Trials@uspto.gov
`571-272-7822
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`Paper 10
`Date: December 8, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`ALIVECOR, INC.,
`Patent Owner.
`____________
`
`IPR2021-00970
`Patent 9,572,499 B2
`___________
`
`
`
`
`
`Before ROBERT A. POLLOCK, ERIC C. JESCHKE, and
`DAVID COTTA, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 10
`Date: December 8, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`ALIVECOR, INC.,
`Patent Owner.
`____________
`
`IPR2021-00970
`Patent 9,572,499 B2
`___________
`
`
`
`
`
`Before ROBERT A. POLLOCK, ERIC C. JESCHKE, and
`DAVID COTTA, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2021-00970
`Patent 9,572,499 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`Apple, Inc. (“Petitioner”) filed a Petition for an inter partes review of
`claims 1–20 of U.S. Patent No. 9,572,499 B2 (“the ’499 patent,” Ex. 1001).
`Paper 2 (“Pet.”). AliveCor, Inc. (“Patent Owner”) timely filed a Preliminary
`Response. Paper 6. (“Prelim. Resp.”). Petitioner further filed an authorized
`Reply to the Preliminary Response (Paper 7, “Prelim. Reply”); Patent Owner
`filed a responsive Sur-reply (Paper 8, “Prelim. Sur-reply”).
`
`B. Summary of the Institution Decision
`For the reasons provided below, Petitioner has satisfied the threshold
`requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has
`demonstrated a reasonable likelihood that at least one claim of the ’499
`patent is unpatentable, we institute an inter partes review of all challenged
`claims on each of the Grounds raised in the Petition. See 37 C.F.R.
`§ 42.108(a) (2021) (“When instituting inter partes review, the Board will
`authorize the review to proceed on all of the challenged claims and on all
`grounds of unpatentability asserted for each claim.”).
`
`C. Real Parties-in-Interest
`Petitioner identifies itself, Apple Inc., as the real party-in-interest. Pet.
`84. Patent Owner, identifies itself, AliveCor, Inc., as the real party-in-
`interest. Paper 4, 2.
`
`D. Related Matters
`According to Patent Owner:
`U.S. Patent No. 9,572,499 has been asserted by Patent
`Owner against Petitioner in AliveCor, Inc. v. Apple, Inc., Case
`No. 6:20-cv-01112-ADA, filed in the United States District
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`Court for the Western District of Texas, and in Investigation
`No. 337-TA-1266 before the International Trade Commission,
`In the Matter of Certain Wearable Electronic Devices with
`ECG Functionality and Components Thereof. Apple also filed
`IPR petitions against the other patents asserted in those actions:
`PR2021-00971 (USP 10,595,731) and IPR2021-00972 (USP
`10,638,941).
`Paper 4, 2; see Pet. 84. We refer to the above litigations as the “Texas
`Litigation” and the “ITC Investigation,” respectively. See Pet. 78, 80. We
`further note that US Patent No. 10,595,731 (“the ’731 patent”), at issue in
`IPR2021-00971, is related by a chain of continuation applications to
`Application No. 14/730,122, which issued as the ’499 patent challenged
`here. See US Patent No. 10,595,731 code (63); Ex. 1001, code (21); Prelim.
`Resp. 3–4. As such, the ’731 and ’499 patents share substantially the same
`specification.
`The ’499 patent claims priority to, inter alia, a series of provisional
`applications filed between December 12, 2013, and June 19, 2014. Ex. 1001,
`code (60); see Pet. 2; Prelim. Resp. 3–4. Petitioner contends, and Patent
`Owner does not presently contest, that the claims of the ’499 patent are not
`entitled the benefit of the earliest of those applications such that the critical
`date is December 12, 2014, the filing date of application No. 14/569,513.
`Pet. 2–3; see Prelim. Resp. 4, 31–43. For the purpose of institution, we need
`not determine whether the challenged claims are entitled to the benefit of the
`earliest filed provisional application. Accordingly, and solely for purposes of
`this decision, we apply December 12, 2014, as the critical date.
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 1):
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`Ground
`1
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`2
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`Claims Challenged
`1–6, 10–16, 20
`7–9, 17–19
`
`35 U.S.C § Reference(s)/Basis
`§ 103
`Shmueli,1 Osorio2
`Shmueli, Osorio, Hu3
`
`§ 103
`
`In support of its patentability challenge, Petitioner relies on, inter alia,
`the Declaration of Dr. Bernard R. Chaitman, M.D. Ex. 1003. Patent Owner
`similarly relies on the Declaration of Dr. Igor Efimov, Ph.D. Ex. 2001.
`
`F. The ’499 Patent and Relevant Background
`The ’499 patent relates to medical devices, systems, and methods for
`detecting cardiac conditions, including cardiac arrhythmias. Ex. 1001, 1:20–
`24, 2:8–16. In general:
`In response to the continuous measurement and recordation of
`the heart rate of the user, parameters such as heart rate (HR),
`heart rate variability (R-R variability or HRV), and heart rate
`turbulence (HRT) may be determined. These parameters and
`further parameters may be analyzed to detect and/or predict one
`or more of atrial fibrillation, tachycardia, bradycardia,
`bigeminy, trigeminy, or other cardiac conditions.
`Id. at 2:48–55; see id. at 18:44–54 (Table 2, listing atrial fibrillation, sinus
`and supraventricular tachycardias, bradycardia, bigeminy, and trigemini
`among the types of arrhythmias).
`According to Dr. Chaitman, “HRV analysis is an important tool in
`cardiology to help diagnose various types of arrhythmia.” Ex. 1003 ¶ 35.
`“HRV is defined as the variation of RR intervals with respect to time and
`
`
`1 WO2012/140559, publ. Oct. 18, 2012. Ex. 1004.
`2 U.S. 2014/0275840, publ. Sept. 18, 2014. Ex. 1005
`3 Hu et al., 44(9) “A Patient-Adaptable ECG Beat Classifier Using a Mixture
`of Experts Approach,” IEE Transactions On Biomed. Engineering 891–900
`(1997). Ex. 1049.
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`reflects beat-to-beat heart rate (HR) variability,” and “can be accurately
`determined based on either ECG data or PPG data.” Id. ¶ ¶ 35–36. With
`respect to the former, this involves measuring RR intervals. Id. ¶ 29. “An R-
`R interval represents a time elapsed between successive R-waves of a QRS
`complex of the ECG that occur between successive heart beats.” Id. “If the
`RR intervals over a time period are close to each other in value, then
`ventricular rhythm is understood to be ‘regular.’ In contrast, if there are
`significant variations in the RR intervals over a time period, then the
`ventricular rhythm is understood to be ‘irregular.’” Id. ¶ 37 (citations
`omitted).
`The Specification explains that during cardiac arrhythmia, “the
`electrical activity of the heart is irregular or is faster (tachycardia) or slower
`(bradycardia) than normal,” and in some forms, “can cause cardiac arrest
`and even sudden cardiac death.” Id. at 1:31–35. According to the
`Specification, although the most common cardiac arrhythmia, atrial
`fibrillation, may cause no symptoms, it is associated with palpitations,
`shortness of breath, fainting, chest pain, congestive heart failure, as well as
`atrial clot formation, which can lead to clot migration and stroke. Id. at
`1:33–45.
`
`The Specification discloses body-worn devices for detecting the
`occurrence of arrhythmias using a combination of PPG and ECG electrodes.
`See, e.g., id. at 24:58–25:16, Fig. 14. PPG, or photoplethysmography, uses
`an optical sensor to detect the fluctuation of blood flow, and can provide a
`measure of heart rate. See id. at 25:13–16. According to the Specification,
`fluctuations in heart rate not explained by changing activity levels may be
`interpreted as an advisory condition for recording an ECG, or
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`electrocardiogram, which is a typical method for diagnosing episodes of
`arrhythmia. Id. at 1:43–45, 1:51–56, 24:58–25:33.
`
`Figure 14, reproduced below, shows one embodiment of a body-worn
`device. Id. at 6:11–13.
`
`Figure 14, shows “smart watch 1400 which includes at least one heart rate
`monitor 1402 and at least one activity monitor 1404,” such as an
`accelerometer. Id. at 24:58–60, 25:5–22. Analysis of signals from these
`monitors can be used to “determine if heart rate and activity measurements
`represent an advisory condition for recording an ECG,” and trigger signals
`for recording an ECG if an advisory condition is detected. Id. at 24:63–25:4.
`The collected data may also be analyzed using machine learning algorithms
`to provide a heart health score. See, e.g., id. at 3:34–4:14, 8:28–31, 8:65–9:1,
`12:34–54.
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`Figure 10, illustrated below shows another embodiment involving a
`body-worn device.” Id. at 5:61–63.
`
`Figure 10 illustrates “a method for monitoring a subject to determine when
`to record an electrocardiogram (ECG).” Id. at 23:12–14. According to the
`Specification:
`In FIG. 10, a subject is wearing a continuous heart rate monitor
`(configured as a watch 1010, including electrodes 1016), shown
`in step 1002. The heart rate monitor transmits (wirelessly 1012)
`heart rate information that is received by the smartphone 1018,
`as shown in step 1004. The smartphone includes a processor
`that may analyze the heart rate information 1004, and when an
`irregularity is determined, may indicate 1006 to the subject that
`an ECG should be recorded.
`Id. at 23:14–23. In some embodiments, the ECG device is “present in
`a smart watch band or a smart phone.” Id. at 25:28–29. “The ECG,
`heart rate, and rhythm information can be displayed on the computer
`or smartphone, stored locally for later retrieval, and/or transmitted in
`real-time to a web server.” Id. at 25:40–44.
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`G. Challenged Claims
`Petitioner challenges claims 1–20, of which claims 1 and 11 are
`independent. Claims 1 and 11 recite:
`1. A method of determining a presence of an arrhythmia
`of a first user, said method comprising
`sensing a heart rate of said first user with a heart rate
`sensor coupled to said first user;
`transmitting said heart rate of said first user to a mobile
`computing device, wherein said mobile computing device is
`configured to sense an electrocardiogram;
`determining, using said mobile computing device, a heart
`rate variability of said first user based on said heart rate of
`said first user;
`sensing an activity level of said first user with a motion
`sensor;
`comparing, using said mobile computing device, said heart
`rate variability of said first user to said activity level of said
`first user; and
`alerting said first user to sense an electrocardiogram of said
`first user, using said mobile computing device, in response to
`an irregularity in said heart rate variability of said first user.
`
`11. A system for determining the presence of an arrhythmia
`of a first user, comprising
`a heart rate sensor coupled to said first user;
`a mobile computing device comprising a processor,
`wherein said mobile computing device is coupled to said heart
`rate sensor, and wherein said mobile computing device is
`configured to sense an electrocardiogram of said first user; and
`a motion sensor
`non-transitory computer readable medium encoded with a
`computer program including instructions executable by said
`processor to cause said processor to receive a heart rate of said
`first user from said heart rate sensor, sense an activity level of
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`said first user from said motion sensor, determine a heart rate
`variability of said first user based on said heart rate of said
`first user, compare an activity level of said first user to said
`heart rate variability of said first user, and alert said first user
`to record an electrocardiogram using said mobile computing
`device.
`The dependent claims recite, for example, that the mobile computing
`device comprises a smartphone (claims 5 and 15) or a smartwatch (claims 6
`and 16); that the presence of an arrhythmia is determined using a machine
`learning algorithm (claims 7 and 17); and the use of biometric data such as
`temperature, blood pressure, or inertial data of the first user (claims 3–4, 13–
`14).
`
`II. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(A)
`Under § 314(a), the Director possesses “broad discretion” in deciding
`whether to institute an inter partes review. See 35 U.S.C. § 314(a); Saint
`Regis Mohawk Tribe v. Mylan Pharm. Inc., 896 F.3d 1322, 1327 (Fed. Cir.
`2018); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir.
`2016) (“[T]he PTO is permitted, but never compelled, to institute an [inter
`partes review (IPR)] proceeding.”). The Board decides whether to institute
`an inter partes review on the Director’s behalf. 37 C.F.R. § 42.4(a).
`Patent Owner argues that we should exercise our discretion to deny
`the Petition in view of the copending ITC Investigation. Prelim. Resp. 16–
`30; Prelim. Sur-reply 1–5. According to Patent Owner, instituting an inter
`partes review in this proceeding would result in a duplication of efforts that
`“would not be an efficient use of the Board’s resources and would not serve
`the primary purpose of AIA proceedings: to provide an effective and
`efficient alternative to litigation.” Prelim. Resp. 17. Petitioner argues that
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`we should decline to exercise our discretion under § 314(a) to deny
`institution. See Pet. 77–83; Prelim. Reply 1–5.
`The Board has held that the advanced state of a parallel district court
`action is a factor that may weigh in favor of denying a petition under
`§ 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752,
`Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential) (“NHK”); Patent Trial
`and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 58 & n.2,
`(“Trial Practice Guide”).4 We consider the following factors to assess
`“whether efficiency, fairness, and the merits support the exercise of
`authority to deny institution in view of an earlier trial date in the parallel
`proceeding”:
`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.
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20,
`2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a
`holistic view of whether efficiency and integrity of the system are best
`
`
`4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`served by denying or instituting review.” Id. at 6. Upon consideration of
`these factors, we decline to exercise our discretion to deny the Petition.
`
`A. Whether the Court Granted a Stay or Evidence Exists That One May Be
`Granted if a Proceeding is Instituted
`Fintiv factor 1 recognizes that a stay of litigation pending resolution
`of the PTAB trial allays concerns about inefficiency and duplication of
`efforts, which strongly weighs against exercising the authority to deny
`institution. Fintiv, Paper 11 at 6.
`Here, the ’499 patent is involved in two parallel proceedings. One of
`those proceedings, the Texas Litigation, has been stayed. Pet. 78; Ex. 1053.
`As to the other proceeding, Petitioner asserts that it “intends to move for a
`stay at the ITC upon institution.” Prelim. Reply 5. Accordingly, Petitioner
`asserts that Fintiv factor 1 is “at worst, neutral.” Id.
`Patent Owner argues that “[a] stay of the ITC proceedings is
`extremely unlikely” given the Commission’s “statutory mandate to conclude
`its investigation at ‘the earliest practicable time.’” Prelim. Resp. 17.
`According to Patent Owner, the ITC has “refused requests, in essentially all
`instances, to stay Investigations pending instituted IPRs.” Id.
`We decline to speculate about the likelihood of a stay. Accordingly,
`we find that this factor is neutral.
`
`B. Proximity of the Court’s Trial Date to the Board’s Projected Statutory
`Deadline for a Final Written Decision
`Fintiv factor 2 looks to the “proximity of the court’s trial date to the
`Board’s projected statutory deadline.” Fintiv, Paper 11 at 9. “If the court’s
`trial date is earlier than the projected statutory deadline, the Board generally
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`has weighed this fact in favor of exercising authority to deny institution
`under NHK.” Id.
`The Administrative Law Judge (ALJ) in the ITC Investigation set
`October 26, 2022 as the target date for completion of the Investigation. Ex.
`2006, 5. This date falls approximately seven weeks before our deadline for
`submitting a final written decision (“FWD”).
`Petitioner argues that the Order Setting the Procedural Schedule for
`the ITC Investigation states that “dates . . . for the scheduled hearings . . . are
`subject to change because of restrictions and uncertainty due to the COVID-
`19 pandemic.” Prelim. Reply 1(alterations in original). Petitioner contends
`that the possibility that the ITC schedule may slip makes it “more likely that
`the FWD precedes ITC resolution.” Id. In addition, Petitioner offers to
`truncate the typical 3-month period for the Petitioner Reply by “up to 7
`weeks.” Id. According to Petitioner, “[w]ith this adjustment in schedule, the
`FWD date would be able to precede the ITC’s target date.” Id. at 1–2.
`Patent Owner argues that “[i]n other cases where the conclusion of a
`parallel ITC investigation proceeding pre-dates the FWD by a similar length
`of time, the Board has found this factor weights against institution.” Prelim.
`Resp. 20 (citing Regeneron Pharmaceuticals, Inc. v. Novartis Pharma AG,
`et al., IPR2020-01317, Paper 15 at 15 (PTAB Jan. 15, 2021), Philip Morris
`Products, S.A. v. RAI Strategic Holdings, Inc., IPR2020-00919, Paper 9 at 9
`(Nov. 16, 2020), and Stanley Black & Decker, Inc., et al. v. Zircon
`Corporation, IPR2020-01572, Paper 10 at 13 (PTAB Apr. 19, 2021)). As to
`Petitioner’s offer to shorten the period for the Petitioner Reply, Patent
`Owner argues that Petitioner’s offer should have been, but was not, made
`when it filed the Petition, and that shortening the schedule would prejudice
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`Patent Owner because it “shortens the deposition window.” Prelim. Sur-
`reply. 3.
`We typically take courts’ trial schedules at “face value,” and decline
`Petitioner’s invitation to speculate that the target date for completion of the
`ITC Investigation will slip as a result of the COVID-19 pandemic. Fintiv,
`IPR2020-00019, Paper 15 at 13 (informative). Accordingly, for purposes of
`analyzing this factor, we assume that the ITC Investigation will conclude on
`October 26, 2022.
`We also decline Petitioner’s invitation to assume an earlier issuance
`date for our FWD. Although we appreciate Petitioner’s willingness to
`expedite resolution of this case, Patent Owner raises valid concerns that
`compressing the reply period will also compress the window for taking
`depositions. Moreover, the statutory due date for our FWD is triggered by
`the date of our institution decision and is unaffected by the date on which
`Petitioner files its reply. See 35 U.S.C. § 316(a)(11).
`Given that our FWD in this case is due seven weeks after the targeted
`completion of the ITC Investigation, this factor weighs marginally in favor
`of exercising our discretion to deny institution.
`
`C. Investment in the Parallel Proceeding by the Court and the Parties
`Fintiv factor 3 considers the “investment in the parallel proceeding by
`the court and parties,” including “the amount and type of work already
`completed in the parallel litigation by the court and the parties at the time of
`the institution decision.” Fintiv, Paper 11 at 9. For example, if, at the time of
`institution, the court in the parallel proceeding has issued “substantive orders
`related to the patent at issue in the petition” or “claim construction orders,”
`this favors denial. Id. at 9–10.
`
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`Petitioner argues that “[n]othing of substance has occurred in the
`Texas [Litigation] because it was stayed in favor of the ITC case before
`Apple’s deadline to answer.” Prelim. Reply 3. As to the ITC Investigation,
`Petitioner argues that many significant events remain, including e.g., “expert
`reports, summary determination motions, pre-trial briefs, hearing, etc.” Id. at
`2. Petitioner also asserts that its diligence weighs against exercising our
`discretion to deny institution. According to Petitioner, it filed the Petition
`“less than three weeks after the ITC instituted the investigation . . . and
`before filing its response to the ITC Complaint” or an answer to the
`complaint in the Texas Litigation. Id. Petitioner argues that because it filed
`its Petition so early, any duplicative investment in the ITC Investigation
`cannot be attributed to Petitioner’s delay. Id.
`Patent Owner argues that “significant resources have been, and will
`continue to be, invested before the Board makes its institution decision.”
`Prelim. Sur-reply 4. As an example, Patent Owner identifies the Markman
`Order recently issued in the ITC Investigation. Id. Patent Owner also points
`out that, according to the Procedural Schedule in the ITC Investigation (Ex.
`2006),
`by the December 15, 2021 institution decision deadline . . . ,
`Apple will have filed notices of prior art, the parties’ positions
`on invalidity will be finalized, the parties will have filed
`witness lists for the evidentiary hearing, the parties will have
`completed all fact discovery in the case, and the parties will be
`less than a week away from the initial exchange of expert
`reports.
`Prelim. Resp. 20–21.
`Based on the ITC’s Order Setting Procedural Schedule, the parties
`have completed Markman proceedings, completed fact discovery and
`negotiated to reduce the number of asserted claims and invalidity theories.
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`Ex. 2006, 3–4. The parties have yet to exchange expert reports, file
`dispositive motions, or file pre-trial pleadings. Id. at 4–5. We find the
`investment in the ITC Investigation to date to be significant, but note that
`much remains to be done and that, of the work that has been done, much
`appears unrelated to the validity issues raised in the Petition. In this regard,
`we note that Patent Owner did not identify any claim terms in need of
`construction in its Preliminary Response and we did not find it necessary to
`construe any claim terms to issue this decision.5 See Section III.C, below;
`see also generally Prelim. Resp. On the current record, it thus does not
`appear likely that claim construction will play a significant role in
`addressing Petitioner’s unpatentability arguments. In sum, we find that the
`investment in the ITC Investigation weighs modestly in favor of
`discretionary denial.
`Turning now to Petitioner’s diligence, we are not persuaded by Patent
`Owner’s argument that Petitioner failed to exercise diligence because it
`waited until six months after the Texas Litigation was filed. Prelim. Resp.
`22. The Board has previously explained that, “[i]f the evidence shows that
`the petitioner filed expeditiously, such as promptly after becoming aware of
`the claims being asserted, this fact has weighed against” discretionary
`denial. Fintiv Paper 11 at 11–12 (noting that filing at or around the time of a
`patent owner’s response to invalidity contentions may reveal a lack of
`diligence). Here, Petitioner filed this challenge even before its deadline to
`
`
`5 Patent Owner argues that “the Markman Order that issued in the ITC
`conflicts with [Petitioner’s] positions in this proceeding.” Prelim. Sur-
`reply 5. Although Patent Owner appears to refer to the definition of one of
`ordinary skill in the art, it identifies no claim term dependent on that
`definition.
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`file an answer in the Texas Litigation (which was stayed in view of the ITC
`Investigation before an answer was due) and before it filed a response to
`Patent Owner’s ITC complaint. Accordingly, we find that Petitioner’s
`diligence in filing weighs against exercise of our discretion to deny
`institution.
`Overall, considering both investment and diligence, we determine this
`factor weighs against discretionary denial of the Petition.
`
`D. Overlap between Issues Raised in the Petition and in the Parallel
`Proceeding
`Fintiv Factor 4 considers whether “the petition includes the same or
`substantially the same claims, grounds, arguments, and evidence as
`presented in the parallel proceeding.” Fintiv, Paper 11 at 12. If the issues in
`the Petition overlap substantially with those raised in the parallel proceeding,
`“this fact has favored denial.” Id. “Conversely, if the petition includes
`materially different grounds, arguments, and/or evidence . . . this fact has
`tended to weigh against exercising discretion to deny institution.” Id. at 12–
`13.
`
`Petitioner argues that it has not “advanced the IPR prior art in the ITC
`at all, making clear in its invalidity contentions that ‘[Petitioner] is not
`relying on the art cited in its petitions at this time . . . and only ‘intends to
`rely on such art in the future in the event that the PTAB denies institution.’”
`Prelim. Reply 3 (quoting Ex. 2004, 3). In addition, on the deadline set forth
`in the ITC’s Order Setting Procedural Schedule for “reduc[ing] the number
`of asserted invalidity theories for each asserted patent (including narrowing
`the number of prior art references and combination(s) thereof” (Ex. 2006, 3
`(ITC Order No. 6: Setting Procedural Schedule)), Petitioner notified Patent
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`Patent 9,572,499 B2
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`Owner that it “intends to no longer pursue in this investigation the prior art
`asserted in [Petitioner’s] IPRs” (Ex. 1057). Further, Petitioner asserts that
`“to eliminate any doubt as to the absence of meaningful overlap between the
`proceedings,” Petitioner stipulates that it “will not seek resolution in the
`parallel proceedings of invalidity based on any ground that utilizes Shmueli,
`Osorio, Lee-2012, Kleiger-2005, or Chan.” Pet. 81 (citing Ex. 1051).
`Finally, Petitioner argues that inter partes review of the ’499 patent would
`include all of the claims of the ’499 patent and would thus include claims
`not addressed in the ITC Investigation because the ITC’s Order Setting
`Procedural Schedule requires Patent Owner to reduce the number of asserted
`claims. Prelim. Reply 4 (citing Ex. 2006).
`Patent Owner argues that Petitioner’s stipulation carries little weight
`because it is not a Sotera stipulation, i.e., a stipulation precluding Petitioner
`from pursuing any ground that was raised or could reasonably have been
`raised in the IPR proceeding. Prelim. Resp. 23–27; see Sotera Wireless, Inc.
`v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020)
`(precedential as to § II.A) (“Sotera”) (finding the stipulation that petitioner
`would not pursue the specific ground asserted as well as any other ground
`“that was raised or could have been reasonably raised in an IPR” “weighs
`strongly in favor of not exercising discretion to deny institution”). According
`to Patent Owner, the “only effect” of Petitioner’s narrow stipulation is “to
`create the possibility of inconsistent judgments, where the ITC will rule on
`validity issues months before the PTAB.” Prelim. Resp. 24–25. Indeed,
`Patent Owner argues that the prior art cited in the Petition has “already
`entered the ITC case.” Prelim. Sur-reply 1–2 n.1. Finally, Patent Owner
`dismisses Petitioner’s argument that the ITC Investigation will address only
`
`17
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`IPR2021-00970
`Patent 9,572,499 B2
`
`a subset of the claims challenged in this proceeding because Petitioner has
`not provided “any indication the narrowed set of claims would be
`substantially different than those challenged in the IPR petition.” Id. at 2.
`We agree with Petitioner that the Petition includes materially different
`grounds, arguments, and/or evidence than the ITC Investigation. Although
`Patent Owner argues that the prior art cited in the Petition has “already
`entered the ITC case,” that argument was made before Petitioner narrowed
`the number of prior art references it intended to rely upon, as required by the
`ITC’s Order Setting Procedural Schedule. Ex. 2006; Ex. 1057. Currently
`there does not appear to be any overlap in arguments or evidence between
`the two proceedings. Moreover, we agree with Petitioner that its stipulation
`mitigates to some degree concerns of duplicative efforts and possibly
`conflicting decisions between the Board and the ITC. Indeed, Petitioner’s
`stipulation echoes the one cited in Sand Revolution II, LLC v. Continental
`Intermodal Group-Trucking LLC, which the Board determined weighed
`“marginally in favor of not exercising discretion to deny institution.”
`IPR2019-01393, Paper 24 at 16 (PTAB June 16, 2020) (informative).
`Finally, we agree with Petitioner that this proceeding will likely include
`claims that are not at issue in the ITC Investigation. We are not persuaded by
`Patent Owner’s argument that Petitioner has failed to explain why the
`narrowed set of claims would be substantially different than those
`challenged in the IPR petition because, based on the ITC’s Order Setting
`Procedural Schedule, Patent Owner had yet to narrow the number of asserted
`claims as of the deadline for Petitioner to brief this issue. See Ex. 3001
`(email from the Board authorizing the parties to brief discretionary denial
`issues, setting a deadline of October 25, 2021 for Petitioner to file its
`
`18
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`
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`IPR2021-00970
`Patent 9,572,499 B2
`
`responsive brief); Ex. 2006 (setting a deadline of November 12, 2021 for
`Patent Owner to reduce the number of asserted claims).
`Considering the absence of overlap in issues, claims, and evidence,
`further supported by Petitioner’s stipulation, this factor weighs against
`discretionary denial.
`
`E. Whether the Petitioner and the Defendant in the Parallel Proceeding Are
`the Same Party
`Fintiv Factor 5 looks to “whether the petitioner and the defendant in
`the parallel proceeding are the same party.” Fintiv, Paper 11 at 14. “If a
`petitioner is unrelated to a defendant, the Board has weighed this fact against
`exercising discretion to deny institution under NHK.” Id. at 13.
`Petitioner is the defendant in the Texas Litigation and the ITC
`Investigation. This fact weighs in favor of the Board exercising its discretion
`to deny institution under § 314(a). Id. at 15.
`
`F. Other Circumstances That Impact the Board’s Exercise of Discretion,
`Including the Merits
`Fintiv factor 6 looks to whether “other circumstances” exist that might
`“impact the Board’s exercise of discretion, including the merits.” Fintiv,
`Paper 11 at 14.
`Petitioner argues that we should consider that the ITC “does not have
`the authority to invalidate patent claims in a manner that is binding upon the
`Board or district courts.” Pet. 83; Prelim. Reply 5. Petitioner also argues that
`the merits of its patentability challenges are strong and, thus, favor
`institution. Pet. 83; Prelim. Reply 5.
`Patent Owner argues that “the disputes between the petitioner and the
`patent owner are far ranging, including complex antitrust claims” and thus
`
`19
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`IPR2021-00970
`Patent 9,572,499 B2
`
`“instituting this IPR would do little to efficiently resolve the disputes
`between the parties.” Prelim. Resp. 28. Patent Owner also contends that
`Petitioner “raised claim construction disputes at the ITC that it did not
`include in its Petition,” including the identification of “heart rate sensor,’
`‘alerting said first user to sense an electrocardiogram,’ and ‘alert’ as
`requiring construction.” Id. at 28–29. According to Patent Owner, this
`creates a “very high likelihood of confusion and inconsistent rulings.” Id. at
`29. Finally, Patent Owner argues that the ALJ in the ITC Investigation
`“rejected Apple’s arguments regarding the proper level of ordinary skill,”
`applying a definition that “excludes [Petitioner’s] expert.” Prelim. Sur-reply
`5. Patent Owner asserts that this creates the potential for inconsistent
`decisions if we credit Petitioner’s expert’s arguments “when he may not
`constitute a person of ordinary skill” under
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