UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________
`
`ADOBE INC.
`Petitioner
`
`v.
`
`SYNKLOUD TECHNOLOGIES, LLC
`Patent Owner
`
`___________
`
`Case IPR2020-01393
`Patent No. 9,239,686
`___________
`
`PETITIONER’S EXPLANATION FOR MULTIPLE PETITIONS
`
`
`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________
`
`ADOBE INC.
`Petitioner
`
`v.
`
`SYNKLOUD TECHNOLOGIES, LLC
`Patent Owner
`
`___________
`
`Case IPR2020-01393
`Patent No. 9,239,686
`___________
`
`PETITIONER’S EXPLANATION FOR MULTIPLE PETITIONS
`
`
`
`Petitioner is concurrently filing two petitions challenging U.S. Patent No.
`
`9,239,686 (the “’686 Patent”), both of which are based on the same primary prior
`
`art references combined with the same secondary prior art references and including
`
`substantially the same analysis of the patent claims. The petition filed in IPR2020-
`
`01392 addresses claims 1-11 of the ’686 Patent, and the petition in IPR2020-01393
`
`addresses claims 12-20. Two petitions were required because the analysis of all 20
`
`claims of the ’686 Patent could not reasonably fit within the word limit for a single
`
`petition.
`
`Petitioner is challenging claims 1-20 of the ’686 Patent because Patent
`
`Owner has asserted all 20 of those claims against Petitioner in the related district
`
`court litigation. There is no overlap in claims between the two petitions and
`
`together the two petitions address all of the claims asserted by the Patent Owner
`
`against Petitioner. Therefore, Petitioner cannot rank the two petitions because they
`
`are equally important. If the Board were to choose one petition and summarily
`
`deny the other, the parties would be forced to address the same basic grounds for
`
`unpatentability before the Board (for some claims) and in the district court (for the
`
`1
`
`
`
`other claims), which would be an extremely inefficient result.1
`
`By presenting its grounds for unpatentability on all of the claims asserted in
`
`the district court action, Petition has attempted to reduce the overall burden and
`
`avoid any inefficient use of the Board’s and the district court’s resources. The
`
`Board’s November 2019 Consolidated Trial Practice Guide (at page 59)
`
`recognized that petitioners would be justified in bringing multiple petitions against
`
`a single patent “when the patent owner has asserted a large number of claims in
`
`litigation,” which is precisely the scenario confronting Petitioner here. See, e.g.,
`
`Apple Inc. v. Seven Networks, LLC, IPR2020-00156, Paper 10 at 28 (PTAB June
`
`15, 2020) (declining to exercise discretion to deny multiple petitions filed to
`
`challenge 20 claims asserted in related litigation).
`
`Both petitions are necessary because they challenge different claims with
`
`each petition addressing one independent claim and its dependent claims—an
`
`approach that was driven by word limits.2 See Intel Corp. v. VLSI Technology
`
`1 If forced to rank, however Petitioner would rank IPR 2020-1392, addressing
`
`claims 1-11, higher, simply because it addresses a larger number of asserted
`
`claims.
`
`2 As the Board has noted, a request for additional words would not have made
`
`any material difference, as it merely “would result in shifting the same issues
`
`2
`
`
`
`LLC, IPR2019-01199, Paper 19 at 10 (Feb. 6, 2020) (declining to exercise
`
`discretion to deny petitions where “Petitioner contends each petition is
`
`necessary…because each petition is directed to a different independent claim.”);
`
`Microsoft Corp. v. IPA Techs. Inc., IPR2019-00810, Paper 12 at 14 (“Faced with
`
`word count limitations and a large number of challenged claims, Petitioner’s
`
`decision to divide its analysis of those claims among a number of petitions appears
`
`reasonable.”).
`
`The Board has found multiple petitions against a single patent appropriate
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`where, as here, the petitions rely on the same prior art. See, e.g., IPA
`
`Technologies, Inc., IPR2019-00810 Paper 12 at 11-16 (Oct. 16, 2019). The Board
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`further observed that “any duplication of effort that may place unnecessary burdens
`
`on the parties and the Board may be avoided or reduced by consolidating the
`
`instituted IPRs (if institution of review is granted in more than one proceeding),
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`including consolidating the parties’ briefing, motion practice, and the oral hearings.
`
`Id. at 15; see also Seven Networks, LLC, IPR2020-00156, Paper 10 at 26 (“By
`
`asserting overlapping prior art under the present circumstances, Petitioner
`
`challenges the claims across the two petitions in a manner that does not present an
`
`undue burden on the Board or parties.”). Because the same grounds of
`
`presently raised in two petitions into one large petition.” Seven Networks, LLC,
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`IPR2020-00156, Paper 10 at 27.
`
`3
`
`
`
`unpatentability are raised in both of Petitioner’s two petitions, any potential
`
`duplication of effort can be addressed by consolidating the proceedings (e.g.,
`
`setting a single oral hearing for both).3
`
`In sum, this is not the kind of case for which discretionary denial of one
`
`petition would be appropriate or equitable. Both of the petitions were filed on the
`
`same day, challenging different/non-overlapping claims based on the same basic
`
`prior art combinations, and they were not preceded by a preliminary response in
`
`any other IPR challenging the same patent. This is simply a case challenging a
`
`patent with a large number of claims—and a case where the Patent Owner chose to
`
`assert every one of those claims in the related litigation. Petitioner respectfully
`
`3 Petitioner also notes that it has filed two prior petitions challenging patents
`
`related to the ’686 Patent based on the same primary prior art references raised
`
`here: IPR2020-01235 and IPR2020-01301. Petitioner was able to file one
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`petition in each of those other proceedings because Patent Owner asserted only
`
`5 claims from those related patents against Petitioner rather than the 20 asserted
`
`claims in the ’686 Patent. In any event, these multiple proceedings filed within
`
`a few weeks of each other present further opportunity for efficiency as the
`
`parties and the Board will be addressing similar challenged patents based on the
`
`same primary prior art references on a similar (or the same) schedule.
`
`4
`
`
`
`requests institution of both petitions so that the Board can consider both petitions
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`and all of Patent Owner’s asserted claims on the merits.
`
`Respectfully submitted,
`
` /s/ James L. Day
`James L. Day
`Registration No. 72,681
`Attorney for the Petitioner
`
`5
`
`
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