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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`GOOGLE LLC,
`Petitioner
`
`v.
`
`ECOFACTOR, INC.,
`Patent Owner
`____________
`
`IPR2021-00054
`Patent No. 10,534,382
`____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`
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`____________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
`
`
`GOOGLE LLC,
`Petitioner
`
`v.
`
`ECOFACTOR, INC.,
`Patent Owner
`____________
`
`IPR2021-00054
`Patent No. 10,534,382
`____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`
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`Table of Contents
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`I.
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`Introduction ........................................................................................................ 2
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`II. Petitioner’s Asserted Grounds and References .................................................. 2
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`III. Institution Should Be Denied Under the Fintiv Factors ..................................... 2
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`A. Parallel Proceedings ........................................................................................ 3
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`B. Factor 1 weighs against institution, as the district court has not granted a stay
`and no evidence exists that a stay may be granted. ................................................ 5
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`C. Factor 2 weighs strongly against institution, as trial in the district court is
`scheduled to be completed six months before the FWD........................................ 6
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`D. Factor 3 weighs against institution, as claim construction proceedings in the
`district court case are already completed, and discovery is well under way, with a
`substantial portion of fact discovery to be completed before the date the
`institution decision is due....................................................................................... 7
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`E. Factor 4 weighs against institution, as there is overlap between this IPR and
`the district court case. ............................................................................................ 9
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`F. Factor 5 weighs against institution, as Petitioner is a Respondent in the
`parallel ITC proceeding. ...................................................................................... 10
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`G. Factor 6 weighs in against institution. .......................................................... 10
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`H. Summary Regarding Fintiv Factors .............................................................. 11
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`IV. Conclusion ........................................................................................................ 12
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`
`
`i
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`IPR2021-00054 POPR
`Patent No. 10,534,382
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`Exhibits
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`Exhibit No.
`2001
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`2002
`2003
`2004
`2005
`2006
`2007
`2008
`2009
`2010
`2011
`
`Description
`Scheduling Order in EcoFactor, Inc. v. Google LLC, W.D. Tex.
`Case No. 20-cv-00075-ADA (July 16, 2020).
`Google’s W.D. Tex. Invalidity Contentions Ex. A-27
`Google’s W.D. Tex. Invalidity Contentions Ex. B-25
`Google’s W.D. Tex. Invalidity Contentions Ex. B-26
`Google’s W.D. Tex. Invalidity Contentions Ex. B-27
`Google’s W.D. Tex. Invalidity Contentions Ex. B-29
`Google’s W.D. Tex. Invalidity Contentions Ex. B-30
`Google’s W.D. Tex. Invalidity Contentions Ex. B-32
`Google’s W.D. Tex. Invalidity Contentions Ex. B-33
`Google’s W.D. Tex. Invalidity Contentions Ex. B-34
`Google’s W.D. Tex. Invalidity Contentions Ex. B-36
`
`
`1
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`IPR2021-00054 POPR
`Patent No. 10,534,382
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`I.
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`Introduction
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`The Petition challenges the claims of U.S. Patent No. 10,534,382 (Ex. 1001)
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`under one ground of unpatentability. Instituting review in this IPR would cause the
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`parties and the Board to incur significant inefficiencies and wasted efforts of the type
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`warned of in Fintiv and NHK Spring. Over a year ago, on January 31, 2020, Patent
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`Owner EcoFactor filed a complaint in U.S. District Court for the Western District of
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`Texas against Petitioner Google, asserting infringement of the ’382 patent. That
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`district court case is in an advanced stage, with claim construction proceedings
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`concluded, fact discovery under way, and trial set for December 6, 2021, which is
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`six months before the Final Written Decision would be due in this IPR proceeding
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`(should it be instituted). Further, the district court case involves the same claim
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`construction standard and the same claims, invalidity theories, and prior art as this
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`IPR. Under the PTAB’s precedential orders in Fintiv and NHK Spring, the Board
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`should exercise its discretion to deny institution under § 314(a).
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`II.
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`Petitioner’s Asserted Grounds and References
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`The Petition asserts the following one ground of unpatentability: “Ground 1.
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`Claims 1-20 are obvious over Geadelmann and Ehlers ’330” (Pet. at 11).
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`III.
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`Institution Should Be Denied Under the Fintiv Factors
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`35 U.S.C. § 314(a) gives the Board discretion to deny institution because of
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`efficiency considerations stemming from parallel proceedings on the same patent.
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`2
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`IPR2021-00054 POPR
`Patent No. 10,534,382
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`See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept.
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`12, 2018) (precedential, designated May 7, 2019) (“NHK Spring”). The PTAB
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`recently promulgated six factors for determining whether discretionary denial due to
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`efficiency considerations relating to parallel proceedings is appropriate (the “Fintiv
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`factors”):
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`1. whether the court granted a stay or evidence exists that one may be
`granted if a proceeding is instituted;
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`2.
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`proximity of the court’s trial date to the Board’s projected statutory
`deadline for a final written decision;
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`3.
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`investment in the parallel proceeding by the court and the parties;
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`4.
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`overlap between issues raised in the petition and in the parallel
`proceeding;
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`5. whether the petitioner and the defendant in the parallel proceeding are
`the same party; and
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`6.
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`other circumstances that impact the Board’s exercise of discretion,
`including the merits.
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`Apple Inc., v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
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`(precedential, designated May 5, 2020) (“Fintiv Order”) at 6; Apple Inc., v. Fintiv,
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`Inc., IPR2020-00019, Paper 15 (PTAB May 13, 2020) (order denying institution)
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`(informative, designated July 13, 2020) (“Fintiv ID”) at 7–8. Here, all six Fintiv
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`factors weigh against institution.
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`A.
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`Parallel Proceedings
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`3
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`IPR2021-00054 POPR
`Patent No. 10,534,382
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`Over a year ago, on January 31, 2020, Patent Owner EcoFactor filed a
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`complaint in U.S. District Court for the Western District of Texas against Petitioner
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`Google, asserting infringement of the ’382 patent. See EcoFactor, Inc. v. Google
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`LLC, W.D. Tex. Case No. 20-cv-00075-ADA.
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`This Petition for inter partes review was filed on October 22, 2020, nine
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`months after EcoFactor filed its complaint in the district court.
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`The district court case is in an advanced stage, with claim construction
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`proceedings concluded, fact discovery under way, and trial set for December 6,
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`2021, which is six months before the Final Written Decision would be due (May
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`2022) in this IPR proceeding (should it be instituted). Certain findings in the district
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`court case will likely be instructive and may be dispositive of certain issues in this
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`IPR proceeding. These issues may include claim construction and invalidity issues.
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`The district court case qualifies as a parallel proceeding that justifies
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`discretionary denial. Parties expend enormous resources in district court cases, and
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`district court is a forum where parties can litigate their disputes fully and fairly. See
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`Fintiv Order at 6 (explaining that the Fintiv factors “relate to whether efficiency,
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`fairness, and the merits support the exercise of authority to deny institution in view
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`of an earlier trial date in the parallel proceeding”); see also, e.g., Cisco Systems, Inc.
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`v. Ramot at Tel Aviv University Ltd., IPR2020-00123, Paper 14 (PTAB May 15,
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`2020) at 11 (denying institution where it “would be an inefficient use of Board, party,
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`4
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`IPR2021-00054 POPR
`Patent No. 10,534,382
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`and judicial resources”); Intel Corp. v. VLSI Tech. LLC, IPR2020-00158, Paper 16
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`(PTAB May 20, 2020) at 14 (same).
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`The Board has previously denied three IPR petitions filed by Google against
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`EcoFactor patents. See IPR2020-00946, Paper 11 (Nov. 18, 2020); IPR2020-00947,
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`Paper 11 (Nov. 18, 2020); IPR2020-00968, Paper 10 (Nov. 18, 2020). While those
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`petitions involved different patents asserted in a different forum (International Trade
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`Commission), the same rationale applies here. The Board should exercise its
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`discretion to deny institution here, just as it did for the earlier three IPR petitions
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`against EcoFactor patents.
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`B.
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`Factor 1 weighs against institution, as the district court has not
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`granted a stay and no evidence exists that a stay may be granted.
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`Factor 1 concerns whether the district court granted a stay or evidence exists
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`that one may be granted if a proceeding is instituted. Fintiv Order at 6; Fintiv ID at
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`12. This factor weighs against institution.
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`The district court has not granted a stay. Further, it is unlikely that the district
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`court case will be stayed pending IPR. For example, Google has not requested any
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`stay pending IPR in the district court case. The stay is even more unlikely
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`considering the advanced stage of the district court case, with claim construction
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`proceedings already concluded and fact discovery well under way. And, by the time
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`any institution decision issues in May 2021, the parties in the district court case will
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`5
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`IPR2021-00054 POPR
`Patent No. 10,534,382
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`have completed much of their discovery in advance of the July 7, 2021 close of fact
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`discovery. Instituting this IPR will not promote judicial efficiency. Rather,
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`substantial work in the district court would have been completed even before the due
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`date of an institution decision in this IPR.
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`C.
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`Factor 2 weighs strongly against institution, as trial in the district
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`court is scheduled to be completed six months before the FWD.
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`Factor 2 relates to proximity of the court’s trial date to the Board’s projected
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`statutory deadline for a final written decision. Fintiv Order at 9; Fintiv ID at 12. The
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`statutory deadline for the final written decision (FWD) for this IPR Petition would
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`be in May 2022. Meanwhile, trial in the district court case is set for December 6,
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`2021, which is six months before the Final Written Decision would be due in this
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`IPR proceeding (should it be instituted). See Ex. 2001.
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`Under Factor 2, this weighs strongly against institution. See Fintiv Order at 9
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`(“If the court’s trial date is earlier than the projected statutory deadline, the Board
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`generally has weighed this fact in favor of exercising authority to deny institution
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`under NHK.”). As NHK Spring explained, one of the primary objectives of the AIA
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`was “to provide an effective and efficient alternative” to parallel litigation. NHK
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`Spring at 19–20 (quoting General Plastic at 16–17) (emphasis added).
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`Here, this IPR cannot be an alternative to a trial in the district court set to
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`occur six months earlier than the FWD deadline. This alone provides a compelling
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`6
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`Patent No. 10,534,382
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`reason for the Board to exercise its discretion to deny institution. Fintiv ID at 13;
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`Intel Corp. v. VLSI Tech. LLC, IPR2020-00158, Paper 16 (PTAB May 20, 2020) at
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`9.
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`D.
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`Factor 3 weighs against institution, as claim construction
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`proceedings in the district court case are already completed, and
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`discovery is well under way, with a substantial portion of fact
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`discovery to be completed before the date the institution decision
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`is due.
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`Factor 3 relates to investment in the parallel proceeding by the court and the
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`parties. Fintiv Order at 9; Fintiv ID at 14. Here, the parties and the district court have
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`already (and will continue to) invest enormous effort and resources.
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`Importantly, this factor is judged from the date of the institution decision,
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`which is expected to be in May 2021. See Fintiv Order at 9 (considering “the amount
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`and type of work already completed in the parallel litigation by the court and the
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`parties at the time of the institution decision”) (emphasis added).
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`The district court case was filed over a year ago, back in January 2020, and
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`the parties have expended substantial resources since then, involving multiple
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`motions, full claim construction proceeding, and discovery. The parties in the district
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`court case have already concluded claim construction proceedings, with the
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`Markman hearing conducted on December 9, 2020. And by May 2021, the parties
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`7
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`Patent No. 10,534,382
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`in the district court case will have completed a substantial portion of fact discovery,
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`as fact discovery closes on July 7, 2021.
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`The Apple v. Fintiv case was in a similar procedural posture, except the FWD
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`deadline was only two months after that trial, whereas the FWD deadline here is six
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`months after the trial set in the district court case. In that case, the Board noted with
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`respect to Factor 3 that “this factor weighs somewhat in favor of discretionary denial
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`in this case.” Fintiv ID at 14. Here, Factor 3 weighs even more heavily against
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`institution because the instant district court case is many months closer to trial than
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`in Fintiv, and more work is likely to be expended by the time of the institution
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`decision given the advanced stage of the district court case.
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`Further, the Petition could have been filed much sooner, but Petitioner waited
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`nine months—on October 22, 2020—to file the Petition after the district court case
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`began in January 2020. This delay is inexcusable particularly since Petitioner
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`submitted invalidity contentions in the district court case months before (on August
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`17, 2020) it filed the Petition here, asserting the same prior art references.
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`Thus, Petitioner failed to file the Petition “expeditiously.” See Fintiv Order at
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`11. It was not “promptly after becoming aware of the claims being asserted” (nine
`
`months earlier in January 2020), nor around the time Defendant served invalidity
`
`contentions (two months earlier in August 2020). And this unjustified delay
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`prejudiced Patent Owner. For example, Petitioner’s timing imposes unfair costs to
`
`
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`8
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`Patent No. 10,534,382
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`Patent Owner, ensuring that the Patent Owner would continue to invest heavily
`
`through claim construction, discovery, and costs and expenses associated those.
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`Accordingly, Factor 3 weighs strongly against institution.
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`E.
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`Factor 4 weighs against institution, as there is overlap between
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`this IPR and the district court case.
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`Factor 4 relates to overlap between issues raised in the petition and in the
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`parallel proceeding. Fintiv Order at 12; Fintiv ID at 13. This factor weighs against
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`institution because the same claims and claim construction standard are at issue in
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`both proceedings, and there is substantial overlap in invalidity theories and prior art.
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`For example, this IPR challenges the claims of the ‘382 patent based on one
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`ground, using a combination of Geadelmann and Ehlers ‘330 only. (Pet. at 11.)
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`Google asserted the same prior art and invalidity theories in the district court
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`case, asserting Geadelmann and Ehlers ‘330 against the ‘382 patent. In the district
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`court case, Google provided invalidity contentions chart “Exhibit A-27,” which
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`allegedly charts Geadelmann. Ex. 2002 (“Geadelmann chart”).
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`Google’s Geadelmann chart in the district court case alleges invalidity based
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`on Geadelmann in “combination with any of the other references identified in these
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`contentions, including those in Exhibit B,” which includes Ehlers ‘330. Id. at 1. For
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`example, Google’s Geadelmann chart in the district case cites to Exhibits B-25, B-
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`26, B-27, B-29, B-30, B-32, B-33, B-34, and B-36 (see, e.g., Ex. 2002 at 19, 21, 23,
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`
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`9
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`IPR2021-00054 POPR
`Patent No. 10,534,382
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`45, 49, 57, 61, 63, 67, 70). Each of those “B” exhibits specifically recites a
`
`combination with Ehlers ‘330. See, e.g., Ex. 2003 (B-25) at 4; Ex. 2004 (B-26) at 2;
`
`Ex. 2005 (B-27) at 2; Ex. 2006 (B-29) at 2; Ex. 2007 (B-30) at 2; Ex. 2008 (B-32)
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`at 1; Ex. 2009 (B-33) at 1; Ex. 2010 (B-34) at 4; Ex. 2011 (B-36) at 2.
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`Further, both this IPR and the district court proceedings are governed by the
`
`same Phillips claim construction standard. Thus, this IPR involves the same claim
`
`construction standard, claims, invalidity theories, and prior art. See NHK Spring at
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`19–20. Here, just as in NHK Spring, “concerns of inefficiency and the possibility of
`
`conflicting decisions [are] particularly strong.” Fintiv Order at 12. This factor
`
`weighs against institution.
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`F.
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`Factor 5 weighs against institution, as Petitioner is a Respondent
`
`in the parallel ITC proceeding.
`
`Factor 5 concerns whether the petitioner and the respondents in the parallel
`
`proceeding are the same parties. Fintiv Order at 13; Fintiv ID at 15. This factor
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`weighs against institution because Petitioner Google is the defendant in the district
`
`court case. See EcoFactor, Inc. v. Google LLC, W.D. Tex. Case No. 20-cv-00075-
`
`ADA.
`
`G.
`
`Factor 6 weighs in against institution.
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`Factor 6 relates to other circumstances that impact the Board’s exercise of
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`discretion. Fintiv Order at 14; Fintiv ID at 15. Here, Factor 6 supports discretionary
`
`
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`10
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`IPR2021-00054 POPR
`Patent No. 10,534,382
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`denial for several reasons. For example, having an IPR Final Written Decision issue
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`six months after a district court trial is procedurally unfair to Patent Owner. For
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`example, if the claims are confirmed in FWD, Petitioner would be bound by IPR
`
`estoppel and not be able to assert any invalidity grounds it raised or could have
`
`raised. But having a district court trial long before the IPR FWD would eliminate
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`that benefit. Moreover, there is no other circumstance that favors institution.
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`H.
`
`Summary Regarding Fintiv Factors
`
`Factor 1 Weighs against institution
`
`Factor 2 Weighs strongly against institution
`
`Factor 3 Weighs strongly against institution
`
`Factor 4 Weighs against institution
`
`Factor 5 Weighs against institution
`
`Factor 6 Weighs against institution
`
`
`
`In summary, all Fintiv factors weigh against institution and one factor weighs
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`strongly against it. The district court trial is scheduled for six months before the final
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`written decision in this IPR. Further, the level of investment is high. The parties in
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`the district court case have already completed claim construction proceedings, and
`
`by the time an institution decision issues in May 2021, the parties will have
`
`completed much of the fact discovery in the district court case. Instituting review
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`under these “facts and circumstances would be an inefficient use of the Board’s
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`
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`11
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`
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`resources.” NHK Spring at 19–20. Under § 314(a) and the totality of the Fintiv
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`IPR2021-00054 POPR
`Patent No. 10,534,382
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`factors, institution should be denied.
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`IV. Conclusion
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`For the foregoing reasons, institution should be denied.
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`
`
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`Dated: February 18, 2021
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`
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`
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`/s/ C. Jay Chung
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`
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`Respectfully submitted,
`
`Philip X. Wang (Reg. No. 74,621)
`C. Jay Chung (Reg. No. 71,007)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`pwang@raklaw.com
`jchung@raklaw.com
`rak_ecofactor@raklaw.com
`
`
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`12
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`IPR2021-00054 POPR
`Patent No. 10,534,382
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`CERTIFICATION REGARDING WORD COUNT
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`
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`Pursuant to 37 C.F.R. §42.24(d), Patent Owner certifies that there are 2,376
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`words in the paper excluding the portions exempted under 37 C.F.R. §42.24(a)(1).
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`
`
`Dated: February 18, 2021
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`
`
`
`
`/s/ C. Jay Chung
`
`
`
`Philip X. Wang (Reg. No. 74,621)
`C. Jay Chung (Reg. No. 71,007)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`pwang@raklaw.com
`jchung@raklaw.com
`rak_ecofactor@raklaw.com
`
`
`
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`IPR2021-00054 POPR
`Patent No. 10,534,382
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
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`
`The undersigned hereby certifies that the above document was served on
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`February 18, 2021, by filing this document through the Patent Trial and Appeal
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`Board End to End system as well as delivering a copy via electronic mail upon the
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`following attorneys of record for the Petitioner:
`
`Matthew A. Smith
`Andrew S. Baluch
`smith@smithbaluch.com
`baluch@smithbaluch.com
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`
`
`
`Dated: February 18, 2021
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`
`
`
`
`/s/ C. Jay Chung
`
`
`
`Philip X. Wang (Reg. No. 74,621)
`C. Jay Chung (Reg. No. 71,007)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`pwang@raklaw.com
`jchung@raklaw.com
`rak_ecofactor@raklaw.com
`
`
`
`
`
`
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