`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`BOSE CORPORATION,
`Petitioner,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`
`_____________________
`CASE IPR2021-00297
`U.S. PATENT NO. 10,368,155
`_____________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
` 
`
`
`
`

`

`
`
`Case IPR2021-00297
`Patent Owner’s Preliminary Response
`
`TABLE OF CONTENTS
`
`C.
`
`D.
`
`INTRODUCTION .......................................................................................... 1
`I.
`BACKGROUND ............................................................................................ 2
`II.
`III. THE BOARD SHOULD DENY INSTITUTION PURSUANT TO 35
`U.S.C. § 314 .................................................................................................... 4
`A.
`Factor 1: The District Court Has Not Issued a Stay ............................ 7
`B.
`Factor 2: Proximity of the Scheduled Trial Date to the Board’s
`Statutory Deadline for Written Decision .............................................. 9
`Factor 3: The Parties and Court Will Have Invested Substantial
`Resources in the Corresponding Litigation Prior to Institution .......... 11
`Factor 4: The Issues Raised in the Petition Overlap
`Substantially with Issues Raised in the Texas Litigations .................. 13
`Factor 5: Petitioner is a Defendant in the Texas Litigations.............. 15
`Factor 6: Other Considerations That Influence the Board’s
`Exercise of Discretion Weigh in Favor of Denying Institution .......... 15
`IV. THE PETITION FAILS TO SHOW THAT THERE IS
`REASONABLE LIKELIHOOD THAT PETITIONER WILL
`PREVAIL ON A SINGLE CLAIM .............................................................. 19
`A.
`The Petition Fails to Show that the Challenged Claims are
`Anticipated by Pelland ........................................................................ 19
`1.
`The PCT and Provisional Applications Do Not
`Unambiguously Limit the Invention to Transitioning from
`an Ad Hoc Wireless Network to an Infrastructure
`Wireless Network When a Connection is Lost ......................... 20
`The Inventors Possessed a Headphone Assembly
`Configured to Transition Automatically Between Wireless
`Networks ................................................................................... 24
`
`E.
`F.
`
`2.
`
`
`
`i 
`
`

`

`Case IPR2021-00297
`Patent Owner’s Preliminary Response
`
`3.
`
`2.
`
`Petitioner Fails to Show Lack of Written Description
`Support for the “Transition Automatically” Limitation ........... 26
`B. GROUNDS 2A-2E OF THE PETITION FAIL TO ESTABLISH
`THAT THE CHALLENGED CLAIMS WOULD HAVE BEEN
`OBVIOUS ........................................................................................... 30
`1.
`Rezvani Does Not Disclose the “Transition
`Automatically” Limitation and Petitioner
`Mischaracterizes the Teachings of Rezvani ............................. 30
`Koss Did Not Admit that Rezvani Discloses the
`“Transition Automatically” Limitation in the European
`Patent Office ............................................................................. 33
`C. GROUNDS 3A-3D OF THE PETITION FAIL TO ESTABLISH
`THAT THE CHALLENGED CLAIMS WOULD HAVE BEEN
`OBVIOUS ........................................................................................... 37
`1.
`The Petition Fails to Show that the Relied-Upon
`References for Grounds 3A-3D Satisfy the “Transition
`Automatically” Limitation of Claim 1 ..................................... 38
`The Petition’s Alleged Motivations to Combine
`Nakagawa with Wilson and Rosener are Deficient and Do
`Not Consider the References for All That They Teach ............ 41
`CONCLUSION ............................................................................................. 44
`
`2.
`
`
`
`ii 
`
`
`
`V.
`
`
`
`
`
`

`

`
`
`Case IPR2021-00297
`Patent Owner’s Preliminary Response
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Advanced Bionics, LLC v. MED-EL Eletromedizinishe Geraete
`GMBH,
`IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) ............................................... 18
`AIA Eng’g Ltd. v. Magotteaux Int’l S/A,
`657 F.3d 1264 (Fed. Cir. 2011) .......................................................................... 34
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB March 20, 2020) ................................... passim
`Apple Inc. v. Motorola, Inc.,
`757 F.3d 1286 (Fed. Cir. 2014) .......................................................................... 34
`Ariad Pharm., Inc. v. Eli Lilly & Co,
`598 F.3d 1336 (Fed. Cir. 2010) (en banc) .................................................... 24, 25
`Biofrontera Inc. v. DUSA Pharms., Inc.,
`IPR2018-01585, Paper 10 (PTAB Feb. 26, 2019) ............................................. 19
`Carnegie Mellon Univ. v. Hoffman-LaRoche, Inc.,
`541 F.3d 1115 (Fed. Cir. 2008) .......................................................................... 23
`Cordis Corp. v. Medtronic AVE, Inc.,
`339 F.3d 1352 (Fed. Cir. 2003) .......................................................................... 25
`Encyclopaedia Britannica, Inc. v. Alpine Electronics of America, Inc.,
`609 F.3d 1345 (Fed. Cir. 2010) .......................................................................... 28
`Gillette Co. v. Energizer Holdings, Inc.,
`405 F.3d 1367 (Fed.Cir.2005) ............................................................................ 33
`Google LLC v. Personalized Media Commc’s, LLC,
`IPR2020-00724, Paper 19 (PTAB Aug. 31, 2020) .............................................. 7
`Hakim v. Cannon Avent Group, PLC,
`479 F.3d 1313 (Fed. Cir. 2007) .......................................................................... 27
`
`
`
`iii 
`
`

`

`Case IPR2021-00297
`Patent Owner’s Preliminary Response
`
`
`Harmonic Inc. v. Avid Tech.,
`815 F.3d 1356 (Fed. Cir. 2016) ............................................................................ 4
`Intel Corp. v. VLSI Tech. LLC,
`IPR2019-01192, Paper 15 (PTAB Jan. 9, 2020) .................................................. 5
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 33
`Johnson Worldwide Assocs., Inc. v Zebco Corp.,
`175 F.3d 985 (Fed. Cir. 1999) ...................................................................... 17, 25
`Medichem, S.A. v. Rolabo, SL,
`437 F.3d 1157 (Fed. Cir. 2006) .......................................................................... 42
`Mintz v. Dietz & Watson, Inc.,
`679 F.3d 1372 (Fed. Cir. 2012) .......................................................................... 43
`NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) ................................................ 1
`Pfizer, Inc. v. Ranbaxy Labs. Ltd.,
`457 F.3d 1284 (Fed. Cir. 2006) .......................................................................... 34
`In re Rasmussen,
`650 F.2d 1212 (CCPA 1981) ............................................................................. 25
`Regents of Univ. of Minn. v. AGA Med. Corp.,
`717 F.3d 929 (Fed. Cir. 2013) ............................................................................ 35
`Retractable Techs., Inc. v. Becton, Dickenson & Co.,
`653 F.3d 1296 (Fed. Cir. 2011) .......................................................................... 27
`Rivera v. Int’l Trade Comm’n
`857 F.3d 1315 (Fed. Cir. 2017) .......................................................................... 26
`Samsung Elecs. Co., Ltd. v. Ancora Techs., Inc.,
`IPR2020-01184, Paper 11 (PTAB Jan. 5, 2021) .................................. 7, 8, 15, 16
`Sand Revolution v. Cont’l Intermodal Grp.-Trucking LLC,
`IPR2019-01393, Paper 24 (PTAB June 16, 2020) ......................................... 8, 15
`
`
`
`iv 
`
`

`

`Case IPR2021-00297
`Patent Owner’s Preliminary Response
`
`
`SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ....................................................................................... 19
`Sentry Prot. Prod., Inc. v. Eagle Mfg. Co.,
`2003 WL 25539702 (N.D. Ohio Sept. 30, 2003) ............................................... 36
`Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) ............................................... 14
`Thorner v. Sony Comput. Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) .......................................................................... 27
`Tronzo v. Biomet, Inc.,
`156 F.3d 1154 (Fed. Cir. 1998) .......................................................................... 20
`Vanda Pharm. Inc. v. W.-Ward Pharm. Int’l Ltd.,
`887 F.3d 1117 (Fed. Cir. 2018) .......................................................................... 24
`Verizon Bus. Network Servs. LLC v. Huawei Techs. Co.,
`IPR2020-01292, Paper 13 (PTAB Jan. 25, 2021) .................................. 12, 13, 15
`
`
`Statutes
`35 U.S.C. § 120 ................................................................................................. 20, 28
`35 U.S.C. § 311 ....................................................................................................... 16
`35 U.S.C. § 314 ................................................................................................ passim
`35 U.S.C. § 316 ..................................................................................................... 5, 9
`Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(September 16, 2011), §3(n)(1) ............................................................................ 4
`
`
`Other Authorities
`37 C.F.R. § 42.107(a) ................................................................................................ 1
`37 C.F.R. § 42.108(c) ................................................................................................ 4
`
`
`
`v 
`
`

`

`Case IPR2021-00297
`Patent Owner’s Preliminary Response
`
`
`Manual of Patent Examining Procedure,
`
`9th ed., Rev. 10.2019, last revised June 2020, § 2129 ………………..………37
`Rule 43(1) European Patent Convention .......................................................... 34, 37
`
`
`
`
`
`
`
`
`vi 
`
`

`

`Case IPR2021-00297
`Patent Owner’s Preliminary Response
`
`EXHIBIT LISTING
`
`Exhibit
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`Complaint, Koss Corp. v. Plantronics, Inc., Case 6-20-cv-00663-
`ADA, Dkt. No. 1 (W.D. Tex. July 22, 2020)
`
`Complaint, Koss Corp. v. Skullcandy, Inc., Case 6-20-cv-00664-
`ADA, Dkt. No. 1 (W.D. Tex. July 22, 2020)
`
`Complaint, Koss Corp. v. PEAG LLC d/b/a JLab Audio, Case 6-20-
`cv-00662-ADA, Dkt. No. 1 (W.D. Tex. July 22, 2020)
`
`[Proposed] Scheduling Order, Koss Corp. v. Bose Corp., Case 6:20-
`cv-00661-ADA, Dkt. No. 24 (W.D. Tex. Feb. 16, 2021)
`
`Sample Order Governing Proceedings - Patent Case, November 5,
`2020, Judge Albright, United States District Court for the Western
`District of Texas, Waco Division
`
`Docket Report, Koss Corp. v. Plantronics, Inc., Case 6-20-cv-00663-
`ADA (W.D. Tex.) (as of March 12, 2021)
`
`Docket Report, Koss Corp. v. Skullcandy, Inc., Case 6-20-cv-00664-
`ADA (W.D. Tex.) (as of March 12, 2021)
`
`Docket Report, Koss Corp. v. Bose Corp., Case 6-20-cv-00661-ADA
`(W.D. Tex.) (as of March 12, 2021)
`
`Docket Report, Koss Corp. v. PEAG LLC d/b/a JLab Audio, Case 6-
`20-cv-00662-ADA (W.D. Tex.) (as of March 12, 2021)
`
`Markman Hearing, MV3 Partners, LLC v. Roku, Inc., Case No. W-
`18-cv-308, Dkt. No. 83 (W. D. Tex. July 19, 2019)
`
`Notice of Trial Procedures, VLSI Tech. LLC v. Intel Corp., Case No.
`6:21-cv-00057-ADA, Dkt. No. 421 (W.D. Tex. February 10, 2021)
`
`K. Buehler, “WDTX Judge Albright Touts Revamped Courtroom
`Tech,” IPLAW360, February 26, 2021.
`
`vii 
`
`
`
`
`
`

`

`Case IPR2021-00297
`Patent Owner’s Preliminary Response
`
`Description
`
`S. Decker et al., “Intel Told to Pay $2.18 Billion After Losing Patent
`Trial,” Bloomberg, March 2, 2021
`(www.bloomberg.com/news/articles/2021-03-02/intel-told-to-pay-2-
`18-billion-after-losing-texas-patent-trial)
`
`United States District Court, Western District of Texas, Judges’
`Calendars, United States District Judge Alan Albright, Public
`Calendar Events in All Divisions (3/1/2021 to 4/30/2021)
`
`E. Cunningham et al., “Fauci predicts vaccine ‘open season’ by
`April,” Washington Post, Feb. 11, 2021
`(www.washingtonpost.com/nation/2021/02/11/coronaviruscovid-
`live-updates-us/) (last accessed February 25, 2021)
`
`R. Thebault, “Fauci says U.S. vaccinations to increase in spring as
`Biden administration nears dose goal,” Washington Post, Feb. 7,
`2021
`(www.washingtonpost.com/health/2021/02/07/faucivaccination-
`increase/) (last accessed February 25, 2021)
`
`Exhibit B-7 to Plantronics, Inc.’s Preliminary Invalidity Contentions
`in Koss Corp. v. Plantronics, Inc., Case 6-20-cv-00663-ADA (W.D.
`Tex.)
`
`Exhibit B-4 to Plantronics, Inc.’s Preliminary Invalidity Contentions
`in Koss Corp. v. Plantronics, Inc., Case 6-20-cv-00663-ADA (W.D.
`Tex.)
`
`Plantronics, Inc.’s Preliminary Invalidity Contentions in Koss Corp.
`v. Plantronics, Inc., Case 6-20-cv-00663-ADA (W.D. Tex.)
`
`Exhibit
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`File History of EP 2,272,259
`
`2021
`
`EP 2,498,509 B1
`
`viii 
`
`
`
`
`
`

`

`Exhibit
`
`2022
`
`Case IPR2021-00297
`Patent Owner’s Preliminary Response
`
`Description
`
`“Biden to direct states to make all adults eligible for vaccine by
`May 1,”
`Reuters,
`March
`11,
`2021
`(www.reuters.com/article/idUSW1N2KA02A) (accessed March 12,
`2021)
`
`ix 
`
`
`
`
`
`
`
`

`

`
`I.
`
`Case IPR2021-00297
`Patent Owner’s Preliminary Response
`
`INTRODUCTION
`Patent Owner, Koss Corporation (“Koss”), submits this Patent Owner
`
`Preliminary Response (“POPR”) pursuant to 37 C.F.R. § 42.107(a) to the Inter
`
`Partes Review (“IPR”) petition (“Petition”) filed by Bose Corporation (“Petitioner”)
`
`for claims 1-14 (“Challenged Claims”) of U.S. Patent 10,368,155 (“’155 Patent,”
`
`Ex. 1001).
`
`The Board should deny institution for several reasons. First, the IPR would
`
`demand an untimely and inefficient proceeding that would effectively “second
`
`guess” the result of a jury trial in concurrent litigation. See NHK Spring Co. v. Intri-
`
`Plex Techs., Inc., IPR2018-00752, Paper 8 at 11-21 (PTAB Sept. 12, 2018)
`
`(Precedential); Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 2-3 (PTAB
`
`March 20, 2020) (Precedential). The ’155 Patent is being asserted against the
`
`Petitioner and against other defendants in co-pending litigations in the Western
`
`District of Texas. A trial involving the ’155 Patent for some defendants, but not
`
`Petitioner,1 is scheduled to commence in April 2022, approximately two months
`
`before the Final Written Decision (“FWD”) would be expected if the IPR is
`
`instituted. As such, the Board should exercise its discretion under § 314(a) to deny
`
`
`1 Petitioner’s trial is scheduled to commence in June 2022. Ex. 2024, 4.
`
`
`
`‐ 1 ‐ 
`
`

`

`
`institution in the interests of efficiency and fairness.
`
`Case IPR2021-00297
`Patent Owner’s Preliminary Response
`
`Second, the Board should also deny institution under § 314(a) because the
`
`Petition fails to establish that the Challenged Claims would have been obvious under
`
`§ 103 under any of the asserted grounds. Ground 1 is effectively an improper § 112
`
`challenge disguised as a § 102 challenge and also fails on the merits. For
`
`obviousness-based Grounds 2A-2E and 3A-3D, the Petition mischaracterizes the
`
`primary references and ignores the teachings of the primary references that
`
`contradict Petitioner’s obviousness theories. Grounds 2A-2E are also based on a
`
`primary reference (Rezvani, Ex. 1016) that was considered by the Office in the
`
`original examination of the ’155 Patent. There has been no showing that the Office
`
`committed any error or misapprehended any teaching of Rezvani in allowing the
`
`claims that Petitioner now challenges.
`
`II. BACKGROUND
`The ’155 Patent includes fourteen claims, of which claim 1 is the sole
`
`independent claim. The ’155 Patent is directed to a wireless headphone assembly
`
`that comprises, among other things, two (“first and second”) earphones and a
`
`processor. The “headphone assembly is configured, with [a] processor, to transition
`
`automatically from playing digital audio content received wirelessly by the
`
`headphone assembly via a first wireless network to playing digital audio content
`
`received wirelessly by the headphone assembly via a second wireless network.” Ex.
`
`
`
`‐ 2 ‐ 
`
`

`

`
`1001, 18:14-19. For example, if the headphone assembly is receiving digital audio
`
`Case IPR2021-00297
`Patent Owner’s Preliminary Response
`
`content via a first wireless network, and the headphone assembly loses its connection
`
`to that first wireless network or the headphone assembly goes out of range of the
`
`first network, the headphone assembly transitions automatically to receiving digital
`
`audio content via a second wireless network. Id., 1:67-2:6; 5:9-15.
`
`The ’155 Patent claims priority via several continuation applications to a PCT
`
`application, PCT/US2009/039754, filed April 7, 2009 (“PCT Application”), and a
`
`provisional application, Serial No. 61/123,265, filed April 7, 2008 (“Provisional
`
`Application”). The PCT Application was published as WO/2009/126614A1 (Ex.
`
`1013, referred to in the Petition and herein as “Pelland”) and a copy of the
`
`Provisional Application is provided as Ex. 2020.2
`
`The Petition asserts three general theories of unpatentability, with ten total
`
`sub-grounds (Grounds 1, 2A-2E and 3A-3D). Ground 1 alleges that claims 1-14 are
`
`anticipated under § 102(a) (post-AIA)3 by the priority PCT Application (Ex. 1013,
`
`
`2 Ex. 2020 is the file history of EP 2,272,259, an EPO patent owned by Koss that
`
`also claims priority to the PCT and Provisional Applications. A copy of the
`
`Provisional Application is included in Ex. 2020 at pages 152-177 thereof.
`
`3 The Petition asserts that post-AIA law applies. Pet. at 12, note 7. However, as
`
`explained herein, the ’155 Patent claims priority to the PCT and Provisional
`
`
`
`‐ 3 ‐ 
`
`

`

`
`i.e., Pelland). Grounds 2A-B are that claims 1-14 would have been obvious under §
`
`Case IPR2021-00297
`Patent Owner’s Preliminary Response
`
`103 over multiple combinations of references, with Rezvani (Ex. 1016) serving as
`
`the primary reference for each of Grounds 2A-2E. Grounds 3A-D are that claims 1-
`
`14 would have been obvious under § 103 over multiple combinations of references,
`
`with Nakagawa (Ex. 1022) serving as the primary reference for each of Grounds 3A-
`
`D.
`
`III. THE BOARD SHOULD DENY INSTITUTION PURSUANT TO 35
`U.S.C. § 314
`The Board “is permitted, but never compelled, to institute an IPR proceeding.”
`
`Harmonic Inc. v. Avid Tech., 815 F.3d 1356, 1367 (Fed. Cir. 2016). The discretion
`
`to deny institution is statutorily delegated to the Board and memorialized in the Code
`
`of Federal Regulations. 35 U.S.C. § 314(b) (“Director shall determine whether to
`
`institute an inter partes review ….”); 37 C.F.R. § 42.108(c) (“Inter partes review
`
`shall not be instituted unless the Board decides that the information presented in the
`
`petition demonstrates that there is a reasonable likelihood that at least one of the
`
`claims challenged in the petition is unpatentable.”). The Board may apply this
`
`
`Applications, both of which pre-date March 16, 2013, such that the pre-AIA versions
`
`of §§ 102-103 apply. Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125
`
`Stat. 284 (September 16, 2011), §3(n)(1).
`
`
`
`‐ 4 ‐ 
`
`

`

`
`discretion in consideration of “the integrity of the patent system, [and] the efficient
`
`Case IPR2021-00297
`Patent Owner’s Preliminary Response
`
`administration of the Office ….” 35 U.S.C. § 316(b). Specifically, the Board has
`
`denied institution “to minimize the duplication of work by two tribunals to resolve
`
`the same issue.” Intel Corp. v. VLSI Tech. LLC, IPR2019-01192, Paper 15 at 11
`
`(PTAB Jan. 9, 2020).
`
`This discretion is particularly applicable here because the ’155 Patent is
`
`involved in co-pending litigation in the Western District of Texas. The ’155 Patent
`
`is asserted against Plantronics, Inc. (Koss Corp. v. Plantronics, Inc., Case 6-20-cv-
`
`00663-ADA (W.D. Tex.)) and Skullcandy, Inc. (Koss Corp. v. Skullcandy, Inc., Case
`
`6-20-cv-00664-ADA (W.D. Tex.)).4 Exs. 2001-2002. The Markman hearing for
`
`these first cases is scheduled for April 22, 2021 and the trial is scheduled to
`
`commence April 18, 2022. Ex. 1082, 3-4. A second set of cases in the Western
`
`District of Texas involves Petitioner (Koss Corp. v Bose Corp., Case 6-20-cv-00661-
`
`ADA (W.D. Tex.)) and JLab Audio (Koss Corp. v. PEAG LLC d/b/a JLAb Audio,
`
`Case 6-20-cv-00662-ADA (W.D. Tex.)) as defendants. Exs. 1055 and 2003. The
`
`parties filed a joint proposed scheduling order that set the second Markman hearing
`
`
`4 The third defendant in the first set of cases in the Western District of Texas is
`
`Apple Inc.; Koss Corp. v. Apple Inc., Case 6-20-cv-00665-ADA (W.D. Tex.). The
`
`’155 Patent is not asserted against Apple Inc.
`
`
`
`‐ 5 ‐ 
`
`

`

`
`for the ’155 Patent for July 20, 2021 and second trial for June 6, 2022. Ex. 2004, 3-
`
`Case IPR2021-00297
`Patent Owner’s Preliminary Response
`
`4.
`
`For clarity, in this POPR, the Plantronics and Skullcandy cases in the Western
`
`District of Texas are referred to as the “First Set” of cases and the Bose and JLab
`
`Audio cases in the Western District of Texas are referred to as the “Second Set” as
`
`summarized below. Collectively, these cases are referred to as the “Texas
`
`Litigations.” Judge Albright is the judge for all of these matters. Exs. 2006-2009.
`
`First Set of Cases in W.D. Texas
`
`Second Set of Cases in W.D. Texas
`
`Plantronics, Inc.
`Skullcandy, Inc.
`Apple, Inc.5
`
`Bose Corporation
`PEAG LLC d/b/a JLAb Audio
`
`Collectively “Texas Litigations”
`
`
`
`In Fintiv, the Board outlined six factors that inform its decision “to deny
`
`institution in view of an earlier trial date in [a] parallel proceeding.” IPR2020-
`
`00019, Paper 11 at 6. The Board weighs and considers the holistic effect of each of
`
`the following factors: (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
`
`
`5 See note 4, supra.
`
`
`
`‐ 6 ‐ 
`
`

`

`
`in the parallel proceeding by the court and the parties; (4) overlap between issues
`
`Case IPR2021-00297
`Patent Owner’s Preliminary Response
`
`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
`
`(collectively, “Fintiv factors”). Id. at 5-15.
`
`The Fintiv factors collectively justify denial of the Petition in light of the co-
`
`pending Western District of Texas litigations, particularly the First Set of cases.
`
`Discretionary denial of institution is consistent with recent Board decisions,
`
`preserves the integrity of the patent system, promotes the efficient administration of
`
`Office resources, and minimizes duplicative work by two tribunals and multiple
`
`parties. See id.; Samsung Elecs. Co., Ltd. v. Ancora Techs., Inc., IPR2020-01184,
`
`Paper 11 at 18 (PTAB Jan. 5, 2021); Google LLC v. Personalized Media Commc’s,
`
`LLC, IPR2020-00724, Paper 19 at 6, 11 (PTAB Aug. 31, 2020).
`
`A.
`Factor 1: The District Court Has Not Issued a Stay
`Although the granting of a stay in a parallel proceeding has weighed against
`
`the Board exercising its discretion to deny institution of a petition, the U.S. District
`
`Court of the Western District of Texas has neither granted a stay nor indicated that
`
`it would grant a stay in the Texas Litigations if the petitioned-for IPR is instituted.
`
`Beyond its assertion that Factor 1 is “neutral,” the Petition does not indicate
`
`that Petitioner will request a stay in the Texas Litigations pending the IPR if the IPR
`
`
`
`‐ 7 ‐ 
`
`

`

`
`is instituted. Pet. at 81. However, even if Petitioner expressed an intention to move
`
`Case IPR2021-00297
`Patent Owner’s Preliminary Response
`
`for a stay pending institution of the IPR, the Board would not weigh this factor in
`
`favor of Petitioner. See Samsung, IPR2020-01184, Paper 11 at 8, 9 (petitioner’s
`
`“assertion that it ‘intends to seek a stay if the Board institutes trial’ is not sufficient
`
`evidence that a stay will likely be granted”).
`
`The Board has expressed a wariness to predict district court behavior “because
`
`the court may determine whether or not to stay any individual case, including the
`
`related one, based on a variety of circumstances and facts beyond [its] control and
`
`to which the Board is not privy.” Sand Revolution v. Cont’l Intermodal Grp.-
`
`Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020) (Informative).
`
`However, District Court Judge Alan Albright is presiding over all of the Texas
`
`Litigations and, according to his November 5, 2020 Sample Order Governing
`
`Proceedings – Patent Cases, he expects that “[a]fter the trial date is set, the Court
`
`will not move the trial date except in extreme situations.” Ex. 2005, 6. A jury trial
`
`is scheduled to commence for the First Set of cases on April 18, 2022 (Ex. 1082, 3)
`
`and none of the defendants in the First (or Second) Set of cases have indicated an
`
`intention to move for a stay pending institution of an IPR for the ’155 Patent. Exs.
`
`2006-2009.
`
`Furthermore, Judge Albright denied a motion to stay based on an IPR in a case
`
`similarly situated to the Texas Litigations. In MV3 Partners, LLC v. Roku, Inc.,
`
`
`
`‐ 8 ‐ 
`
`

`

`
`Judge Albright denied a motion to stay when the IPR was instituted after claim
`
`Case IPR2021-00297
`Patent Owner’s Preliminary Response
`
`construction briefing and shortly before the scheduled Markman hearing. See Ex.
`
`2010, 53 (“I’m not going to stay the case based on the IPR institution.”). In the First
`
`Set of cases, the opening and responsive Claim Construction Briefs have been filed;
`
`and the Markman hearing is scheduled for April 22, 2021, nearly a month prior to
`
`the deadline to institute. Ex. 1082, 3. Even if the Board prefers not to predict district
`
`court behavior, Judge Albright expressed in his Standing Orders and decisions under
`
`similar circumstances that it is unlikely that a motion to stay would be granted if the
`
`IPR is instituted. Exs. 2005, 6; 2010, 53.
`
`Thus, if the IPR is instituted, both tribunals will be expending resources to
`
`resolve duplicative issues, regardless of Petitioner’s actions in the Texas Litigations.
`
`Accordingly, the first Fintiv factor weighs in favor of denying institution.
`
`B.
`
`Factor 2: Proximity of the Scheduled Trial Date to the Board’s
`Statutory Deadline for Written Decision
`“If the court’s trial date is earlier than the projected statutory deadline [for a
`
`final written decision], the Board generally has weighed this fact in favor of
`
`exercising authority to deny institution ….” Fintiv, IPR2020-00019, Paper 11 at 9.
`
`If the Board exercises its discretion to institute the IPR, the institution decision will
`
`likely issue in mid-June 2021 (see 35 U.S.C. § 314(b)(1)), and the FWD will issue
`
`around mid-June 2022. See 35 U.S.C. § 316(a)(11). Thus, the FWD will issue about
`
`
`
`‐ 9 ‐ 
`
`

`

`
`two months after the jury trial in the First Set of cases commences on April 18, 2022.
`
`Case IPR2021-00297
`Patent Owner’s Preliminary Response
`
`Petitioner asserts that “Factor 2 is assessed on a ‘sliding scale,’ with proximity
`
`to trial balanced against the petitioner’s diligence,” and that, because Petitioner filed
`
`the Petition eleven months before its statutory bar, Factor 2 favors institution. Pet.
`
`at 83. Petitioner’s argument, however, overlooks that it was aware of the allegations
`
`of its infringement for the ’155 Patent by July 2020 (Ex. 1055, ¶53)—approximately
`
`five months before the Petition was filed.
`
`Also, the Petition’s speculation about potential extensions of trial dates due to
`
`the COVID-19 pandemic (Pet. at 82) is unwarranted in light of the circumstances
`
`surrounding the Texas Litigations. First, Judge Albright’s standing orders for patent
`
`cases state that “[a]fter the trial date is set, the Court will not move the trial date
`
`except in extreme situations.” Ex. 2005, 6. The trial date for the First Set of cases
`
`is scheduled to commence April 18, 2022. Ex. 1082, 4. Given Judge Albright’s
`
`standing orders, this trial date is unlikely to be moved.
`
`Second, Judge Albright is presently conducting trials despite the pandemic.
`
`He recently issued trial procedures to reduce infection risk for the jurors, parties,
`
`counsel, witnesses and support staff. Exs. 2011-2012. He also recently concluded
`
`a patent trial (Ex. 2013) and his March-April 2021 calendar shows several criminal
`
`and civil trials, including patent infringement trials to start on April 12 (Ex. 2014,
`
`104, VLSI Tech. LLC v. Intel Corp.), April 19 (id., 153, Digital Retail Apps, Inc. v.
`
`
`
`‐ 10 ‐ 
`
`

`

`
`HEB Grocery Co.), and April 26 (id., 165-166, Ancora Tech., Inc. v. LG Elec., Inc.,
`
`Case IPR2021-00297
`Patent Owner’s Preliminary Response
`
`and 169, Vindolor, LLC v. Target Corp.).
`
`Third, by the time the trials for the First and Second Sets of cases are ready
`
`to start, in April and June 2022 respectively, the pandemic should have abated. Dr.
`
`Anthony Fauci, Director of the National Institute of Allergy and Infectious Diseases,
`
`recently stated that “virtually everybody” will have access to vaccinations in April
`
`2021, a full year prior to the scheduled trial date in the First and Second Set of cases.
`
`Ex. 2015; see also Ex. 2016 (quoting Dr. Fauci as saying “things are going to get
`
`better as we get from February into March, into April, because the number of vaccine
`
`doses that will be available will increase substantially”); Ex. 2022 (“U.S. President
`
`Joe Biden will direct states to make all adults eligible for COVID-19 vaccines by
`
`May 1….”).
`
`Accordingly, the second Fintiv factor weighs in favor of denying institution.
`
`C.
`
`Factor 3: The Parties and Court Will Have Invested Substantial
`Resources in the Corresponding Litigation Prior to Institution
`“[D]istrict court claim construction orders may indicate that the court and
`
`parties have invested sufficient time in the parallel proceeding to favor denial.”
`
`Fintiv, IPR2020-00019, Paper 11 at 9-10. The Fintiv analysis also considers “the
`
`amount and type of [all] work already completed” to determine whether “the parallel
`
`proceeding is more advanced ... and instituting would lead to duplicative costs.” Id.
`
`
`
`‐ 11 ‐ 
`
`

`

`
`at 9-10. Here, the parties and district court will have invested significant resources
`
`Case IPR2021-00297
`Patent Owner’s Preliminary Response
`
`in both the First and Second Set of cases, and particularly the First Set by the time
`
`any institution decision is due.
`
`In the First Set, the parties have already served preliminary infringement and
`
`invalidity contentions; exchanged proposed claim constructions; disclosed extrinsic
`
`evidence; and filed their opening and responsive claim construction briefs. Ex.
`
`1082, 2-3. By the expected institution decision in mid-June 2021, the parties in the
`
`First Set of cases will have filed their reply and sur-reply claim constructions briefs;
`
`submitted technical tutorials; and conducted the Markman hearing. Id., 3.
`
`In the Second Set of cases, based on the parties’ joint proposed scheduling
`
`order, by the mid-June expected institution decision, the parties will have served
`
`preliminary infringement and invalidity contentions; exchanged proposed claim
`
`constructions; and filed their opening and responsive claim construction briefs. Ex.
`
`2004, 2.
`
`Thus, the court and parties will have expended substantial resources across
`
`both the First and Second Sets of cases by the time of the expected institution
`
`decision. This favors denial. See Verizon Bus. Network Servs. LLC v. Huawei Techs.
`
`Co., IPR2020-01292, Paper 13 at 14-15 (PTAB Jan. 25, 2021) (“given the
`
`investment of the parties and the court in the Parallel Proceeding by the time of the
`
`institution decision in this proceeding, we determine this factor weighs in favor of
`
`
`
`‐ 12 ‐ 
`
`

`

`
`exercising discreti