Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Entered: December 15, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA, INC. and SAMSUNG
`ELECTRONICS CO., LTD.,
`Petitioner,
`v.
`RFCYBER CORP.,
`Patent Owner.
`
`IPR2021-00980
`Patent 9,189,787 B1
`
`
`
`
`
`
`
`
`
`Before PATRICK R. SCANLON, KEVIN W. CHERRY, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`SAWERT, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 11
`Entered: December 15, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA, INC. and SAMSUNG
`ELECTRONICS CO., LTD.,
`Petitioner,
`v.
`RFCYBER CORP.,
`Patent Owner.
`
`IPR2021-00980
`Patent 9,189,787 B1
`
`
`
`
`
`
`
`
`
`Before PATRICK R. SCANLON, KEVIN W. CHERRY, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`SAWERT, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
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`IPR2021-00980
`Patent 9,189,787 B1
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`INTRODUCTION
`I.
`Samsung Electronics America, Inc. and Samsung Electronics Co.,
`Ltd. (“Petitioner”) filed a petition to institute inter partes review of claims
`1–19 of U.S. Patent No. 9,189,787 B1 (Ex. 1001, “the ’787 patent”). Paper
`2 (“Pet.”). RFCyber Corp. (“Patent Owner”) filed a Preliminary Response.
`Paper 6 (“Prelim. Resp.”). On our authorization, Petitioner filed a Reply to
`Patent Owner’s Preliminary Response. Paper 9 (“Reply”). Patent Owner
`filed a Sur-Reply. Paper 10 (“Sur-Reply”).
`We have authority under 35 U.S.C. § 314 to determine whether to
`institute an inter partes review. The standard for instituting an inter partes
`review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes
`review may not be instituted unless “there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” The Supreme Court has held that the Board, in a decision to
`institute under 35 U.S.C. § 314(b), may not institute review on less than all
`claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348,
`1355–56 (2018). Moreover, in accordance with our rules, “[w]hen
`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.” 37 C.F.R. § 42.108(a) (2020); see also PGS
`Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting
`the statute to require “a simple yes-or-no institution choice respecting a
`petition, embracing all challenges included in the petition”).
`After considering the Petition, the Preliminary Response, the Reply,
`the Sur-Reply, and the evidence of record, we determine the information
`presented shows a reasonable likelihood that Petitioner would prevail in
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`establishing the unpatentability of at least one of the challenged claims of
`the ’787 patent. Accordingly, we institute an inter partes review of all
`challenged claims (i.e., claims 1–19) of the ’787 patent on the grounds
`asserted in the Petition.
`
`II. BACKGROUND
`
`A. Related Matters
`The parties identify the following district-court proceedings as related
`matters involving the ’787 patent: RFCyber Corp. v. Google LLC, No. 2:20-
`cv-00274 (EDTX); RFCyber Corp. v. LG Electronics, Inc., No. 2:20-cv-
`00336 (EDTX); and RFCyber Corp. v. Samsung Electronics Co., 2:20-cv-
`00335 (EDTX) (consolidated with No. 2:20-cv-00274). Pet. 3–4; Paper 4, 2
`(Patent Owner’s Mandatory Notices).
`The parties also identify the following Board proceedings involving
`the same parties and related patents: IPR2021-00978 (U.S. Patent No.
`8,448,855 B1 (“the ’855 patent”)); IPR2021-00979 (U.S. Patent No.
`8,118,218 B2 (“the ’218 patent”)); and IPR2021-00981 (U.S. Patent
`No. 9,240,009 B2 (“the ’099 patent”)). Pet. 4; Paper 4, 1–2. The parties
`also identify the following Board proceedings involving the ’787 patent or
`related patents, filed by petitioner Google LLC: IPR2021-00954 (the ’855
`patent); IPR2021-00955 (the ’787 patent); IPR2021-00956 (the ’009 patent);
`IPR2021-00957 (the ’218 patent); PGR2021-00028 (U.S. Patent No.
`10,600,046 B2); and PGR2021-00029 (challenging U.S. Patent
`No. 10,600,046 B2). Pet. 3–4; Paper 4, 1. The proceedings in IPR2021-
`00954, IPR2021-00955, IPR2021-00956, and IPR2021-00957 were
`terminated without a decision on institution on October 20, 2021. See, e.g.,
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`IPR2021-00954, Paper 12. The proceeding in PGR2021-00029 was
`terminated on November 16, 2021. PGR2021-00029, Paper 16.
`B. Real Parties in Interest
`Petitioner identifies its real party in interest as Samsung Electronics
`America, Inc. and Samsung Electronics Co., Ltd. Pet. 3. Patent Owner
`identifies RFCyber Corp. as its real party in interest. Paper 4, 1.
`C. Overview of the ’787 patent
`The ’787 patent relates to commerce over networks, and more
`specifically, to a method and apparatus for funding an electronic purse (“e-
`purse”) for use in portable devices configured for both electronic commerce
`(“e-commerce”) and mobile commerce (“m-commerce”). Ex. 1001, code
`(57), 1:15–19.
`The ’787 patent states that there is a “need for a mechanism in
`devices, especially portable devices, functioning as an electronic purse (e-
`purse) to be able to conduct transactions over an open network with a
`payment server without compromising security.” Id. at 1:44–48. Although
`closed systems—such as smart card technology—existed, they were
`“difficult to be expanded into other areas such as e-commerce and
`m-commerce” because “stored values and transaction information are stored
`in data storage of each tag that is protected by a set of keys,” which keys
`must be “delivered to the card for authentication before data can be accessed
`during a transaction.” Id. at 1:33–39. According to the ’787 patent, this
`required delivery of keys “makes systems using such technology difficult to
`be expanded to an open environment such as the Internet for e-commerce
`and cellular networks for m-commerce as the key delivery over a public
`domain network causes security concerns.” Id. at 1:39–43. The ’787 patent
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`purports to overcome the limitations of the prior art by providing a system
`for funding an e-purse stored on a portable device. The e-purse allows for
`transactions “over an open network with a payment server without
`compromising security.” Id. at 1:60–64.
`Figure 2, reproduced below, provides a schematic view of one
`embodiment of the ’787 patent.
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`
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`FIG. 2 shows an exemplary architecture diagram 200 according
`to one embodiment of the ’787 patent. Ex. 1001, 3:6–7.
`As shown in Figure 2, a portable device is pre-loaded with smart card
`module 202 comprising an emulator 208, an e-purse applet 206, and a purse
`manager midlet 204. Id. at 5:1–48. The portable device may be a cellphone
`that is “near field communication (NFC) enabled” and includes an RFID
`interface “that allows the cellphone to act as a tag.” Id. at 5:4–10.
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`The purse management midlet 204 “is a software component” that
`“acts as an agent to facilitate communications between an e-purse applet 206
`and one or more payment network and servers 210 to conduct transactions.”
`Id. at 5:16–20. The e-purse applet 206 is built on a global platform and “acts
`as a gatekeeper to regulate or control the data exchange.” Id. at 4:55–57,
`5:11–13. The emulator 208 is “a hardware device or a program that pretends
`to be another particular device or program that other components expect to
`interact with.” Id. at 4:47–50.
`In one embodiment of the ’787 patent, a user may fund the e-purse
`from a bank account by a process conducted via the m-commerce path
`shown in Figure 2. Id. at 7:22–30. Figure 4C, reproduced below, “shows an
`exemplary block diagram 450 of related blocks interacting with each other to
`achieve the process” of funding the e-purse. Id. at 7:26–28.
`
`
`
`FIG. 4C “shows an exemplary block diagram of related blocks
`interacting with each other to achieve the process” of financing
`an e-purse according to one embodiment of the ’787 patent.
`Ex. 1001, 3:21–23.
`The user 432 enters a personal identification number (PIN), which, if
`valid, activates the purse manager midlet 434. Id. at 7:34–37. The purse
`manager midlet “communicates with the e-purse applet 436 for a response
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`that is then sent to the payment network and server 440.” Id. at 7:44–47.
`The payment network and server 440 “verifies that the response is from an
`authorized e-purse originally issued therefrom with a SAM module 444.”
`Id. at 8:1–4. “After the response is verified, the payment network and server
`440 sends a request to the [user’s] financing bank 442.” Id. at 8:4–7. Upon
`receiving authorization from the financing bank, “the server 440 will either
`reject the request or form a network response to be sent to the midlet 434.”
`Id. at 8:9–12. “The e-purse verifies the authenticity (e.g., in APDU format)
`and sends commands to the emulator 438 and updates the transaction logs.”
`Id. at 8:13–15. According to the ’787 patent, “[b]y now, the e-purse finishes
`the necessary steps and returns a response to the midlet 434 that forwards an
`(APDU) response in a network request to the payment server 440.” Id. at
`8:15–18.
`D. The Challenged Claims
`Petitioner challenges claims 1–19 of the ’787 patent. Pet. 6. Of the
`challenged claims, claims 1 and 11 are independent. Ex. 1001, 8:49–9:4,
`9:49–10:14. Claim 1, reproduced below, is illustrative of the subject matter
`recited in the challenged claims (bracketing added).
`1. [PREAMBLE] A portable device for commerce, the
`portable device comprising:
`[1a] an emulator loaded in a smart card module for storing
`security values and updated transaction logs, and [1b] an
`e-purse applet to cause the portable device to function as
`an electronic purse (e-purse), [1c] wherein both of the
`emulator and e-purse applet are already personalized via
`a personalization process built on a first security channel
`so that the emulator is set to store a set of keys for
`subsequent data access authentication and the e-purse
`applet is configured to conduct a transaction with a
`network server over a second security channel;
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`Exhibit No.
`1003
`1004
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`[1d] a first interface configured to perform field communication
`(NFC) with a reader to perform electronic commerce
`with the e-purse applet against a fund stored in the
`emulator;
`[1e] a second interface configured to perform mobile commerce
`with a payment server via an application against the fund
`stored in the emulator, and
`[1f] a purse manager midlet being executed in the portable
`device to act as an agent to facilitate communications
`between the e-purse applet and a payment server to
`conduct transactions therebetween.
`Id. at 8:49–9:4.
`E. Evidence
`Petitioner submits the following evidence:
`Evidence
`Declaration of Gerald W. Smith
`Dua, US 2006/0165060 A1 (published July 27, 2006)
`(“Dua”)
`GlobalPlatform, Card Specification, Version 2.1.1 (March
`2003) (“GlobalPlatform”)
`Philips Semiconductors SmartMX, P5CT072, Secure Dual
`Interface PKI Smart Card Controller, Rev. 1.3 (Oct. 4,
`2004) (“Philips”)
`
`1006
`
`1012
`
`F. Asserted Ground of Unpatentability
`Petitioner asserts the following ground of unpatentability:
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)
`1–19
`1031
`Dua, GlobalPlatform, Philips
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125
`Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. The ’787 patent claims
`benefit of a September 24, 2006, filing date, which is before the effective
`date of the applicable AIA amendments. Ex. 1001, code (63). Petitioner
`does not contest the ’787 patent’s priority date. Pet. 6. Thus, we refer to the
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`Pet. 6. Patent Owner disputes Petitioner’s asserted ground of
`unpatentability. See generally Prelim. Resp.
`III. DISCRETION UNDER 35 U.S.C. § 314(a)
`As noted above, Petitioner and Patent Owner are parties to a parallel
`district-court litigation involving the ’787 patent: RFCyber Corp. v.
`Samsung Electronics Co., 2:20-cv-00335 (EDTX) (the “district-court
`litigation”). Supra § II.A. Pointing to the district-court litigation, Patent
`Owner argues that we should exercise our discretion under 35 U.S.C.
`§ 314(a) and deny institution. Prelim. Resp. 17–25; Sur-Reply 1–5.
`Petitioner opposes. Pet. 11–12; Reply 1–5. Upon consideration of the
`parties’ respective arguments, discussed below, and the relevant Fintiv
`factors as applied to the record in this case, we find that the factors do not
`weigh in favor of exercising our discretion under § 314(a).
`A. Legal Framework
`Section 314(a) does not require the Director to institute an inter partes
`review. See 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
`IPR proceeding.”). Rather, a decision whether to institute is within the
`Director’s discretion, and that discretion has been delegated to the Board.
`See 37 C.F.R. § 42.4(a); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2140 (2016) (“[T]he agency’s decision to deny a petition is a matter
`committed to the Patent Office’s discretion.”).
`
`
`pre-AIA version of 35 U.S.C. § 103. Our decision would be the same were
`we to apply the AIA version of the statute.
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`As the November 2019 Consolidated Trial Practice Guide (“CTPG”)2
`noted, the Leahy-Smith America Invents Act (“AIA”) was “designed to
`establish a more efficient and streamlined patent system that will improve
`patent quality and limit unnecessary and counterproductive litigation costs.”
`CTPG at 56 (quoting H.R. Rep. No. 112-98, pt. 1, at 40 (2011), 2011
`U.S.C.C.A.N. 67, 69 (stating that post-grant reviews were meant to be
`“quick and cost effective alternatives to litigation”)); see also S. Rep. No.
`110-259, at 20 (2008). The Board recognized these goals of the AIA, but
`also “recognize[d] the potential for abuse of the review process by repeated
`attacks on patents.” Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 at 16−17 (PTAB Sept. 6, 2017) (precedential as to
`§ II.B.4.i) (“General Plastic”).
`In determining whether to exercise discretion to deny institution under
`§ 314(a) on behalf of the Director for reason of parallel court proceeding(s),
`we are guided by the Board’s precedential decisions in NHK Spring Co. v.
`Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018)
`(“NHK”) and Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB
`Mar. 20, 2020) (“Fintiv”). In NHK, the Board found that the “advanced state
`of the district court proceeding” was a “factor that weighs in favor of
`denying” the petition under § 314(a). NHK, Paper 8 at 20. The Board
`determined that “[i]nstitution of an inter partes review under these
`circumstances would not be consistent with ‘an objective of the AIA . . . to
`provide an effective and efficient alternative to district court litigation.’” Id.
`(quoting Gen. Plastic at 16–17).
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`
`2 Available at https://www.uspto.gov/sites/default/files/documents/
`tpgnov.pdf.
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`In Fintiv, the Board explained that “cases addressing earlier trial dates
`as a basis for denial under NHK have sought to balance considerations such
`as system efficiency, fairness, and patent quality.” Fintiv, Paper 11 at 5.
`Fintiv sets forth six non-exclusive factors for determining “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.” Id. at 6.
`These factors consider:
`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.
`Id. at 5–6. We discuss the parties’ arguments in the context of considering
`the above factors. In evaluating the 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.
`1. Whether the court granted a stay or evidence exists that one may
`be granted if a proceeding is instituted
`Petitioner filed a motion to stay the parallel district-court litigation
`pending resolution of the Board’s proceedings against the ’787 patent, which
`Patent Owner opposed. Prelim. Resp. 19. The parties completed their
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`briefing on this issue in July, 2021, but as of this date, the district court has
`yet to issue a ruling on Petitioner’s motion. Id. Patent Owner argues that
`the first Fintiv factor weighs in favor of exercising our discretion to deny
`institution because “the long-standing practice in the Eastern District of
`Texas is to deny motions to stay unless all asserted claims in the case are
`subject to instituted proceedings in the PTAB.” Id. (citing AGIS Software
`Dev. LLC v. Google LLC, No. 2:19-cv-00361-JRG, 2021 WL 465424, at *2
`(E.D. Tex. Feb. 9, 2021) (“It has been this Court’s consistent and long
`established practice to deny motions to stay pending IPR and EPR [ex parte
`reexamination] when the PTAB or PTO have instituted review on less than
`all asserted claims of all asserted patents . . . .”)).
`Although we have considered Patent Owner’s argument, determining
`how the district court might handle Petitioner’s motion for stay invites
`conjecture. It would be improper to speculate, at this stage, what the district
`court might do about the motion to stay, given the particular circumstances
`of this case. Accordingly, this factor is neutral to the exercise of our
`discretion. Cf. Sand Revolution II, LLC v. Continental Intermodal Group –
`Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020)
`(informative) (“In the absence of specific evidence, we will not attempt to
`predict how the district court in the related district court litigation will
`proceed 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 our control and to which the Board is not
`privy.”); Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB
`May 13, 2020) (informative) (“Fintiv II”) (“We decline to infer, based on
`actions taken in different cases with different facts, how the District Court
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`would rule should a stay be requested by the parties in the parallel case here.
`This factor does not weigh for or against discretionary denial in this case”).
`2. Proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision
`A trial in the parallel district-court litigation is currently set for March
`2022. Pet. 12; Prelim. Resp. 20. The Board’s projected statutory deadline
`for a final written decision is December 2022, roughly nine months later.
`See 35 U.S.C. § 316(a)(11). As explained in Fintiv, “[i]f 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. Paper
`11 at 9. This is because an earlier trial date generally implicates concerns
`about efficiency and duplication of efforts. Id. at 6; see also Snap, Inc. v.
`SRK Tech. LLC, IPR2020-00820, Paper 15 at 8–9 (PTAB Oct. 21, 2020)
`(precedential as to § II.A).
`The Board has assessed this second factor on a case-by-case basis.
`On one hand, Fintiv took the district court’s trial schedule at “face value”
`and declined to question it “absent some strong evidence to the contrary.”
`Fintiv II, Paper 15 at 12–13. On the other hand, the panel in Sand
`Revolution was persuaded by the uncertainty in the schedule despite a
`scheduled trial date. Sand Revolution, Paper 24 at 8–9. Moreover, as
`recognized in Sand Revolution, “even in the extraordinary circumstances
`under which the entire country is currently operating because of the COVID-
`19 pandemic, the Board continues to be fully operational.” Id. at 9.
`This factor looks at the proximity of the trial date to the date of our
`final decision to assess the weight to be accorded a trial date set earlier than
`the expected final written decision date. This proximity inquiry is a proxy
`for the likelihood that the trial court will reach a decision on validity issues
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`before the Board reaches a final written decision. Unlike the facts here, a
`trial set to occur soon after the institution decision is fairly likely to happen
`before the Board’s final decision, even if the trial date were postponed due
`to intervening circumstances.
`Given that the trial is currently scheduled for approximately three
`months from institution and nine months before the final decision, the
`efficiency and system integrity concerns that animate the Fintiv analysis are
`present. For this reason, we find that the second Fintiv factor weighs in
`favor of exercising our discretion to deny institution under § 314(a).
`3. Investment in the parallel proceeding by the court and the parties
`Patent Owner argues that the third Fintiv factor weighs in favor of
`exercising our discretion to deny institution because “[s]ignificant work in
`the District Court Litigation has already taken place, and nearly all
`substantive work will be complete by the Board’s institution decision in
`December.” Prelim. Resp. 21. Specifically, Patent Owner argues that, by
`the time of a decision on institution, “fact and expert discovery, and claim
`construction will be complete, and both opening and rebuttal expert reports
`(including on validity issues) will have been served.” Id. Patent Owner also
`argues that “[d]ispositive motions will be filed within days,” and that the
`parties “have participated heavily in other facets of discovery.” Id.
`The third Fintiv factor “is related to the trial date factor, in that more
`work completed by the parties and the court in the parallel proceeding tends
`to support the arguments that the parallel proceeding is more advanced, a
`stay may be less likely, and instituting would lead to duplicative costs.”
`Fintiv, Paper 15 at 10. Since the filing of Patent Owner’s complaint, the
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`parties appear to have invested significant time and resources in the parallel
`district-court litigation, as Patent Owner details above.
`The third Fintiv factor also provides that a petitioner’s diligence or
`delay in filing a petition may be relevant. See Fintiv II, Paper 15 at 11–12.
`If the evidence shows that a petitioner filed its petition expeditiously, such as
`promptly after becoming aware of the claims being asserted, this fact has
`weighed against denying institution. Id. at 11. If, however, the evidence
`shows that the petitioner did not file its petition expeditiously, such as at or
`around the same time that the patent owner responded to the petitioner’s
`invalidity contentions, or even if a petitioner cannot explain the delay in
`filing its petition, these facts have favored denial. Id. at 11–12.
`Here, Patent Owner filed its complaint in the parallel district-court
`litigation on October 16, 2020, and Petitioner filed its Petition on June 8,
`2021. See Ex. 3001, 3; Paper 3, 1 (Notice of Filing Date Accorded to
`Petition). Petitioner contends that, at the time of its filing, “District Court
`proceedings are at the earliest stage: a scheduling conference was held on
`May 12, 2021, discovery has just begun, no depositions have occurred and
`the court has not engaged in claim construction or motion practice.” Pet. 11.
`Petitioner also contends that Patent Owner’s “infringement contentions were
`served May 12, 2021” and that “Petitioners filed this Petition within a month
`thereof and about four months prior to the §315(b) deadline.” Id. at 11–12.
`Patent Owner does not appear to address Petitioner’s diligence or lack
`thereof. See generally Prelim. Resp.
`We find on this record that the evidence shows that Petitioner filed its
`petition expeditiously after being served with Patent Owner’s infringement
`contentions. Pet. 11–12; see also Ex. 2001, 5 (docket control order setting
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`May 12, 2021, as the amended deadline for serving infringement
`contentions). We further note that the district court’s docket control order
`set forth July 14, 2021, as the amended deadline for serving invalidity
`contentions, which is after the Petition’s filing date. Ex. 2001, 5. Thus,
`there is no evidence in this record that Patent Owner responded to
`Petitioner’s invalidity contentions before the Petition’s filing date, or that
`Petitioner otherwise took improper advantage by delaying the filing of the
`Petition. We also determine that, in this case, less than one month after
`receiving Patent Owner’s infringement contentions was a reasonable time in
`which to prepare and file this Petition for inter partes review, given that
`Petitioner also filed three other petitions relating to the other patents Patent
`Owner asserts in same district-court litigation. Supra § II.A.
`In sum, the evidence here shows that the parties have completed
`substantial work in the parallel district-court litigation. The evidence also
`shows, however, that Petitioner filed the Petition within a reasonable time
`after receiving Patent Owner’s infringement contentions. In view of these
`facts, we determine that the third Fintiv factor does not weigh in favor of
`exercising our discretion to deny institution, or at least is neutral.
`4. Overlap between issues raised in the petition and in the parallel
`proceeding
`Petitioner contends that it has filed a stipulation in the parallel district
`court proceeding “voluntarily stipulat[ing] that, if the Board institutes trial,
`Petitioners will not pursue in the litigation the specific grounds asserted in
`the IPR or any other ground . . . that was raised or could have been
`reasonably raised in that IPR (i.e., any ground that could be raised under
`§§ 102 or 103 on the basis of prior art patent or printed publications).”
`Pet. 12 (internal quotation omitted). Petitioner contends that this stipulation
`
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`IPR2021-00980
`Patent 9,189,787 B1
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`“weighs strongly in favor of not exercising discretion to deny institution.”
`Id. (quoting Sotera Wireless, Inc. v. Masimo Corporation, IPR2020-01019,
`Paper 12 at 19 (PTAB Dec. 1, 2020) (precedential as to § II.A)).
`Patent Owner disagrees, arguing that the fourth Fintiv factor weighs in
`favor of exercising our discretion to deny institution because the parallel
`district-court litigation involves the same arguments and the same prior-art
`references that Petitioner relies upon here. Prelim. Resp. 22–23. Patent
`Owner also argues that, although the number of claims finally asserted in the
`district-court litigation is fewer than the number challenged in the Petition,
`“there is additional substantial overlap between the limitations in the
`petitioned claims and those in the District Court Litigation.” Sur-Reply 1–2.
`For these reasons, Patent Owner argues, “[t]he likelihood of inefficiency and
`conflicting decisions is particularly significant in this case,” and favors
`discretionary denial. Prelim. Resp. 22–23. Finally, Patent Owner argues
`that Petitioner’s stipulation “is not the absolute stipulation the Board has
`found persuasive in Sotera” because Petitioner “leaves itself an out (a
`Federal Circuit decision or Act of Congress) to continue prosecuting the
`same arguments in the litigation as it presents in this proceeding.” Prelim.
`Resp. 23.
`We determine that Petitioner’s stipulation weighs strongly in favor of
`not exercising our discretion to deny institution under § 314(a). Sotera,
`Paper 12 at 19. Petitioner’s stipulation states:
`Samsung hereby stipulates that, unless a change of law allows
`otherwise (e.g., a Federal Circuit decision; an act of Congress),
`for those patents for which the United States Patent & Trademark
`Office Patent Trial and Appeal Board institutes an IPR, Samsung
`will not pursue in this litigation the specific grounds asserted in
`the instituted IPR or “any other ground . . . that was raised or
`
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`IPR2021-00980
`Patent 9,189,787 B1
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`could have been reasonably raised in [that] IPR (i.e., any ground
`that could be raised under §§ 102 or 103 on the basis of prior art
`patent or printed publications).”
`Ex. 1005, 1–2 (quoting Sotera, Paper 12 at 18–19) (alterations in original).
`Although we acknowledge Patent Owner’s argument that Petitioner’s
`stipulation contains “an out,” we are not persuaded that this “out,” in reality,
`would have the effect of allowing Petitioner to continue its prior-art based
`invalidity arguments in district court. Indeed, Petitioner’s stipulation mirrors
`substantially the estoppel provision of 35 U.S.C. § 315(e)(2). Thus, we find
`Petitioner’s stipulation broad enough to adequately address concerns about
`inefficiency and potentially conflicting decisions that the fourth Fintiv factor
`intended to address. Fintiv, Paper 11 at 12; Sotera, Paper 12 at 18–19.
`5. Whether the petitioner and the defendant in the parallel
`proceeding are the same party
`There is no dispute that the Petitioner is a defendant in the parallel
`district-court litigation. Thus, the fifth Fintiv factor weighs in favor of
`exercising our discretion to deny institution under § 314(a).
`6. Other circumstances that impact the Board’s exercise of
`discretion, including the merits
`Patent Owner argues that the sixth Fintiv factor weighs in favor of
`exercising our discretion to deny institution denial because “Patent Owner
`has a strong case to antedate the primary Dua reference.” Prelim. Resp. 24.
`Patent Owner argues that its evidence of diligence and reduction to practice
`includes “proprietary, highly confidential source code,” and only the district
`court “has experience and procedures for handling source code.” Id. Patent
`Owner argues that “[t]he Board’s procedures are not intended to handle such
`highly confidential materials,” and therefore, if the Board institutes trial:
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`IPR2021-00980
`Patent 9,189,787 B1
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`Patent Owner will be presented with the unfair decision between:
`i) risking disclosure by producing its source code under the
`Board’s procedures and, potentially having to electronically file
`the same over the Internet; or ii) forego antedating the Dua
`reference, which would risk invalidation of the ’855 Patent by a
`reference that is not prior art.
`Id. at 24–25; see also Sur-Reply 5 (stating that Patent Owner “should not be
`forced into a choice where it can either forego those protections or risk
`losing a valid patent to non-prior art”).
`Petitioner responds that it has filed a motion to strike Patent Owner’s
`evidence relating to antedating Dua in the district court, due to Patent
`Owner’s alleged failure “to timely present its priority date and alleged swear
`behind evidence” in the district-court litigation. Reply 2. Petitioner also
`contends that Patent Owner’s evidence is not persuasive to show prior
`invention. Id. at 3–4 (contending that Patent Owner’s evidence is “irrelevant
`and/or unauthentic,” lacks specific correlation to the claims of the patent,
`and fails to show diligence “between the alleged conception date and the
`alleged reduction to practice date”). Petitioner contends that, in any event,
`“the PTAB [has] wide latitude to control the discovery and dissemination of
`confidential information including source code” under 37 C.F.R. § 42.54 and
`that Petitioner “will not oppose any motion by Patent Owner to have its
`alleged trade secret information submitted to the Board in paper form only
`(i.e., non-electronic form) so long as Petitioners’ lead counsel also receives
`the same paper copy.” Id. at 4–5.
`Upon considering the arguments and evidence submitted by the
`parties, we find the allegations of both to be highly speculative and generally
`unhelpful to the Fintiv analysis. As to Pa
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