Trials@uspto.gov
`571-272-7822
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`Paper 10
`Entered: 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.
`____________
`
`IPR2021-00972
`Patent 10,638,941 B2
`___________
`
`
`
`
`Before ROBERT A. POLLOCK, ERIC C. JESCHKE, and
`DAVID COTTA, Administrative Patent Judges.
`
`COTTA, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`
`35 U.S.C. § 314
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 10
`Entered: December 8, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`ALIVECOR, INC.,
`Patent Owner.
`____________
`
`IPR2021-00972
`Patent 10,638,941 B2
`___________
`
`
`
`
`Before ROBERT A. POLLOCK, ERIC C. JESCHKE, and
`DAVID COTTA, Administrative Patent Judges.
`
`COTTA, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`
`35 U.S.C. § 314
`
`
`
`
`
`IPR2021-00972
`Patent 10,638,941 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`Apple, Inc. (“Petitioner”) filed a Petition for an inter partes review of
`claims 1–23 of U.S. Patent No. 10,638,941 B2 (“the ’941 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, we determine 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 ’941 patent is unpatentable, we institute an inter partes review of all
`challenged claims on each of the Grounds raised in the Petition. See SAS
`Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 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.
`
`
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`D. Related Matters
`According to Patent Owner:
`U.S. Patent No. 10,638,941 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 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:
`IPR2021-00970 (USP 9,572,499) and IPR2021-00971 (USP
`10,595,731).
`Paper 4, 2; see also, Pet. 84. We refer to the above litigations as the “Texas
`Litigation” and the “ITC Investigation,” respectively.
`The ’941 patent claims priority to, inter alia, a provisional application
`filed on May 13, 2015. Ex. 1001, code (60); see Prelim. Resp. 4; Pet. 1.
`The prior art relied upon in the Petition precedes the filing date of this
`provisional application. Accordingly, and solely for purposes of this
`Decision, we apply May 13, 2015, as the effective filing date.
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 1):
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1, 5, 7–9, 11, 12, 16,
`1031
`Shmueli,2 Osorio3
`18–20, 22, 23
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Based on the filing
`date of the ’941 patent, we apply the AIA versions of §§ 102 and 103.
`2 Shmueli et al., WO 2012/140559 A1, published Oct. 18, 2012, (Ex. 1004,
`“Shmueli”).
`3 Osorio, U.S. Patent Publication No. 2014/0275840 A1, published Sept. 18,
`2014, (Ex. 1005, “Osorio”).
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`Claim(s) Challenged
`2–4, 6, 13–15, 17
`
`35 U.S.C. §
`103
`
`Reference(s)/Basis
`Shmueli, Osorio, Lee-20134
`
`10, 21
`
`103
`
`Shmueli, Osorio, Chan5
`
`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 ’941 patent
`The ’941 patent discloses that “[i]rregular heartbeats and arrhythmias
`are associated with significant morbidity and mortality in patients.” Ex.
`1001, 1:17–18. According to the ’941 patent, “[n]on-invasive cardiac
`monitoring is useful in diagnosing cardiac arrhythmia.” Id. at 1:21–22. In
`furtherance of this use, the ’941 patent discloses “systems, devices, and
`methods for cardiac monitoring,” including, for example “portable
`computing devices such as smartphones, smartwatches, laptops, and tablet
`computers.” Id. at 1:26–30.
`The ’941 patent explains that “certain parameter values may be
`conveniently sensed continuously such as, for example, heart rate and
`activity level, and analyzed to predict or determine the presence of an
`arrhythmia.” Id. at 1:58–61. For example, the ’941 describes analyzing
`heart rate and activity level and identifying discordance between these two
`parameters to determine the presence or the future onset of an arrhythmia.
`
`
`4 Jinseok Lee et al., Atrial Fibrillation Detection using a Smart Phone, 15:1
`INT’L. J. OF BIOELECTROMAGNETISM 26–29 (2013) (Ex. 1011, “Lee-2013”).
`5 Chan et al., U.S. Patent No. 7,894,888 B2, issued Feb. 22, 2011 (Ex. 1048,
`“Chan”).
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`Id. at 1:61–66. If the presence or the future onset of an arrhythmia is
`identified, an electrocardiogram (ECG) may be initiated. Id. at 2:1–3.
`Figure 7 of the ’941 patent is reproduced below.
`
`
`Figure 7 schematically depicts “an algorithm for discordance monitoring.”
`Id. at 3:53–54. The ’941 patent explains that a heart rate and an activity
`level are sensed in step 700. Id. at 14:49–51. The ’941 patent describes
`sensing an activity level with a gyroscope or an accelerometer and sensing
`heart rate using “light based or other commonly used heart rate sensors.” Id.
`at 14:51–54. Figure 7 depicts various possible outcomes from the sensing of
`heart rate and activity level. Id. at Fig. 7, elements 702, 704, 706, 708, 710.
`For example, in step 702, the sensors detect “an increased heart rate . . .
`together with a normal or resting activity level.” Id. at 14:59–60. This result
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`is identified as a “discordance [that] may indicate the present of an
`arrhythmia.” Id. at 14:59–66. “As such, an ECG is caused to be sensed in
`step 712A.” Id. at 14:60–67. Steps 704, 706, 708, and 710 depict other
`potential outcomes from the sensing of heart rate and activity level as well as
`the actions taken for each potential outcome. Id. at 15:22–58.
`
`G. Challenged Claims
`The ’941 patent includes twenty-three claims. All of those are
`challenged here. Pet. 1. Claims 1 and 12 are the only independent claims.
`Claim 1 is illustrative of the claims challenged in this Petition and reads as
`follows:
`1. A method of cardiac monitoring, comprising:
`sensing an activity level of a user with a first sensor on a
`smartwatch worn by the user;
`when the activity level is resting, sensing a heart rate
`parameter of the user with a second sensor on the smartwatch;
`determining, by a processing device, that a discordance is
`present between the activity level value and the heart rate
`parameter;
`based on the presence of the discordance, indicating to the
`user, using the smartwatch, a possibility of an arrhythmia being
`present; and
`from an
`the user
`receiving electric signals of
`electrocardiogram sensor (“ECG”) on the smartwatch to confirm
`a presence of the arrhythmia, wherein the ECG sensor comprises
`a first electrode and a second electrode.
`Ex. 1001, 17:2–18.
`
`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.
`
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`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. 15–
`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. 16. Petitioner argues that
`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,
`available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial
`Practice Guide”). 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;
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`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
`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 ’941 patent is involved in two parallel proceedings. One of
`those proceedings, the Texas Litigation, has been stayed. Pet. 77. 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. 16.
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`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. See 19 U.S.C.
`§ 1337(b)(1). 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
`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. 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
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`of time, the Board has found this factor weights against institution.” Prelim.
`Resp. 19 (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
`(PTAB 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
`Patent Owner because it “shortens the deposition window.” Prelim. Resp. 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 date for
`issuance of 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, we determine that this factor weighs
`marginally in favor of exercising our discretion to deny institution.
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`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.
`Petitioner argues that “[n]othing of substance has occurred in the
`Texas [Litigation] because it was stayed in favor of the ITC [Investigation]
`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. Id. 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 16, 2021 institution decision deadline . . . , Apple
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`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.
`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.
`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 that we did not find it
`necessary to construe any claim terms to issue this decision.6 See supra
`Section II.D; 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.
`
`
`6 Patent Owner argues that “the Markman Order that issued in the ITC
`conflicts with [Petitioner’s] positions in this proceeding.” Prelim. Sur-reply
`5. As support, Patent Owner cites determination in the ITC Investigation
`that the term “discordance” should be “given its plain an ordinary meaning.”
`Id. On this preliminary record, we do not see any conflict between
`Petitioner’s proposed construction and the plain and ordinary meaning of the
`term discordance. See, Pet. 8–10.
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`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.
`21. 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
`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 that
`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.
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`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
`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-2013 or Chan.” Pet. 81 (citing Ex. 1051). Finally, Petitioner
`argues that inter partes review of the ’941 patent would include all of the
`claims of the ’941 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. 22–26; 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
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`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.
`Indeed, Patent Owner argues that the prior art cited in the Petition has
`“already entered the ITC case.” Prelim. Sur-reply 1 n.1. Finally, Patent
`Owner dismisses Petitioner’s argument that the ITC Investigation will
`address only 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).
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`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
`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, we determine that 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 6, 14. “If a
`petitioner is unrelated to a defendant in an earlier court proceeding, the
`Board has weighed this fact against exercising discretion to deny institution
`under NHK.” Id. at 13–14.
`Petitioner is the defendant in the Texas Litigation and the respondent
`in the ITC Investigation. This fact weighs in favor of the Board exercising
`its discretion to deny institution under § 314(a). Id. at 15.
`
`16
`
`
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`IPR2021-00972
`Patent 10,638,941 B2
`
`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
`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, which favors
`institution.” Id.
`Patent Owner argues that “the disputes between the petitioner and the
`patent owner are far ranging, including complex antitrust claims” and thus
`“instituting this IPR would do little to efficiently resolve the disputes
`between the parties.” Prelim. Resp. 27. Patent Owner also contends that
`Petitioner “raised claim construction disputes at the ITC that it did not
`include in its Petition and proposed a different construction for the
`‘discordance’ term than what it asserted in the Petition.” 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” and applied 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 the ITC’s definition.
`As an initial matter, we are not persuaded by Petitioner’s argument
`that our Fintiv analysis should account for the fact that the ITC lacks the
`
`17
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`IPR2021-00972
`Patent 10,638,941 B2
`
`authority to invalidate patents (Pet. 83; Prelim. Reply 5), because Fintiv
`contemplates application of the enumerated factors to ITC proceedings
`notwithstanding that the ITC cannot invalidate patents. Fintiv, Paper 11 at
`8–9 (“We recognize that ITC final invalidity determinations do not have
`preclusive effect, but, as a practical matter, it is difficult to maintain a
`district court proceeding on patent claims determined to be invalid at the
`ITC. Accordingly, the parties should also indicate whether the patentability
`disputes before the ITC will resolve all or substantially all of the
`patentability disputes between the parties, regardless of the stay.”)(internal
`footnotes omitted).
`With respect to the merits, Petitioner has met its institution burden, as
`addressed below, but we are not prepared on this preliminary record to
`characterize the merits of Petitioner’s challenge as especially “strong.” At
`the same time, we do not see glaring weaknesses in Petitioner’s case based
`on the arguments made to date. The merits are neutral for purposes of the
`Fintiv analysis.
`As to Patent Owner’s argument that the disputes between Petitioner
`and Patent Owner are “far ranging, including complex antitrust claims,” we
`are not persuaded that the existence of antitrust claims should be given
`weight in our Fintiv analysis. Patent Owner cites Regeneron
`Pharmaceuticals, Inc. v. Novartis Pharma AG, et al., IPR2020-01317, Paper
`15 (PTAB Jan. 15, 2021) as support for its position. Prelim. Resp. 27. In
`that case, the Board found that the existence of antitrust claims weighed in
`favor of exercising discretion to deny institution where “Petitioner . . . chose
`to pursue complex antitrust claims that implicate many of the same issues
`before us.” Regeneron, Paper 15 at 23–24. In contrast, here, the antitrust
`
`18
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`IPR2021-00972
`Patent 10,638,941 B2
`
`claim appears to be asserted by Patent Owner. Prelim. Resp. 27 (describing
`the anticompetitive activity as being that Petitioner “shut [Patent Owner] out
`of the relevant markets”). More importantly, Patent Owner does not direct
`us to persuasive evidence supporting that the antitrust claim implicates any
`of the issues before us. Absent a persuasive connection to the issues before
`us, Patent Owner’s assertion that Petitioner has engaged in anti-competitive
`activity does not weigh in favor of discretionary denial.
`Finally, we turn to Patent Owner’s arguments regarding inconsistent
`claim construction positions and inconsistent definitions of the person of
`ordinary skill in the art (“POSA”). We recognize the potential that if we
`construe the claims, we could determine that a construction other than that
`adopted by the ITC is appropriate. However, at this point in the proceeding,
`it does not appear that claim construction is likely to be dispositive of any of
`the issues before us. Indeed, at this stage in the proceeding, we determine
`that it is not necessary to construe any claim terms. See infra § III.C. As to
`the possibility of inconsistent POSA definitions, again, it does not appear
`that the definition of the POSA is likely to be dispositive as to any issues
`before us at least because Petitioner’s declarant, Dr. Chaitman, appears to
`qualify as one of ordinary skill in the art under Patent Owner’s proposed
`POSA definition. See infra § III.B (discussing this issue). To the extent Dr.
`Chaitman does not qualify as one of ordinary skill under the definition
`adopted by the ITC, which requires “at least five years of relevant work
`experience designing wearable devices and/or se
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