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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`ROKU, INC.,
`Petitioner,
`
`v.
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`UNIVERSAL ELECTRONICS INC.,
`Patent Owner.
`
`____________
`
`Case Nos. IPR2020-00951 and IPR2020-00953
`U.S. Patent 9,911,325
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`____________
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`PATENT OWNER’S RESPONSE TO PETITIONER’S NOTICE OF
`RANKING
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`
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`The Board acknowledges that one petition is generally sufficient to
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`challenge the claims of a patent. See USPTO, Trial Practice Guide Update (July
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`2019), at p. 26 https://www.uspto.gov/sites/default/files/documents/trial-practice-
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`guide-update3.pdf (“July Update”) (“Based on the Board’s prior experience, one
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`petition should be sufficient to challenge the claims of a patent in most
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`situations”); see also USPTO, An Analysis of Multiple Petitions in AIA Trials,
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`Oct. 24, 2017, Slide 14,
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`https://www.uspto.gov/sites/default/files/documents/Chat_with_the_Chief_Boardsi
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`de_Chat_Multiple_Petition_Study_20171024.pdf. In fact, the Board has indicated
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`that it “finds it unlikely that circumstances will arise where three or more petitions
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`by a petitioner with respect to a particular patent will be appropriate.” July Update
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`at 26.
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`The “inefficiencies and costs” associated with piecemeal petitions do not
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`serve “the integrity of the patent system, the efficient administration of the Office,
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`and the ability of the Office to timely complete proceedings.” Comcast Cable
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`Commc’ns, LLC v. Rovi Guides, Inc., Nos. IPR2019-00225, 00226, 00227, 00228,
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`00229, Paper 14 at 4 (P.T.A.B. Jun. 3, 2019) (denying institution on five lower
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`ranked petitions). When faced with multiple petitions the Board will generally
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`institute only on the Petitioner’s top ranked petition and deny institution on the
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`rest. See, e.g., Pfenex Inc. v. GlaxoSmithKline Biologicals SA, IPR2019-01478,
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`2
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`
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`Paper No. 9 at 14 (P.T.A.B. Feb. 10, 2020) (denying institution of Petitioner’s later
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`filed Petition, even though it covered claims not covered by an earlier filed
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`petition); see also BMW of North America, LLC et al v. Carrum Technologies, LLC
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`et al, IPR2019-00927, Paper No. 10 at 2 (P.T.A.B. Nov. 5, 2019) (denying
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`institution of two lower ranked petitions); Nalox-1 Pharmaceuticals, LLC v.
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`Opiant Pharmaceuticals, Inc. et al, IPR2019-00686, Paper No. 11 at 10 (P.T.A.B.
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`Aug. 27, 2019) (denying institution of two lower ranked petitions where petitions
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`all relied on similar prior art references and the same experts).
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`As explained in Patent Owner’s preliminary response, the Board should deny
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`institution of review of Petitioner’s second and third petitions – IPR2020-00951 and
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`-00953 – under 35 U.S.C. § 315(b) because both the petitions are time-barred.
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`In addition, Petitioner’s Notice of Ranking is mis-leading as it completely
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`ignores that Petitioner filed a first petition over 20 months ago in IPR2019-01614.
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`To focus on its two time-barred petitions, as if they were not in fact the second and
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`third petitions, completely ignores the intent of the Trial Guidelines Petitioner
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`purports to follow. The ranking should include all three of Petitioner’s serial
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`petitions for inter partes review of U.S. Pat. No. 9,911,325. Petitioner’s failure to
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`address the first petition renders its Notice of Ranking wholly deficient and does
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`nothing to “aid the Board in determining whether more than one petition is
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`3
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`
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`necessary.” Petitioner selected its preferred grounds and prior art references over a
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`year ago, and the Board has already instituted trial in IPR2019-01614.
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`The Board has instituted on multiple ranked petitions only in rare instances.
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`None of the circumstances justifying institution on multiple ranked petitions exist
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`here. For example, in Comcast Cable Communications, LLC et al v. Veveo, Inc. et
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`al, PTAB-IPR2019-00290, Paper No. 15 at 15 (P.T.A.B. July 5, 2019), the Board
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`instituted on the top two ranked petitions (and denied institution on two others)
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`because the Patent Owner indicated that it may swear behind the references in the
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`first petition and because the petitions presented differing claim constructions in
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`view of these potentially divergent scopes of prior art: “We are persuaded that the
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`potential to antedate a reference relied on in a Petition and claim construction
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`arguments resulting in different manner of application of the prior art are material
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`differences between the submitted Petitions, and these differences warrant
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`institution of inter partes review of a second petition.” Here, the claim
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`constructions are consistent across all petitions, and Patent Owner has made no
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`indication that it will swear behind the priority date of the ’325 Patent.
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`In SolarEdge Technologies Ltd. v. SMA Solar Technology AG, IPR2019-
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`01224, Paper No. 10 at 10-11 (P.T.A.B. Jan. 23, 2020) the Board instituted two out
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`of five parallel petitions because the petitions approached the limitations in
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`materially different ways (one petition argued that a reference disclosed a two-
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`4
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`chamber inverter housing directly, while the second argued that it would have been
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`obvious to house an inverter in the two-chambered housing disclosed in a different
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`reference). Here, however, all three of Petitioner’s petitions approaches the
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`limitations in similar ways and argues that the newly asserted references (Woolgar,
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`Gutman, and Chardon) disclose the limitations at issue. The ranked petitions are
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`not materially different – they are merely serial attempts to argue that the
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`limitations of the ’325 Patent are disclosed in the prior art.
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`Petitioner’s ranked Petitions, particularly in light of its failure to
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`acknowledge its first petition, meet none of the criteria for the rare instances where
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`the Board has instituted on multiple ranked petitions. Patent Owner submits that
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`the Board should follow its usual practice and institute only on the top ranked
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`petition – which it has already done in IPR2019-01614. The Board should deny
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`institution on Petitioner’s two lower ranked petitions.
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`Dated: August 28, 2020
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`
`
`/S. Benjamin Pleune/
`Benjamin S. Pleune
`Reg. No. 52,421
`ALSTON & BIRD LLP
`Bank of America Plaza, Suite 4000
`101 South Tryon Street
`Charlotte, NC 28280-4000
`Telephone: (704) 444-1000
`Facsimile: (704) 444-1111
`Email: ben.pleune@alston.com
`
`Counsel for Patent Owner
`Universal Electronics Inc.
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`5
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`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.8 and 42.6(e), the undersigned hereby certifies
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`that the foregoing Patent Owner’s Response to Petitioner’s Notice of Ranking were
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`served electronically in their entirety on the following:
`
`Lestin L. Kenton, Reg. No. 72,314
`lkenton-PTAB@sternekessler.com
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`Tel.: 202-772-8594
`Fax: 202-371-2540
`
`Jon E. Wright, Reg. No. 50,720
`jwright-PTAB@sternekessler.com
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`Tel.: 202-772-8651
`Fax: 202-371-2540
`
`Daniel S. Block, Reg. No. 68,395
`dblock-PTAB@sternekessler.com
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`Tel.: 202-772-8735
`Fax: 202-371-2540
`
`Timothy L. Tang, Reg. No. 75,187
`ttang-PTAB@sternekessler.com
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 NEW YORK AVENUE, N.W.
`WASHINGTON, D.C. 20005
`TEL.: 202-772-8758
`FAX: 202-371-2540
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`
`6
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`
`
`/S. Benjamin Pleune/
`Benjamin S. Pleune
`Reg. No. 52,421
`ALSTON & BIRD LLP
`Bank of America Plaza, Suite 4000
`101 South Tryon Street
`Charlotte, NC 28280-4000
`Telephone: (704) 444-1000
`Facsimile: (704) 444-1111
`Email: ben.pleune@alston.com
`
`Counsel for Patent Owner Universal
`Electronics Inc.
`
`Dated: August 28, 2020
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`7
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