`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`NINTENDO CO., LTD., and NINTENDO OF AMERICA INC.,
`Petitioners,
`
`v.
`
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`__________
`
`Case IPR2021-01338
`U.S. Patent No. 6,411,941 B1
`
`____________________________________________________________
`
`UNOPPOSED MOTION TO STAY EX PARTE REEXAMINATION OF
`U.S. PATENT NO. 6,411,941
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`
`
`IPR2021-01338: Unopposed Motion to Stay Ex Parte Reexamination
`
`I.
`
`BRIEF STATEMENT OF RELIEF REQUESTED
`
`In response to the Board’s email of March 25, 2022, Patent Owner Ancora
`
`Technologies, Inc. (“Ancora” or “Patent Owner”) requests the Board to stay the ex
`
`parte reexamination (control no. 90/014,865) of U.S. Patent No. 6,411,941 (“the
`
`’941 patent”), pending resolution of this inter partes review of the ’941 patent.
`
`Petitioner Nintendo Co., Ltd., and Nintendo of America Inc. (collectively
`
`“Nintendo” or “Petitioner”) and Requestor, through its counsel, do not oppose this
`
`motion.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`Each of the challenges discussed herein arises out of litigation filed by Ancora
`
`for infringement of the ’941 patent. Ancora filed a complaint against Nintendo Co.,
`
`Ltd. in the Western District of Texas on July 16, 2021, asserting the ’941 patent. See
`
`Ancora Technologies, Inc. v. Nintendo Co., Ltd., No. 6:21-cv-00738 (W.D. Tex.).
`
`On the same day, Ancora filed a complaint against Roku and Vizio, also in the
`
`Western District of Texas, also asserting the ’941 patent. See Ancora Technologies,
`
`Inc. v. VIZIO, Inc., No. 6:21-cv-00739 (W.D. Tex.); Ancora Technologies, Inc. v.
`
`Roku, Inc., No. 6:21-cv-00737 (W.D. Tex.). A third case, between Ancora and HTC
`
`Corp., remains pending and is related as discussed below.
`
`Ancora sued HTC for infringement of the ’941 patent on December 15, 2016.
`
`As discussed below, Ancora believes the ’865 reexamination request is the latest of
`
`
`
`1
`
`
`
`IPR2021-01338: Unopposed Motion to Stay Ex Parte Reexamination
`
`many challenges lodged at the USPTO by HTC. HTC filed a petition for CBM
`
`review on May 26, 2017, asserting the ’941 patent was invalid under § 101 for lack
`
`of patentable subject matter, under § 112 for indefiniteness and lack of written
`
`description, and under § 103 for obviousness over European Patent Application
`
`Publication No. EP0766165 to Hasebe, in view of Desktop Management BIOS
`
`Specification Version 2.0 (Mar. 6, 1996). HTC Corp. v. Ancora Techs. Inc., Case
`
`No. CBM2017-00054, Paper 1 (PTAB May 26, 2017). The Board denied institution
`
`of HTC’s petition, noting that the ’941 patent was not a covered business method
`
`patent because it disclosed a technical solution—i.e., storing a license record in the
`
`nonvolatile BIOS memory. HTC, CBM2017-00054, Paper 7 (PTAB Dec. 1, 2017).
`
`Subsequently, on February 19, 2021 HTC filed an IPR petition asserting the same
`
`art against the same claims as are challenged here. HTC Corp. v. Ancora Techs. Inc.,
`
`IPR2021-00570, Paper 1 (PTAB Feb. 19, 2021). Like this case and the ’865
`
`reexamination request, discussed below, HTC’s petition in IPR2021-00570 asserted
`
`the same art against the same claims as was previously asserted in IPR2020-01609.
`
`The Board exercised its discretion to deny HTC’s petition as an improper follow-on
`
`petition under the General Plastic factors. HTC, IPR2021-00570, Paper 17 (PTAB
`
`June 10, 2021).
`
`
`
`2
`
`
`
`IPR2021-01338: Unopposed Motion to Stay Ex Parte Reexamination
`
`A.
`Facts Relating to IPR2021-01338
`Nintendo filed its IPR petition in this matter on August 10, 2021, asserting the
`
`same art against the same claims as was previously asserted in IPR2020-01609.
`
`Specifically, Nintendo’s IPR petition asserts two grounds. First: that claims 1–2, 11,
`
`and 13 of the ’941 patent would have been obvious under 35 U.S.C. § 103 over U.S.
`
`Patent No. 4,658,093 to Hellman et al. (hereinafter “Hellman”) in view of U.S.
`
`Patent No. 5,892,906 to Chou (hereinafter “Chou”). (Pet. at 7.) Second: that claims
`
`1–3, 6–14, and 16 of the ’941 patent would have been obvious under 35 U.S.C. § 103
`
`over Hellman in view of Chou and further in view of U.S. Patent No. 5,933,498 to
`
`Schneck (hereinafter “Schneck”). (Id.) Nintendo’s IPR petition is supported by the
`
`declaration of Dr. Andrew Wolfe. (Id.; see also Ex. 1003.)
`
`B.
`Facts Relating to IPR2021-01406
`Roku and Vizio filed the IPR petition in IPR2021-01406 on August 24, 2021,
`
`also asserting the same art in the same combinations against the same claims as was
`
`previously asserted in IPR2020-01609. Roku, Inc. v. Ancora Techs. Inc., IPR2021-
`
`01406, Paper 3 at 8 (Aug. 24, 2021). The grounds asserted in the Roku/Vizio IPR
`
`petition are supported by the same declarant, Dr. Andrew Wolfe. Id.; see also
`
`IPR2021-01406, Ex. 1003. The Roku/Vizo IPR petition notes that “Dr. Wolfe
`
`submitted a substantively similar supporting declaration in . . . Nintendo’s IPR
`
`against the ’941 Patent.” Id.
`
`
`
`3
`
`
`
`IPR2021-01338: Unopposed Motion to Stay Ex Parte Reexamination
`
`C.
`Facts Relating to Reexamination No. 90/014,865
`Reexamination No. 90/014,865 was filed by litigation counsel for HTC Corp.
`
`and HTC America, Inc. (hereinafter “HTC”) on September 21, 2021, also asserting
`
`the same art against the same claims as was previously asserted in IPR2020-01609.
`
`(Ex. 2018 at 2.) The ’865 reexamination request challenges the same claims 1–3, 6–
`
`14, and 16 of the ’941 patent as Nintendo’s IPR petition. (Id..) The ’865
`
`reexamination request asserts identical grounds as this IPR: First: that claims 1–2,
`
`11, and 13 of the ’941 patent would have been obvious under 35 U.S.C. § 103 over
`
`Hellman in view of Chou. (Id. at 21.) Second: that claims 1–3, 6–14, and 16 of the
`
`’941 patent would have been obvious under 35 U.S.C. § 103 over Hellman in view
`
`of Chou and further in view of Schneck. (Id. at 29.) The ’865 reexamination request
`
`is supported by yet another declaration from Dr. Andrew Wolfe. (Id. at 6.)
`
`Reexamination has been ordered, and the Examiner issued a non-final office action
`
`on March 11, 2022, rejecting the challenged claims on the same grounds raised in
`
`the Request. Patent Owner’s response to the non-final office action is due May 11,
`
`2022.
`
`III. FULL STATEMENT OF THE REASONS FOR STAY
`
`Under 35 U.S.C. § 315(d), “if another proceeding or matter involving the
`
`patent is before the Office, the Director may determine the manner in which the inter
`
`partes review or other proceeding or matter may proceed, including providing for
`
`
`
`4
`
`
`
`IPR2021-01338: Unopposed Motion to Stay Ex Parte Reexamination
`
`stay, transfer, consolidation, or termination of any such matter or proceeding.” 35
`
`U.S.C. § 315(d); see also 37 C.F.R. §§ 42.122(a), 42.3(a). In determining whether
`
`to grant a stay of a pending reexamination proceeding, the Board considers several
`
`factors including: (1) whether claim amendments in one proceeding could interfere
`
`with another proceeding; (2) whether the proceedings include common issues, such
`
`that conducting the proceedings concurrently would result in an inefficient use of
`
`Office resources or produce inconsistent results; and (3) whether an IPR proceeding
`
`could result in a decision on the merits before a final decision in a reexamination,
`
`simplifying the issues remaining in the reexamination proceeding. See, e.g., Goertek,
`
`Inc. v. Knowles Elecs., LLC, IPR2013-00614, Paper 11 at 3 (Nov. 13, 2013). The
`
`issues involved in the IPR2021-01338, IPR2021-01406, and ’865 reexamination
`
`proceedings warrant granting a stay of the ’865 reexamination.
`
`Amendments are not possible in the ’865 reexamination, because the ’941
`
`patent has expired. See 35 C.F.R. § 1.530(j) (“No amendments may be proposed for
`
`entry in an expired patent.”). Nevertheless, allowing the ’865 reexamination to
`
`proceed would result in inefficient use of the Office’s resources and could produce
`
`inconsistent results in the three proceedings. The proceedings include identical
`
`issues, with the exact same grounds asserted against the ’941 patent in the ’865
`
`reexamination and each of the two pending IPRs, IPR2021-01338 and IPR2021-
`
`01406. In all three matters, claims 1–2, 11, and 13 of the ’941 patent are asserted to
`
`
`
`5
`
`
`
`IPR2021-01338: Unopposed Motion to Stay Ex Parte Reexamination
`
`have been obvious under 35 U.S.C. § 103 over Hellman in view of Chou, and claims
`
`1–3, 6–14, and 16 of the ’941 patent are asserted to have been obvious under 35
`
`U.S.C. § 103 over Hellman in view of Chou and further in view of Schneck. The
`
`’865 reexamination request and the IPR petitions filed in each of IPR2021-01338
`
`and IPR2021-01406 are all substantively the same as the IPR petition filed by TCT
`
`in IPR2020-01609. Further, each of the challengers in these matters relies on a
`
`declaration from Dr. Andrew Wolfe, which is substantively the same as the
`
`declaration he filed in IPR2020-01609. Given the complete overlap of prior art and
`
`issues, the Office’s Central Reexamination Unit and the Board may reach contrasting
`
`positions, at different stages of the proceedings in connection with interpretations of
`
`the claims, the prior art, or other issues, producing inconsistent results. At minimum,
`
`conducting the ’865 reexamination concurrently with the IPR2021-01338 and/or
`
`IPR2021-01406 proceedings would result in an inefficient use of Office resources.
`
`The Board’s final determination in the IPR2021-01338 and IPR2021-01406
`
`proceedings will simplify issues in the ’865 reexamination and is likely to precede
`
`conclusion of the ’865 reexamination. The Board has already decided to institute the
`
`two IPR proceedings. In IPR2021-01338 the Board’s final determination must issue
`
`before January 27, 2023. See 35 U.S.C. § 316(a)(11) (requiring final decision within
`
`12 months of institution decision). Similarly, in IPR2021-01406 the Board’s final
`
`determination must issue before February 22, 2023. Id. For reexaminations, USPTO
`
`
`
`6
`
`
`
`IPR2021-01338: Unopposed Motion to Stay Ex Parte Reexamination
`
`statistics indicate average overall pendency is 25.7 months. USPTO Comm’r for
`
`Patents, Ex Parte Reexamination Filing Data (Sep. 30, 2020), available at
`
`https://www.uspto.gov/learning-and-resources/statistics/reexamination-
`
`information. The ’865 reexamination, in which the request was filed on September
`
`21, 2021, is therefore not likely to conclude before October of 2023—many months
`
`after a final written decision issues in either of the IPR proceedings. In short, any
`
`final written decision issued by the Board in the IPR2013-00567 and/or IPR2013-
`
`00568 proceedings will precede any final decision in the ’865 reexamination.
`
`Staying the ’865 reexamination, therefore, would most likely simplify the issues
`
`remaining in that proceeding based on the Board’s decision(s) in the IPR matters.
`
`IV. CONCLUSION
`
`
`
`For at least the reasons set forth above, Patent Owner requests that the Board
`
`stay the ’865 reexamination until the IPR2021-01338 and IPR2021-01406
`
`proceedings are completed, whether by final written decision or other mechanisms
`
`provided for by the Rules. As noted, Patent Owner has conferred with counsel for
`
`Petitioners in IPR2021-01338 and IPR2021-01406, and with counsel for the
`
`Requestor in the ’865 reexamination. These parties do not oppose the requested stay.
`
`
`
`
`
`
`Dated: April 1, 2022
`
`Respectfully submitted,
`FITCH EVEN TABIN & FLANNERY LLP
`
`
`
`By: /David A. Gosse/
`
`
`
`7
`
`
`
`IPR2021-01338: Unopposed Motion to Stay Ex Parte Reexamination
`
`
`
`
`120 South LaSalle Street
`Suite 2100
`Chicago, Illinois 60603
`(312) 577-7000
`(312) 577-7007 (fax)
`
`David A. Gosse
`Registration No. 61,511
`dgosse@fitcheven.com
`
`
`
`
`
`
`
`8
`
`
`
`IPR2021-01338: Unopposed Motion to Stay Ex Parte Reexamination
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that on April 1, 2022, a complete and entire
`
`copy of Ancora’s Unopposed Motion to Stay Ex Parte Reexamination was served
`
`via electronic mail, on Requestor’s counsel in Reexamination No. 90/014,865 at
`
`irfan.lateef@knobbe.com, and on Petitioner’s counsel in IPR2021-01338 at
`
`PerkinsService-Nintendo-Ancora-IPR@perkinscoie.com and at the electronic mail
`
`addresses below:
`
`Lead Counsel
`Jerry A. Riedinger
`Reg. No. 30,582
`riedinger-ptab@perkinscoie.com
`Perkins Coie LLP
`
`Back-up Counsel
`Jose Villarreal, Reg. No. 43,969
`villarreal-ptab@perkinscoie.com
`Perkins Coie LLP
`
`Kyle Canavera, Reg. No. 72,167
`canavera-ptab@perkinscoie.com
`Perkins Coie LLP
`
`Theresa H. Nguyen (pro hac vice)
`nguyen-ptab@perkinscoie.com
`Perkins Coie LLP
`
`Tara Kurtis, Reg. No. 74,846
`kurtis-ptab@perkinscoie.com
`Perkins Coie LLP
`
`
`and on Petitioner’s counsel in IPR2021-04016 at their respective electronic mail
`
`addresses:
`
`Lead Counsel
`Jon Wright, Reg. No. 50,720
`jwright-PTAB@sternekessler.com
`(202) 772-8651
`
`Back-up Counsel
`Lestin Kenton, Reg. No. 72,314
`lkenton-PTAB@sternekessler.com
`(202) 772-8594
`
`
`
`9
`
`
`
`IPR2021-01338: Unopposed Motion to Stay Ex Parte Reexamination
`
`STERNE, KESSLER, GOLDSTEIN & FOX
`P.L.L.C
`
`
`
`Dated: April 1, 2022
`
`By:
`
`
`Dohm Chankong, Reg. No. 72,314
`dchankong-PTAB@sternekessler.com
`(202) 772-8529
`
`STERNE, KESSLER, GOLDSTEIN & FOX
`P.L.L.C
`
`
`
`
`
`/David A. Gosse/
`David A. Gosse
`Reg. No. 61,511
`dgosse@fitcheven.com
`Nicholas T. Peters
`Reg. No. 53,456
`ntpete@fitcheven.com
`Karen J. Wang
`Reg. No. 62,503
`kwang@fitcheven.com
`FITCH, EVEN, TABIN & FLANNERY LLP
`120 South LaSalle Street, Suite 2100
`Chicago, IL 60603
`(312) 577-7000
`(312) 577-7007 (fax)
`Attorneys for Patent Owner
`
`
`
`10
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
