F.R. § 42.108(c) ........................................................................................... 8, 15
`
`v
`
`

`

`
`
`LIST OF EXHIBITS
`
`Exhibit No.
`
`Description
`
`Roku’s Proposed Constructions in the District Court
`Claim Construction Order, UEI, Inc. v. Peel Techs., Inc., Case No.
`8:13-cv-01484 (C.D. Cal. Sep. 17, 2017) (Dkt. 66)
`Complaint, UEI, Inc. v. Roku, Inc., Case No. 8:18-cv-01580-JVS-
`ADS, Dkt. (C.D. Cal. Sept. 5, 2018) (Dkt. 1)
`Order Setting Target Date, UEI, Inc. v. Roku, Inc. et al., ITC Inv.
`337-TA-1200 (Order No. 6)
`Roku’s July 10, 2020 Supplemental Responses to Complainant’s
`Third Set of Interrogatories, UEI, Inc. v. Roku, Inc. et al., ITC Inv.
`337-TA-1200
`Roku’s Reply in support of Motion to Supplement Invalidity
`Contentions, UEI, Inc. v. Roku, Inc., Case No. 8:18-cv-01580-JVS-
`ADS (C.D. Cal. July 1, 2019) (Dkt. 95)
`IPR2019-01612, EX1002, Prosecution History of U.S. Patent No.
`7,589,642
`IPR2019-01612, Transcript of Deposition of Dr. Russ, dated June
`17, 2020 (“Russ Depo Tr. (June 17, 2020)”)
`IPR2019-01614 Declaration of Dr. Michael D. Sprenger in support
`of Patent Owner’s Response to Petition for Inter Partes Review of
`U.S. Patent No. 9,911,325 (“Sprenger Decl.”)
`
`EX2001
`
`EX2002
`
`EX2003
`
`EX2004
`
`EX2005
`
`EX2006
`
`EX2007
`
`EX2008
`
`EX2009
`
`
`
`
`
`
`
`vi
`
`

`

`Roku, Inc. (“Petitioner”) petitions for Inter Partes Review of Claims 1, 6, 8,
`
`9, and 11-16 of U.S. Patent No. 9,911,325 (“the ’325 Patent”), which is owned by
`
`Universal Electronics Inc. (“Patent Owner” or “UEI”). Petitioner relies on a total
`
`of six grounds, each of which fails for several reasons.
`
`I.
`
`THE BOARD SHOULD NOT INSTITUTE INTER PARTES REVIEW
`
`The Board should not institute inter partes review for several procedural and
`
`substantive reasons. First, institution should be denied because the petition is time-
`
`barred under 35 U.S.C. § 315(b). Petitioner’s attempt to excuse the lateness of
`
`their filing by seeking impermissible same party joinder should be rejected for
`
`multiple independent reasons. Second, the Board should exercise its discretion
`
`under 325(d) to deny institution of review because the same or substantially the
`
`same prior art or arguments were previously presented to the Patent Office. Third,
`
`the Board should exercise its discretion under § 314(a) because Petitioner’s new
`
`Petition is duplicative and would be an inefficient use of the Board’s resources in
`
`light of the parties’ parallel ITC action.
`
`Finally, Petitioner’s new challenges to the ’325 patent are meritless because
`
`Petitioner’s arguments, representations, and admissions in its Petition and in its
`
`supporting expert declaration confirm that the prior art (either alone or in
`
`combination) fails to disclose, teach, or suggest each and every limitation of the
`
`1
`
`

`

`challenged claims. Thus, on the face of the Petition, Petitioner has failed to show
`
`that the challenged claims of the ’325 Patent are unpatentable.
`
`Accordingly, Patent Owner respectfully requests that the Board refuse to
`
`institute an inter partes review of the Challenged Claims of the ’325 Patent.
`
`A.
`
`Joinder Should Be Denied, Making Petitioner’s Challenge
`Untimely under 35 U.S.C. § 315(b)
`
`Petitioner’s challenge to Claims 1, 6, 8, 9, and 11-16 of the ’325 is untimely
`
`because Petitioner filed its Petition in May 2020 – 20 months after being served by
`
`Patent Owner with a complaint alleging infringement of one or more claims of the
`
`’325 Patent, and 8 months past the deadline set in 35 U.S.C. § 315(b). Petitioner
`
`does not dispute that its Petition would otherwise be time-barred if not for a
`
`successful joinder. Since joinder should be denied for the reasons described
`
`below, institution must be denied as untimely. See Medtronic, Inc. v. Norred, Troy
`
`IPR2014-00823, Paper 12 at 3 (P.T.A.B. Dec. 8, 2014) (denying petition as
`
`untimely where joinder was denied and petition was filed more than one year after
`
`a lawsuit alleging infringement of challenged patent was filed).
`
`1.
`
`Same Party Joinder is Not Allowed by 35 U.S.C. § 315(c)
`
`As discussed in Patent Owner’s Opposition to Petitioner’s Motion for
`
`Joinder, same party joinder is not allowed under 35 U.S.C. § 315(c). That statute
`
`provides that after institution, the Director “may join as a party to that inter partes
`
`review any person who properly files a petition under section 311 that the Director,
`
`2
`
`

`

`after receiving a preliminary response under section 313 or the expiration of the
`
`time for filing such a response, determines warrants the institution of an inter
`
`partes review under section 314.” The Board has in the past agreed with this
`
`interpretation. See Skyhawk Techs. LLC v. L&H Concepts, LLC, Case IPR2014-
`
`01485, slip op. at 3 (P.T.A.B. Mar. 21, 2015) (Paper 13) (“the phrase ‘join as a
`
`party’ indicates that only a person who is not already a party to an instituted inter
`
`partes review can be joined to the proceeding. A person cannot be joined as a party
`
`to a proceeding in which it is already a party.”). In Facebook, Inc. v. Windy City
`
`Innovations the Federal Circuit also rejected the notion of same party joinder.
`
`Facebook, Inc. v. Windy City Innovations, LLC, 953 F.3d 1313, 1325 (Fed. Cir.
`
`2020) (“The plain language of the statute contemplates joining parties, not joining
`
`several proceedings involving the same parties. the clear and unambiguous
`
`meaning of § 315(c) does not authorize joinder of two proceedings, and does not
`
`authorize the Director to join a person to a proceeding in which that person is
`
`already a party.”).
`
`The Supreme Court’s decision in Thryv, Inc. v. Click-to-Call Technologies,
`
`LP, 140 S. Ct. 1367 (2020) did not abrogate the Federal Circuit’s holding in Windy
`
`City. The opinion in Thryv limited the no-appeal provision of 35 U.S.C. § 314(d)
`
`to the decision to institute, and did not apply to “the manner in which the agency's
`
`review ‘proceeds’ once instituted.” Id. at 1376. Joinder is not an institution
`
`3
`
`

`

`decision – it is a decision regarding the manner in which the Board’s review
`
`proceeds once instituted. The IPR statutory scheme demonstrates how joinder is
`
`distinct from institution. Joinder, for example, is not governed by the same
`
`deadlines as institution. See 35 U.S.C. § 315(b) (joinder is not subject to the one-
`
`year bar for filing after a complaint of patent infringement); 35 U.S.C. § 315(c)
`
`(providing that joinder is only available after a proceeding is instituted).
`
`Roku is the petitioner in the previous proceeding IPR2019-01614. 35 U.S.C
`
`§ 315(c) bars it from joining new challenges to the same patent to that proceeding.
`
`And if joinder is denied, inter partes review should be denied as untimely. See
`
`Medtronic, IPR2014-00823, Paper 12 at 3.1
`
`2.
`
`Even if Same Party Joinder is Allowed, Joinder Should Not
`be Permitted in this Case
`
`Even if Proppant Express Investments, LLC v. Oren Technologies, IPR2018-
`
`00914 (PTAB March 13, 2019) controls as Petitioner suggests, joinder should still
`
`not be permitted in this instance. According to Proppant Express, the Board may
`
`join a time-barred petition to an already-instituted proceeding only where fairness
`
`requires it and to avoid undue prejudice to a party. See id. at Paper 38 at 4.
`
`
`1 The Federal Circuit ordered additional briefing in Windy City in view of Thryv.
`
`Facebook, Inc. v. Windy City Innovations, LLC, 803 Fed. Appx. 408 (Fed. Cir.
`
`April 30, 2020). Briefing was completed in May and the decision is pending.
`
`4
`
`

`

`(a) Petitioner has been on Notice of the Challenged Claims
`Since September 2018
`
`Fairness does not require joinder here. Proppant Express states that fairness
`
`may support joinder where the Patent Owner makes a “late addition of newly
`
`asserted claims.” Id. There is no such late addition here because the complaint
`
`filed in September 2018 contemplated all of the claims Petitioner challenges.
`
`EX2003 at ⁋ 66 (accusing Roku of infringing “one or more” claims of the ’325
`
`Patent). See Arris Group v. Cirrex Systems LLC, IPR2015-00530, Paper No. 12
`
`(P.T.A.B. July 27, 2015) (pointing to the “one or more claims” language in the
`
`complaint and using discretion to deny follow-on petition because petitioner could
`
`have challenged claims in earlier petition). Petitioner suggests that it only received
`
`notice of infringement of the claims expressly identified in Patent Owner’s
`
`infringement contentions in the District Court. See Paper No. 3 at 9. But in its
`
`original Petition, Petitioner challenged several claims that were not identified in
`
`the infringement contentions. Petitioner asserts that the extra claims were included
`
`because they were “clearly related claims easily incorporated into the asserted
`
`grounds.” See Paper No. 3 at 9. But in its joinder briefing Petitioner takes pains to
`
`argue that newly challenged claims are also easily incorporated into the asserted
`
`grounds because they are “similar” to the previously challenged claims, the new
`
`grounds “rel[y] primarily on the same art,” and the new references only relate to
`
`discrete additional limitations. Paper No. 10 at 4. Petitioner cannot have it both
`
`5
`
`

`

`ways. Petitioner cannot, on the one hand, argue that it only included similar claims
`
`in the original petition, while attempting to argue at the same time that joinder
`
`should be permitted because the claims are so similar. Petitioner was on notice
`
`that Patent Owner accused it of infringing all of the claims of the ’325 Patent as of
`
`September 2018. Patent Owner’s assertion of claims in a later-filed ITC complaint
`
`is not a “late addition” of claims, because all of the challenged claims here were
`
`already asserted in the District Court. Petitioner could and should have included
`
`the newly challenged claims in its original petition.
`
`(b) Denying Joinder Causes no Undue Prejudice to
`Petitioner
`
`Denying joinder does not present undue prejudice to Petitioner. Petitioner
`
`has no excuse for not including the new grounds based on Woolgar and Gutman in
`
`its original petition. At the time of the first petition the references were available
`
`and Petitioner was on notice of the alleged infringement of the challenged claims.
`
`See Samsung Electronics Co., Ltd. v. Affinity Labs of Texas, LLC, IPR2015-00820,
`
`Paper No. 12 at 4 (P.T.A.B. May 15, 2015) (denying joinder where “Petitioner
`
`articulates no persuasive reason why, using reasonable efforts, the Hu reference
`
`could not have been identified and relied upon in the earlier, timely-filed petitions.)
`
`Denying Petitioner a second chance to make arguments it could and should have
`
`made in its original petition is not unduly prejudicial to Petitioner. See Samsung
`
`Elecs. Co., Ltd. v. Rembrandt Wireless Technlogies, LP, IPR2015-00555, Paper
`
`6
`
`

`

`No. 20 at 8-9 (P.T.A.B. June 19, 2015) (“Petitioner simply presents arguments now
`
`that it could have made in IPR ’892, had it merely chosen to do so. In view of the
`
`foregoing, and especially in light of the fact that, barring joinder, this petition is
`
`time-barred under 35 U.S.C. § 315(b), we exercise our discretion . . . to deny the
`
`petition.”).
`
`(c) Allowing Joinder Causes Significant Undue Prejudice
`to Patent Owner
`
`Joinder would cause undue prejudice to Patent Owner. The Board
`
`recognizes that being forced to respond to new references and new grounds
`
`increases the cost and complexity of a proceeding and is prejudicial to Patent
`
`Owner. See Amneal Pharmaceuticals, LLC v. Endo Pharmaceuticals, Inc.
`
`IPR2014-01365, Paper No. 13 at 10 (P.T.A.B. Feb. 4, 2015) (finding prejudice to
`
`patent owner where joinder petitions asserted new references and grounds). In the
`
`instant case, Petitioner seeks to file two additional petitions on the ’325 Patent,
`
`adding new arguments, new prior art references, and new priority challenges, all of
`
`which could have been brought in the original petition.
`
`The Board also recognizes prejudice to the Patent Owner where joinder
`
`would require extending the schedule of the original IPR. See Microsoft Corp. v.
`
`Biscotti, Inc., IPR2015-01054, Paper 10 at 21 (P.T.A.B. Oct. 22, 2015) (denying
`
`joinder where it would delay resolution of the original IPR); compare with ABB
`
`Inc. v. Roy-G-Biv Corp., Case IPR2013-00286 (P.T.A.B. Aug. 9, 2013) (Paper 14
`
`7
`
`

`

`at 3-4) (permitting joinder where there would be no delay in the original IPR
`
`schedule and where Petitioner limited original Petition to a single ground). Here,
`
`Petitioner and Patent Owner have acknowledged that joinder would likely require
`
`delaying resolution of the original IPR. See Paper 3, Motion for Joinder at 11;
`
`Paper No. 7, Opposition to Motion for Joinder at 12; Paper No. 9 at 3. In an
`
`admission that the current schedule for the previous IPR cannot accommodate
`
`joinder, Petitioner urged in the June 30th Teleconference that the deadlines for the
`
`preliminary responses to the new Petitions be accelerated and that the deadlines for
`
`the Patent Owner responses be extended. See Paper No. 8-1, June 30th
`
`Teleconference Transcript at 9:8-15 (“if the pending and follow-on proceedings
`
`each proceed along their normal course with no modifications by either the parties
`
`or the board, the difference between the schedules will likely impact the efficiency
`
`of the proceedings if the proceedings are, in fact, joined down the road.”). The
`
`Board denied Petitioner’s request. See Paper No. 9 at 3.
`
`Petitioner attempts to mitigate this prejudice with vague allusions to
`
`schedule adjustments without a specific proposal. Petitioner’s failure to discuss
`
`specific modifications to the schedule and failure to provide an explanation of how
`
`the joinder will not extend the schedule of the existing IPR weighs against
`
`allowing joinder. For example, in Sierra Wireless America, Inc. v. M2M Solutions
`
`LLC, IPR2016-00853, Paper 16 at (P.T.A.B. Sept. 20, 2016) the Board stated that
`
`8
`
`

`

`the motion for joinder must “explain what impact (if any) joinder would have on
`
`the trial schedule for the existing review” and that “Petitioner should specifically
`
`address how briefing and/or discovery may be simplified to minimize schedule
`
`impact.” The Board held that the Petitioner’s vague references to “reasonable”
`
`adjustments of the schedule was insufficient. Id. Similar to Sierra Wireless,
`
`Petitioner here vaguely asserts in its Motion for Joinder that it will not seek
`
`extensions, it would not oppose extensions sought by Patent Owner, and that the
`
`Board may extend the schedule by up to six months under 35 U.S.C. § 316(a)(11).
`
`See Paper 3, Motion for Joinder at 11.
`
`(d) Other Factors Support Denying Joinder
`
`Other factors to consider include whether the new petition would otherwise
`
`be time-barred and whether the new petition was filed after Petitioner received
`
`Patent’s Owner’s preliminary response or the Board’s Institution Decision in the
`
`earlier proceeding. See Proppant Express, IPR2018-00914, Paper 38 at 30 (citing
`
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-
`
`01357, slip op. at 16 (P.T.A.B. Sept. 6, 2017) (Paper 19)). These additional
`
`factors also weigh against joinder.
`
`Petitioner does not dispute that its new petition would be time-barred absent
`
`joinder. Petitioner filed its Petition in May 2020 – 20 months after being served by
`
`Patent Owner with a complaint of infringing one or more claims of the ’325 Patent,
`
`9
`
`

`

`and 8 months past the deadline set in 35 U.S.C. § 315(b). This weighs against
`
`joinder. Proppant Express, IPR2018-00914, Paper 38 at 30.
`
`Petitioner also cannot dispute that it filed its new Petition after receiving
`
`Patent Owner’s Preliminary Response and the Board’s Institution Decision in
`
`IPR2019-01614. See IPR2019-01614, Paper No. 6 (Patent Owner Preliminary
`
`Response filed January 21, 2020); IPR2019-01614, Paper No. 7 (institution
`
`decision filed April 16, 2020); IPR2020-00951 Paper No. 1 (new Petition filed
`
`May 18, 2020). Such strategic timing raises a presumption of gamesmanship and
`
`suggests that Petitioner used the insights from the preliminary response and
`
`institution decision as a roadmap for its new arguments. See Shenzhen Silver Star
`
`Intelligent Technology Co., Ltd. et al v. iRobot Corporation, IPR2018-00761,
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`Paper No. 15 at 11-12 (P.T.A.B. Sept. 5, 2018).
`
`For all of the above described reasons joinder should be denied and the
`
`Petition should be denied as untimely.
`
`B.
`
`The Board Should Deny Institution Under 35 U.S.C. § 314(a) in
`View of the Upcoming ITC Trial
`
`In NHK Spring Co. v. Intri-Plex Techs., Inc., No. IPR2018-00752, Paper 8
`
`at 20 (P.T.A.B. Sept. 12, 2018) the Board exercised its discretion under 35
`
`U.S.C. § 314(a) to deny IPR institution, despite the IPR petition’s timely filing,
`
`because a district court trial on the same patent was scheduled over six months
`
`later. The Board held that given the advanced stage of the district court
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`litigation, which involved the same claims and prior art, instituting the IPR
`
`would be an “inefficient use of Board resources.” Id. In E-One, Inc. v. Oshkosh
`
`Corp., No. IPR2019-00161, Paper 16 at 7-9 (P.T.A.B. May 15, 2019) the Board
`
`denied institution under 35 U.S.C. § 314(a) in view of a district court trial that
`
`was eleven months away. There, the Board noted that the validity arguments in
`
`the Petition “overlap substantially” with those in the co-pending litigation. Id. at
`
`8. See also Intel Corporation v. VLSI Technology LLC, IPR2020-00112, Paper
`
`15 (P.T.A.B. May 19, 2020); IPR2020-00113, Paper 15 (P.T.A.B. May 19,
`
`2020); IPR2020-00114, Paper 15 (P.T.A.B. May 19, 2020) (denying institution
`
`on three petitions based on parallel district court case set for trial in October
`
`2020, despite uncertainty caused by coronavirus pandemic); Apple Inc. v. Fintiv,
`
`Inc., IPR2020-00019, Paper 15 (P.T.A.B. May 13, 2020) (denying institution
`
`where parallel district court proceeding would conclude before IPR).
`
`On April 16, 2020 Patent Owner filed a complaint at the International Trade
`
`Commission entitled Certain Electronic Devices. Including Streaming Players,
`
`Televisions, Set Top Boxes, Remote Controller, and Components Thereof, DN3450
`
`against various respondents, including Petitioner. The ITC complaint alleges
`
`infringement of six patents, including the ’325 Patent. The ITC instituted
`
`Investigation No. 337-TA-1200 on May 18, 2020. The final initial determination
`
`11
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`

`

`is due by May 24, 2021. The target date for completing the investigation is
`
`September 22, 2021. See EX2004, Order Setting Target Date.
`
`The Fintiv decision set forth the following factors for the Board to weigh when
`
`deciding whether to deny institution of review based upon a co-pending parallel
`
`action:
`
`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.
`
`Id. at 5-6.
`
`“[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 (citations omitted). Here, the Fintiv factors favor denying
`
`institution to efficiently use Board resources because otherwise, the same parties
`
`would be proceeding with the same invalidity-related arguments at the same time
`
`before two separate tribunals.
`
`12
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`

`

`First, Petitioner has not sought, and the ITC has not granted, a stay in the ITC
`
`Action.
`
`Second, the Board’s statutory deadline for a final written decision in this
`
`action (November 81, 2021) is eight months after the trial and two months after the
`
`target date for completion of the investigation in the ITC Action. See EX2004. The
`
`Court and the parties will have already invested substantial resources at the ITC by
`
`the time the Board is due to issue its final written decision. For example, the parties
`
`will have completed claim construction proceedings (briefing is currently complete),
`
`fact discovery, expert discovery, pre-trial briefing, trial, and post-trial briefing.
`
`Third, the issues raised in the Petition directly overlap with the invalidity
`
`arguments presented in the ITC Action. Petitioner identified every reference from
`
`the present Petition as prior art it intends to rely on for invalidity arguments in the
`
`ITC. EX2005, Roku’s July 10, 2020 Supplemental Responses to Complainant’s
`
`Third Set of Interrogatories at 24-26. The ITC will thus resolve all of the validity
`
`questions raised in the Petition and the Board should deny institution under 35
`
`U.S.C. § 314(a).
`
`Fourth, Petitioner is a named respondent in the ITC Action.
`
`Fifth, the weakness of Petitioner’s invalidity arguments also supports denying
`
`institution.
`
`
`
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`

`

`C. The Board Should Deny Institution Under 35 U.S.C. § 325(d)
`Because of Petitioner’s Multiple Petitions
`
`35 U.S.C. §325(d) provides that the Board has the discretion to deny
`
`institution of duplicative follow-on petitions. In General Plastic Industrial Co.,
`
`Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357, slip op. at 16 (P.T.A.B.
`
`Sept. 6, 2017) (Paper 19) the Board provided a non-exclusive list of factors to
`
`consider when exercising its discretion to institute follow-on petitions:
`
`1. whether the same petitioner previously filed a petition directed to the
`same claims of the same patent;
`
`
`2. whether at the time of filing of the first petition the petitioner knew
`of the prior art asserted in the second petition or should have known
`of it;
`
`
`3. whether at the time of filing of the second petition the petitioner
`already received the patent owner’s preliminary response to the first
`petition or received the Board’s decision on whether to institute
`review in the first petition;
`
`
`4. the length of time that elapsed between the time the petitioner learned
`of the prior art asserted in the second petition and the filing of the
`second petition;
`
`
`5. whether the petitioner provides adequate explanation for the time
`elapsed between the filings of multiple petitions directed to the same
`claims of the same patent;
`
`
`6. the finite resources of the Board; and
`
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
`
`
`14
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`

`

`Id. at 16. Each of these factors weighs against instit