IPR2021-01303
`U.S. Patent No. 8,688,028
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`HYUNDAI MOTOR AMERICA,
`Petitioner
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`v.
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`STRATOSAUDIO, INC.,
`Patent Owner
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`IPR2021-01303
`U.S. Patent No. 8,688,028
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`PATENT OWNER PRELIMINARY RESPONSE
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`U.S. Patent No. 8,688,028
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`
`
`HYUNDAI MOTOR AMERICA,
`Petitioner
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner
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`
`IPR2021-01303
`U.S. Patent No. 8,688,028
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`PATENT OWNER PRELIMINARY RESPONSE
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`TABLE OF CONTENTS
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`IPR2021-01303
`U.S. Patent No. 8,688,028
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`Fintiv Factor 1 Favors Denial Because The District Court Has
`Not Granted A Stay And Is Unlikely To Do So If The Board
`Instituted Trial ............................................................................. 6
`Fintiv Factor 2 Favors Denial Because The District Court Trial
`Date Is Several Months Before The Board’s Statutory Deadline
`For Final Written Decision ....................................................... 12
`Fintiv Factor 3 Favors Denial Because Of The Substantial
`Investment Into The Hyundai Parallel Litigation By The
`District Court And Parties ......................................................... 15
`Fintiv Factor 4 Favors Denial Due To The Extensive Overlap
`Between The Petitioner’s Invalidity Contentions In The
`Hyundai Parallel Litigation And The Petition .......................... 18
`Fintiv Factor 5 Favors Denial Because The Same Parties Are
`Involved In This Petition And The Hyundai Parallel Litigation
` ................................................................................................... 22
`Fintiv Factor 6 Favors Denial Because Other Circumstances,
`Including The Merits, Favor Exercising Discretion ................. 23
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`A. Ground 1 Fails To Make A Threshold Showing That Claims 11
`And 13-20 Are Obvious Over Curtin ....................................... 26
`Curtin Alone Does Not Render Claim 11 Obvious ........ 26
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`U.S. Patent No. 8,688,028
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`a.
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`b.
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`c.
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`the media content
`Element 11[c]: extracting
`identifying date from the data stream, associating
`each media content identifying data element with
`at least one of a plurality of media content .......... 26
`Element 11[d]: storing in an electronic memory of
`the communication device, at minimum, media
`content identifying data elements into identifying
`data aggregates, each identifying data aggregate
`associated with at least one of a plurality of media
`content and the at least one broadcast segment,
`wherein the at least one broadcast segment is
`corollary to the at least one of the plurality of
`media content; and ............................................... 28
`Element 11[e]: providing for presentation of at
`least a portion of the data elements stored in the
`electronic memory of the communication device,
`whereby
`the
`providing
`provides
`selective
`outputting, using an interface, of at least one of the
`following: the media content identifying data, the
`media content, the corollary broadcast segment, a
`temporal position of
`the corollary broadcast
`segment of the broadcast stream. ......................... 30
`Curtin Alone Does Not Render Claim 13 Obvious ........ 31
`Curtin Alone Does Not Render Claim 16 Obvious ........ 32
`Curtin Alone Does Not Render Claim 17 Obvious ........ 34
`Curtin Alone Does Not Render Claims 14-15 And 18-20
`Obvious ........................................................................... 34
`Ground 2 Fails To Make A Threshold Showing That Claims 11
`And 13-20 Are Obvious Over Curtin In View Of Crosby........ 35
`All Grounds Fail To Make A Threshold Showing For Improper
`Reliance On The Expert Declaration ........................................ 35
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`B.
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`C.
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`U.S. Patent No. 8,688,028
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`A.
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`B.
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`Petitioner Fails To Show A Reasonable Likelihood That At
`Least One Of The Challenged Claims Is Unpatentable In Any
`Of The Asserted Grounds ......................................................... 39
`Even If The Board Finds That Petitioner Demonstrates A
`Reasonable Likelihood Of Prevailing With Respect To One Or
`More Claims, The Board Should Still Exercise Its Discretion
`To Deny Institution ................................................................... 40
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`IPR2021-01303
`U.S. Patent No. 8,688,028
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`TABLE OF AUTHORITIES
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`CASES
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`Page(s)
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`Apple Inc. v. Fintiv, Inc.,
` IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) .....................................passim
`Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP,
` 616 F.3d 1249 (Fed. Cir. 2010) ................................................................... 32, 33
`Chevron Oronite Co. v. Infineum USA LP,
` IPR2018-00923, Paper 9 (PTAB Nov. 7, 2018) ................................................ 40
`Cisco Sys., Inc. v. Egenera, Inc.,
` IPR2017-01341, Paper 10 (PTAB Nov. 13, 2017) ............................................ 34
`Cisco Sys. Inc. v. Monarch Networking Sols. LLC,
` IPR2020-01227, Paper 11 (PTAB Mar. 4, 2021) .............................................. 18
`Comcast Cable Commc’ns, LLC v. Promptu Sys. Corp.,
` 838 F. App’x 551 (Fed. Cir. 2021) .................................................................... 32
`Cont’l Intermodal Grp. v. Sand Revolution LLC,
` No. 7:18-cv-00147, Dkt. No. 104 (W.D. Tex. Jul. 22, 2020) (Albright, J.) .... 7, 9
`Corning Inc. v. DSM IP Assets B.V.,
` IPR2013-00045, Paper 92 (PTAB May 9, 2014) .............................................. 38
`Cuozzo Speed Techs., LLC v. Lee,
` 136 S. Ct. 2131 (2016) ....................................................................................... 39
`Deeper, UAB v. Vexilar, Inc.,
` IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) ............................................... 40
`Diamondback Indus., Inc. v. Repeat Precision, LLC,
` No. 6:19-cv-00034, Dkt. No. 60 (W.D. Tex. June 2, 2019) (Albright, J.) ........ 14
`E-One, Inc. v. Oshkosh Corp.,
` IPR2019-00161, Paper 16 (PTAB May 15, 2019) ............................................ 12
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`E-One, Inc. v. Oshkosh Corp.,
` IPR2019-00162, Paper 16 (PTAB June 5, 2019) .............................................. 41
`Engel Indus., Inc. v. Lockformer Co.,
` 96 F.3d 1398 (Fed. Cir. 1996) ........................................................................... 33
`ESW Holdings v. Roku, Inc.,
` No. 6:19-cv-00044, Dkt Nos. 48, 139, 165 (W.D. Tex.) (Albright, J.) ............. 13
`Google LLC v. Personalized Media Commc’ns, LLC,
` IPR2020-00722, Paper 22 (PTAB Aug. 31, 2020) ............................................ 21
`Google LLC, v. Uniloc 2017,
` IPR2020-00115, Paper 8 (PTAB Mar. 27, 2020) ........................................ 11, 24
`Harmonic Inc. v. Avid Tech., Inc.,
` 815 F.3d 1356 (Fed. Cir. 2016) ......................................................................... 39
`Hewlett Packard Enter. Co., Aruba Networks, LLC v. Q3 Networking LLC,
` IPR2021-00754, 2021 Pat. App. LEXIS 6076 (PTAB Oct. 8, 2021) ............... 20
`Hopkins Mfg. Corp. v. Cequent Performance Prods., Inc.,
` IPR2015-00613, Paper 9 (PTAB Aug. 7, 2015) ................................................ 34
`HTC Corp. v. Cellular Commc’ns Equip., LLC,
` 701 F. App’x 978 (Fed. Cir. 2017) ................................................................... 33
`Intel Corp. v. VLSI Tech. LLC,
` IPR2020-00583, Paper 22 (PTAB Oct. 5, 2020) ................................................. 6
`Intel Corp. v. VSLI Tech. LLC,
` IPR2020-00142, Paper 17 (PTAB June 4, 2020) .............................................. 18
`Kerr Machine Co. v. Vulcan Indus. Holdings, LLC,
` No. 6:20-cv-00200, Dkt. No. 28 (W.D. Tex. Aug. 2, 2020) (Albright, J.) ..... 7, 9
`Kinetic Techs., Inc. v. Skyworks Sols., Inc.,
` IPR2014-00529, Paper 8 (PTAB Sept. 23, 2014) ............................................. 38
`Kirsch Rsch. and Dev., LLC v. IKO Indus., Inc.,
` No. 6:20-cv-00317-ADA, Dkt. 81 (W.D. Tex. Oct. 5, 2021) ............................. 8
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`Koninklijke Philips N.V. v. Google LLC,
` 948 F.3d 1330 (Fed. Cir. 2020) ......................................................................... 29
`Kuster v. W. Dig. Techs., Inc.,
` No. 6:20-cv-00563, Dkt. No. 65 (W.D. Tex. Mar. 12, 2021) (Albright, J.) ........ 7
`Lego Sys., Inc. v. MQ Gaming LLC,
` IPR2020-01446, Paper 14 (PTAB Feb. 16, 2021) ............................................. 33
`LG Elecs., Inc. and Hisense Co., Ltd. v. Polaris PowerLED Techs., LLC,
` IPR2020-01337, Paper 11 (PTAB Mar. 9, 2021) .............................................. 33
`MED-EL Elekromedizinische Gerate Ges.m.b.H. v. Advanced Bionics AG,
` IPR2020-00190, Paper 15 (PTAB June 3, 2020) .............................................. 13
`Multimedia Content Mgmt. LLC v. Dish Network LLC,
` No. 6:18-cv-00207, Dkt. No. 73 (W.D. Tex. May 30, 2019) (Albright, J.) ........ 8
`MV3 Partners LLC v. Roku, Inc.,
` No. 6:18-cv-00308, Dkt. Nos. 293, 301, 306 (W.D. Tex.) (Albright, J.) .......... 14
`NetApp, Inc. v. Realtime Data LLC,
` IPR2017-01195, Paper 9 (PTAB Oct. 12, 2017) ............................................... 24
`NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc.,
` IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) .............................................. 41
`NVIDIA Corp. v. Tessera Advanced Techs., Inc.,
` IPR2020-00708, Paper 9 (PTAB Sept. 2, 2020) ................................................ 16
`Parus Holdings, Inc. v. Apple Inc.,
` No. 6:19-cv-00432, Dkt. No. 225 (W.D. Tex. Dec. 15, 2020) (Albright, J.) ...... 7
`Philip Morris Prods., S.A. v. RAI Strategic Holdings, Inc.,
` IPR2020-00921, Paper 9 (PTAB Nov. 16, 2020) ............................ 12, 21, 23, 25
`Profectus Tech. LLC v. Google LLC,
` No. 6:20-cv-00101, Dkt. Nos. 63, 182 (W.D. Tex.) (Albright, J.) .................... 13
`Samsung Elecs. Co., Ltd. v. Clear Imaging Rsch., LLC,
` IPR2020-01399, 2021 Pat. App. LEXIS 3183 (PTAB Feb. 3, 2021) ............... 20
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`Sand Revolution II, LLC v. Cont’l Intermodal Grp. – Trucking LLC,
` IPR2019-01393, Paper 24 (PTAB June 16, 2020) ............................................ 10
`SAS Institute, Inc. v. Iancu,
` 138 S. Ct. 1348 (2018) ................................................................................... 1, 39
`Supercell OY v. Gree, Inc.,
` IPR2020-00310, Paper 13 (PTAB June 18, 2020) ............................................ 16
`Supercell Oy v. Gree, Inc.,
` IPR2020-01628, Paper 9 (PTAB Feb. 17, 2021) ............................................... 11
`Verizon Bus. Network Servs. LLC v. Huawei Techs.,
` IPR2020-01291, Paper 13 (PTAB Jan. 25, 2021) ............................................. 12
`VLSI Tech. LLC v. Intel Corp.,
` No. 6:21-cv-00057, Dkt. Nos. 160, 346, 426 (W.D. Tex.) (Albright, J.) .......... 14
`VLSI Tech. v. Intel Corp.,
` No. 6:21-cv-00029 Dkt. Nos. 160, 427 (W.D. Tex.) (Albright, J.) .................. 14
`Volkswagen Grp. of Am., Inc. v. Stratosaudio, Inc.,
` IPR2021-00716, Paper 16 (PTAB Oct. 25, 2021) ............................................. 24
`Weber, Inc. v. Provisur Techs., Inc.,
` IPR2019-01467, Paper 34 (PTAB Feb. 10, 2021) ............................................. 29
`STATUTES AND RULES
`37 C.F.R. § 42.4(a) ................................................................................................... 39
`37 C.F.R. § 42.22(a)(2) ............................................................................................ 34
`37 C.F.R. § 42.65(a) ................................................................................................. 38
`37 C.F.R. § 42.104(b)(4) .......................................................................................... 34
`35 U.S.C. § 314(a) .........................................................................1, 2, 24, 39, 40, 41
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`TABLE OF EXHIBITS
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`IPR2021-01303
`U.S. Patent No. 8,688,028
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`Exhibit Description
`2001 Defendants’ Disclosure of Invalidity Contentions Cover Pleading in
`Parallel W.D. Litigations (July 8, 2021)
`2002 Third Proposed Amended Joint Scheduling Order of Parallel W.D. Tex.
`Litigations (September 15, 2021)
`2003 E-mail from W.D. Tex. Court Clerk Denying Request to Stay Pending
`Motion to Dismiss for Improper Venue (May 17, 2021)
`2004 Transcript of hearing in ParkerVision v. Intel Corp., 6:20-cv-00108
`(W.D. Tex. September 2, 2020) (J. Albright))
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`
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`Interview with Judge Albright on Patent Litigation and Seventh
`Amendment, IAM (Apr. 7, 2020)
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`Minute Entry regarding Markman Hearing, StratosAudio, Inc. v.
`Hyundai Motor America, 6:20-cv-01125 (W.D. Tex. September 28,
`2021)
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`Order Denying Hyundai’s Motion to Dismiss, StratosAudio, Inc. v.
`Hyundai Motor America, 6:20-cv-01125 (W.D. Tex. September 17,
`2021) (J. Albright))
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`StratosAudio, Inc.’s Preliminary Infringement Contentions,
`StratosAudio, Inc. v. Hyundai Motor America, 6:20-cv-01125 (W.D.
`Tex. May 13, 2021)
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`StratosAudio, Inc.’s Supplemental Preliminary Infringement
`Contentions, StratosAudio, Inc. v. Hyundai Motor America, 6:20-cv-
`01125 (W.D. Tex. September 27, 2021)
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`Hyundai Motor America’s Answer and Affirmative Defenses to
`Plaintiff’s Complaint for Patent Infringement, Jury Trial Demanded,
`6:20-cv-01125 (W.D. Tex. October 1, 2021)
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`2011 Minute Order from Discovery Hearing, StratosAudio, Inc. v. Hyundai
`Motor America, 6:20-cv-01125 (W.D. Tex. October 7, 2021)
`2012 Email from Eric Lucas to Patent Trial and Appeal Board, Volkswagen
`Stipulation regarding IPR Grounds (September 3, 2021)
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`IPR2021-01303
`U.S. Patent No. 8,688,028
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`Introduction
`Patent Owner, STRATOSAUDIO, INC. (“Patent Owner”), submits this
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`Preliminary Response to the Petition for inter partes review (the “Petition” or
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`“Pet.”) filed by HYUNDAI MOTOR AMERICA (“Petitioner”) challenging claims
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`11-20 of U.S. Patent 8,688,028 (“the ’028 patent”). The Petition should be denied
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`pursuant to the Board’s discretion under 35 U.S.C. § 314 and for Petitioner’s
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`failure to show a reasonable likelihood of prevailing on any asserted ground. In
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`light of SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), even if the Petitioner
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`has made the required threshold showing for some limited claims or grounds
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`(which is not the case), the Board, in its discretion, should deny institution under
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`§ 314(a) on all challenged claims and grounds in the Petition.
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` Background Of StratosAudio, Inc.
`Patent Owner STRATOSAUDIO, INC. is a start-up company founded in
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`1999 by lead inventor of the ’028 patent, Kelly Christensen. In the early 2000s,
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`Patent Owner created a better media-infotainment experience through its
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`innovative technology in real-time interactive data services. Patent Owner’s
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`technology allows a user to easily obtain and engage with additional information
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`associated with media content of various broadcast streams. These efforts led to
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`the creation of the StratosAudio Interactive Symphony Digital IF Radio, which
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`was a 2004 Consumer Electronics Show (“CES”) Innovations Awards Honoree.
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`U.S. Patent No. 8,688,028
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`With this success at CES and the interest of major automotive and electronics
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`companies like Hyundai Autonet and Motorola, Patent Owner continued
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`innovating and refining its technology over the past twenty years.
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`Patent Owner has protected its innovative and novel technology through a
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`set of patents, including the ’028 patent subject to the instant proceeding. Over the
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`years, several major car manufacturers have incorporated Patent Owner’s
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`technology into their respective vehicle media console systems. Patent Owner
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`filed suit in December 2020 against five of these auto-manufacturers, including
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`Hyundai (Petitioner), Volvo, Subaru, Mazda, and Volkswagen, in the Western
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`District of Texas (“W.D. Tex.”) for infringement of seven patents, including the
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`’028 patent. In response, Petitioner has filed a series of insufficient and baseless
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`Petitions before the Board, while Petitioner and the other defendants pursue the
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`same grounds of invalidity through litigation.
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`For at least the following reasons, the Board should exercise its authority to
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`deny institution of the Petition.
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` The Board Should Exercise Its Discretion Under § 314(a) To Deny
`Institution
`The Board should exercise its discretion to deny institution under § 314(a)
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`because all six of the Fintiv factors weigh in favor of discretionary denial of
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`2
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`IPR2021-01303
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`institution, as outlined below. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper
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`11 at 6 (PTAB Mar. 20, 2020) (precedential).
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`The ’028 patent has been asserted in five litigations in the W.D. Tex.,
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`including one litigation where Petitioner is the defendant.
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` StratosAudio, Inc. v. Hyundai Motor America, No. 6:20-cv-
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`01125 (W.D. Tex. Dec. 11, 2020) (the “Hyundai Parallel
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`Litigation”)
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` StratosAudio, Inc. v. Volkswagen Group of America, Inc., No. 6:20-
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`cv-01131 (W.D. Tex. Dec. 11, 2020)
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` StratosAudio, Inc. v. Volvo Cars of N. Am., LLC et al, No.
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`6:20-cv- 01129 (W.D. Tex. Dec. 11, 2020)
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` StratosAudio, Inc. v. Subaru of America, Inc., No. 6:20-
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`cv-01128 (W.D. Tex. Dec. 11, 2020)
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` StratosAudio, Inc. v. Mazda Motor of America, Inc., No. 6:20-
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`cv- 01126 (W.D. Tex. Dec. 11, 2020)
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`The five litigations are not formally consolidated, but the Court has required the
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`five defendants to file joint invalidity contentions and participate in a single
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`Markman hearing with only one brief for all defendants. See EX2001.
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`There are five additional commonly asserted patents (U.S. Patent Nos.
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`8,166,081; 8,903,307; 9,294,806; 9,355,405; and 9,584,843)1 for a total of six
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`patents-in-suit in each litigation.2 Petitioner and Volkswagen filed separate IPR
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`petitions against the challenged claims of the ’028 patent.
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`The projected deadline for the final written decision in this proceeding, if
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`instituted, is January 30, 2023, which is nearly four months after the trial date set
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`in the five W.D. Tex. litigations (October 3, 2022). The district court and all
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`parties have already invested significant resources into the district court litigations,
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`and will continue to do so after a decision on institution. For example, Patent
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`Owner produced infringement contentions on May 13, 2021 and supplemental
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`infringement contentions on September 27, 2021. The defendants, including
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`Petitioner, produced invalidity contentions on July 8, 2021. In addition, the Court
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`denied Hyundai’s motion to dismiss for improper venue or transfer on September
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`17, 2021, claim construction briefing has concluded, and the Court held a
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`1 Patent Owner originally asserted U.S. Patent No. 8,200,203 against the five
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`defendants, but has since dropped its assertion of that patent.
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`2 An additional patent (U.S. Patent No. 9,143,833) is asserted against Volvo.
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`4
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`Markman hearing on September 28, 2021, during which the Judge ruled on claim
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`construction, including on terms from the ’028 patent. Fact discovery began the
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`same day.
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`The Honorable Judge Alan Albright presides over each litigation and is
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`unlikely to stay the litigations, even if inter partes review is instituted. The trial
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`date is set for October 3, 2022. EX2002. Judge Albright is unlikely to move this
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`date.
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`Instituting this IPR, and any of the other IPRs challenging the other patents
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`involved in the same parallel litigation, would not be an efficient use of the
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`Board’s resources. Rather, it would be duplicative of the five litigations and would
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`risk the two tribunals reaching inconsistent results.
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`The Fintiv factors seek to “balance considerations such as system
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`efficiency, fairness, and patent quality.” See Fintiv, Inc., IPR2020-00019, Paper
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`11 at 5. The factors are:
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`1.
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`whether the court granted a stay or evidence exists that
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`one may be granted if a proceeding is instituted;
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`2.
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`proximity of the court’s trial date to the Board’s
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`projected statutory deadline for a final written decision;
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`3.
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`investment in the parallel proceeding by the court and the
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`parties;
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`4.
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`overlap between issues raised in the petition and in the
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`parallel proceeding;
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`5.
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`whether the petitioner and the defendant in the parallel
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`proceeding are the same party; and
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`6.
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`other circumstances that impact the Board’s exercise of
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`discretion, including the merits.
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`See id. at 6. The Board is “bound to follow the precedential NHK/Fintiv
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`framework.” Intel Corp. v. VLSI Tech. LLC, IPR2020-00583, Paper 22 at 10 n.6
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`(PTAB Oct. 5, 2020).
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`A holistic review of the Fintiv factors, each of which is analyzed below,
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`warrants that the Board exercise its discretion to deny instituting trial in this
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`proceeding.
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`A. Fintiv Factor 1 Favors Denial Because The District Court Has Not
`Granted A Stay And Is Unlikely To Do So If The Board Instituted
`Trial
`The district court is unlikely to grant a stay of the Hyundai Parallel
`Litigation if the Board institutes trial in this IPR. In that litigation, Judge Albright
`has already denied Petitioner’s motion to dismiss for improper venue or transfer,
`and no party has requested a stay pending the Board’s review. EX2003 (“The
`Court will not stay the cases pending rulings on the motions to dismiss/transfer.”);
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`EX2002 at 2 n.1 (“[T]he Court stated on May 17, 2021 via email: ‘The Court will
`not stay the cases pending rulings on the motions to dismiss/transfer.’”). Given
`Judge Albright’s record and his view on a party’s right to a jury trial, it is highly
`unlikely that the district court would grant a stay if the Board institutes trial.
`EX2005.
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`To the contrary, evidence exists indicating that Judge Albright will deny
`any request for a stay, even if the Board granted institution of this proceeding.
`Judge Albright’s record on the bench shows he has only once granted a stay for a
`pending IPR where a patent owner opposed the stay. Typically, Judge Albright
`has only granted such stays if they are unopposed or stipulated to. See, e.g.,
`Kuster v. W. Dig. Techs., Inc., No. 6:20-cv-00563, Dkt. No. 65 (W.D. Tex. Mar.
`12, 2021) (joint motion to stay pending IPR) (Albright, J.); Parus Holdings, Inc.
`v. Apple Inc., No. 6:19-cv-00432, Dkt. No. 225 (W.D. Tex. Dec. 15, 2020) (joint
`motion to stay pending IPR) (Albright, J.). Under these circumstances, with
`Patent Owner opposing, Judge Albright is highly unlikely to grant a stay of
`litigation. See Kerr Machine Co. v. Vulcan Indus. Holdings, LLC, No. 6:20-cv-
`00200, Dkt. No. 28 (W.D. Tex. Aug. 2, 2020) (Albright, J.) (denying
`motion to stay for pending PGR); Kerr, Dkt. No. 76 (W.D. Tex. Apr. 7, 2021)
`(Albright, J.) (denying motion to stay for instituted PGR); Cont’l Intermodal Grp.
`v. Sand Revolution LLC, No. 7:18-cv-00147, Dkt. No. 104 (W.D. Tex. Jul. 22,
`2020) (Albright, J.) (denying motion to stay for pending IPR); Multimedia
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`Content Mgmt. LLC v. Dish Network LLC, No. 6:18-cv-00207, Dkt. No. 73 (W.D.
`Tex. May 30, 2019) (Albright, J.) (denying motion to stay pending IPR).
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`For example, in Multimedia, Judge Albright denied defendant’s request for a
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`stay pending PTAB review, citing as reasons: (1) the advanced stages of the
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`proceeding, which had progressed into fact discovery and (2) a stay would cause
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`undue prejudice to the plaintiff that is not offset by any potential simplification
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`benefit of a PTAB proceeding. No. 6:18-cv-00207, Dkt. No. 73 at 4-6 (W.D. Tex.
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`May 30, 2019) (Albright, J.). Here, the parties in all five parallel litigations will
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`already be months into fact discovery before the Board is expected to make an
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`institution decision. EX2002 at 3. Any request for a stay, which Patent Owner
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`would not agree to, would therefore cause undue prejudice to Patent Owner in the
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`parallel litigations and is unlikely to be granted.
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`The single instance where Judge Albright issued a stay over a patent owner’s
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`objection is distinguishable from the current case. In that case, the final written
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`decision would issue prior to trial, the facts indicated the Board was likely to
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`invalidate the claims at issue, and the motion to stay was filed more than six
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`months before the Markman hearing. See Kirsch Rsch. and Dev., LLC v. IKO
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`Indus., Inc., No. 6:20-cv-00317-ADA, Dkt. 81 (W.D. Tex. Oct. 5, 2021). None of
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`these facts is present here: any possible final written decision is expected to issue
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`in January 2023, nearly four months after the October 3, 2022 trial date in the
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`Hyundai Parallel Litigation; Petitioner’s challenges to the ’028 Patent are without
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`merit (see infra Section IV); and the Markman hearing occurred already, without
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`either party filing a motion to stay. If Petitioner were to request a stay of the
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`district court proceeding pending inter partes review, Patent Owner would oppose
`
`that request, and would not stipulate to a stay.
`
`The unlikeliness of a district court stay is also clear from Judge Albright’s
`strong views on a party’s right to a jury trial and the Seventh Amendment. He has
`explained his reasoning for having denied stays pending IPR final written
`decisions: “because I think that people have a constitutional right to assert their
`patent. . . . I think people ought to have a jury trial.” EX2005; see Cont’l
`Intermodal Grp., No. 7:18-cv-00147-ADA, Dkt. No. 104 (W.D. Tex. July 22,
`2020) (Albright, J.) (“The Court strongly believes in the Seventh Amendment.”);
`Kerr, No. 6:20-cv-00200-ADA, Dkt. No. 28 (W.D. Tex. Aug. 2, 2020) (Albright,
`J.) (“The Court denies the stay [for pending PGR] for at least the following
`reasons: (1) The PTAB has not instituted the PGR. (2) Even if the PTAB
`institutes, the Court anticipates that the trial date will occur before the PGR’s final
`written decision. (3) Allowing this case to proceed to completion will provide a
`more complete resolution of the issues including infringement, all potential
`grounds of invalidity, and damages. (4) The Court believes in the Seventh
`Amendment. (5) Plaintiff opposes the stay.”); Kerr, No. 6:20-cv-00200-ADA,
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`Dkt. No. 76 (W.D. Tex. Apr. 7, 2021) (Albright, J.) (twice denying stay for
`PGR, including once after institution, because “the Court believes in the Seventh
`Amendment”); EX2005 (Published Interview of Judge Albright on tending not to
`stay cases: “I have done that because I think that people have a constitutional right
`to assert their patent. I mean, patents are in the Constitution, the right to a jury
`trial is in the Constitution.”); EX2004 (Transcript of September 2, 2020 hearing
`in ParkerVision v. Intel Corp., No. 6:20-cv-00108 at 15-16) (Judge Albright
`noting that the number of cases he has stayed pending IPR in the Western
`District of Texas is zero). Patent Owner has requested a jury trial in the Hyundai
`Parallel Litigation and the other four litigations currently before Judge Albright.
`
`In view of Judge Albright’s record and his views against staying cases
`
`pending IPR final written decisions, this case is unlike that in Sand Revolution II;
`
`here, there is plenty of “specific evidence” that should enable the Board to
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`“attempt to predict how the district court . . . will proceed.” Cf. Sand Revolution
`
`II, LLC v. Cont’l Intermodal Grp. – Trucking LLC, IPR2019-01393, Paper 24 at 7
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`(PTAB June 16, 2020) (non-precedential) (“In the absence of specific evidence,
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`we will not attempt to predict how the district court . . . will proceed because the
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`court may determine whether or not to stay any individual case, including the
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`related one, based on a variety of circumstances and facts beyond our control and
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`to which the Board is not privy.”).
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`For these reasons, the Hyundai Parallel Litigation is unlikely to be stayed
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`even if the Board institutes trial. Thus, factor 1 favors denial.3 See Google LLC,
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`v. Uniloc 2017, IPR2020-00115, Paper 8 at 7 (PTAB Mar. 27, 2020) (“Factor[]1 .
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`. . weigh[s] in favor of denying institution of the Petition. . . . There is no
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`evidence that the district court has granted (or would grant) a stay pending inter
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`partes review.”).
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`
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`
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`3 To the extent factor 1 does not favor denying institution because neither
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`Petitioner nor Patent Owner has requested a stay, at most, factor 1 should be
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`considered neutral. Factor 1 has been considered neutral in situations where
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`“the district court has not yet granted a stay and the record does not include
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`any evidence that a stay, if requested, would be granted.” Supercell Oy v.
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`Gree, Inc., IPR2020-01628, Paper 9 at 7 (PTAB Feb. 17, 2021). To rule
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`otherwise would entice future petitioners to delay moving to stay until after
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`institution to better position themselves to oppose discretionary denial under
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`Fintiv.
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`B. Fintiv Factor 2 Favors Denial Because The District Court Trial
`Date Is Several Months Before The Board’s Statutory Deadline
`For Final Written Decision
`Factor 2 “looks at the proximity of the district court’s trial date to the
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`expected statutory deadline for the Board’s final decision.” Philip Morris Prods.,
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`S.A. v. RAI Strategic Holdings, Inc., IPR2020-00921, Paper 9 at 16 (PTAB Nov.
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`16, 2020). “If the court’s trial date is earlier than the projected statutory deadline
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`[for the final written decision], the Board generally has weighed this fact in favor
`
`of exercising authority to deny institution under NHK.” Fintiv, Inc., IPR2020-
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`00019, Paper 11 at 9.
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`Here, the Hyundai Parallel Litigation has a trial date of October 3, 2022,
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`which is almost four months earlier than the projected statutory deadline for this
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`IPR, or January 30, 2023. EX2002.
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`The Board “generally take[s] courts’ trial schedules at face value absent
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`sufficient evidence to the contrary” (Verizon Bus. Network Servs. LLC v. Huawei
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`Techs., IPR2020-01291, Paper 13 at 11 (PTAB Jan. 25, 2021)) and routinely finds
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`that a court’s trial scheduled to be held before the final written decision date favors
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`denial. See, e.g., E-One, Inc. v. Oshkosh Corp., IPR2019-00161, Paper 16 at 6-7
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`(PTAB May 15, 2019) (a pre-Fintiv decision denying institution where the jury
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`trial was scheduled one month prior to final written decision). Further, there has
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`been no significant delay to the case schedule, so there is no indication the trial
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`date might be delayed. Cf. MED-EL Elekromedizinische Gerate Ges.m.b.H. v.
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`Advanced Bionics AG, IPR2020-00190, Paper 15 at 9-12 (PTAB June 3, 2020)
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`(factor 2 weighed in favor of institution when trial was originally scheduled less
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`than one month prior to the expected final written decision date, but the claim
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`construction hearing was delayed twice by a total of two months). In fact, the
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`Markman hearing in the Hyundai Parallel Litigation occurred earlier than
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`originally scheduled—on September 28 2021, after originally being scheduled for
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`October 4, 2021. EX2006.
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`It is unlikely that the court’s trial date will be delayed significantly or at all.
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`To date, Judge Albright has held eight patent trials since joining the bench and
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`generally adheres to set trials dates. In fact, one of Judge Albright’s recent trials
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`took place 7 days before the initial set date, in April 2021. ESW Holdings v. Roku,
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`Inc., No. 6:19-cv-00044, Dkt Nos. 48, 139, 165 (W.D. Tex.) (Albright, J.). Judge
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`Albright’s most recent trial, which began in September 2021 was only delayed by
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`three days. Profectus Tech. LLC v. Google LLC, No. 6:20-cv-00101, Dkt. Nos. 63,
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`182 (W.D. Tex.) (Albright, J.) (trial set for September 27, 2021 and began on
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`September 30, 2021). In June, trial commenced in Freshub, Inc. v. Amazon.Com
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`Inc. without any delay at all. See No. 6:21-cv-00511-ADA, Dkt Nos. 86, 224
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`(W.D. Tex.) (trial set for June 14, 2021 and began on June 14, 2021).
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`While thr
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