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` Paper 18
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` Date: April 26, 2022
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NINTENDO CO., LTD., and NINTENDO OF AMERICA INC.,
`Petitioner,
`v.
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`
`
`IPR2021-01338
`Patent 6,411,941 B1
`____________
`
`
`
`
`
`
`
`
`Before THU A. DANG, JONI Y. CHANG, and KEVIN W. CHERRY,
`Administrative Patent Judges.
`
`
`CHANG, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Motion to Stay Reexamination Control No. 90/014,865
`35 U.S.C. § 315(d); 37 C.F.R. § 42.122(a)
`
`
`
`
`IPR2021-01338
`Patent 6,411,941 B1
`
`
`I.
`INTRODUCTION
`Nintendo Co., Ltd. and Nintendo of America Inc. (collectively,
`“Petitioner”) filed a Petition requesting an inter partes review (“IPR”) of
`claims 1−3, 6−14, and 16 (“the challenged claims”) of U.S. Patent No.
`6,411,941 B1 (Ex. 1001, “the ’941 patent”). Paper 1 (“Pet.”), 6. Ancora
`Technologies, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 7).
`On January 27, 2022, we instituted the instant IPR as to all of the challenged
`claims and all of the grounds asserted in the Petition. Paper 9 (“Dec.”). On
`February 22, 2022, we also instituted an IPR as to the same claims and the
`same grounds in IPR2021-01406 (“the ’1406 IPR”) based on a Petition filed
`by Roku, Inc. and VIZIO, Inc. IPR2021-01406, Paper 9 (Institution
`Decision).
`On April 1, 2020, Patent Owner filed a Motion to Stay Reexamination
`Control No. 90/014,865 (“the ’865 reexamination”) of the ’941 patent,
`pending resolution of the instant IPR and the ’1406 IPR. Paper 16 (“Mot.”),
`7. In its Motion, Patent Owner indicates that Petitioners of both IPRs and
`Requestor of the ’865 reexamination do not oppose this Motion. Id. For the
`reasons discussed below, we determine that it is appropriate to stay the ’865
`reexamination, pending resolution of the instant IPR and the ’1406 IPR.
`
`II. ANALYSIS
`The Director has authority to stay a reexamination proceeding
`pursuant to 35 U.S.C. § 315(d), which states:
`(d) Multiple Proceedings.—Notwithstanding sections 135(a),
`251, and 252 and chapter 30, during the pendency of an inter
`partes, if another proceeding or matter involving the patent is
`before the Office, the Director may determine the manner in
`2
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`IPR2021-01338
`Patent 6,411,941 B1
`
`
`which the inter partes review or other proceeding or matter may
`proceed, including providing for stay, transfer, consolidation, or
`termination of any such matter or proceeding.
`35 U.S.C. § 315(d).
`Consistent with 35 U.S.C. § 315(d), the Board may enter an order
`staying a reexamination proceeding pursuant to 37 C.F.R. § 42.122(a),
`which states:
`(d) Multiple Proceedings. Where another matter involving the
`patent is before the Office, the Board may during the pendency
`of the inter partes review enter any appropriate order regarding
`the additional matter
`including
`for
`the stay,
`transfer,
`consolidation, or termination of any such matter.
`37 C.F.R. § 42.122(a); see also 37 C.F.R. § 42.3(a) (permitting the Board to
`exercise exclusive jurisdiction within the Office over an involved patent
`during the proceeding). The Board considers several factors when deciding
`whether to stay a co-pending reexamination, including:
`
`1. whether the claims challenged in the IPR are the same as or
`depend directly or indirectly from claims at issue in the
`reexamination;
`2. whether the same grounds of unpatentability or the same prior art
`are at issue in both the IPR and the reexamination;
`3. whether simultaneous conducting the reexamination and IPR
`will duplicate efforts within the Office;
`4. whether the reexamination could result in inconsistent results
`between proceedings;
`5. whether amending the claim scope in one proceeding would
`affect the claim scope in another proceeding;
`6. the respective timeline and stage of each proceeding;
`7. the statutory deadlines of the reexamination and IPR; and
`
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`IPR2021-01338
`Patent 6,411,941 B1
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`8. whether a decision in one proceeding would likely simplify
`issues in the concurrent parallel Office proceeding or render it
`moot.
`Notice Regarding Options for Amendments by Patent Owner Through
`Reissue or Reexamination During a Pending AIA Trial Proceeding,
`84 Fed. Reg. 16654, 16,657 (Apr. 22, 2019).
`We have considered Patent Owner’s Motion in light of the factors
`identified above. For the reasons discussed below, we find that Patent
`Owner has shown that good cause exists to stay the ’865 reexamination,
`pending resolution of the instant IPR and the ’1406 IPR.
`As to Factor 1, Patent Owner indicates that the ’865 reexamination
`involves the same claims as the instant IPR and the ’1406 IPR—claims 1−3,
`6−14, and 16 of the ’941 patent. Mot. 4. We agree with Patent Owner.
`Ex. 3001, 10 (Order Granting Request for Ex Parte Reexamination entered
`on November 17, 2021 in the ’865 reexamination); Ex. 3002, 2 (Non-Final
`Office Action entered on March 11, 2022 in the ’865 reexamination); Pet. 6;
`Dec. 2; IPR2021-01406, Paper 9, 2. Therefore, we find Factor 1 favors
`staying the ’865 reexamination.
`Regarding Factor 2, Patent Owner indicates that the ’865
`reexamination asserts identical grounds and prior art as the instant IPR and
`the ’1406 IPR—(1) claims 1−2, 11, and 13 are unpatentable under § 103(a)
`as obvious over Hellman1 and Chou2; and (2) claims 1−3, 6−14, and 16 are
`
`
`1 U.S. Patent No. 4,658,093 issued on April 14, 1987 (Ex. 1004).
`2 U.S. Patent No. 5,892,906 issued on April 16, 1999 (Ex. 1005).
`4
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`IPR2021-01338
`Patent 6,411,941 B1
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`unpatentable under § 103(a) as obvious over Hellman, Chou, and Schenck3.
`Mot. 4. We agree with Patent Owner. Ex. 3001, 10; Ex. 3002, 4, 7; Pet. 7;
`Dec. 33; IPR2021-01406, Paper 9, 33. Therefore, we find Factor 2 favors
`staying the ’865 reexamination.
`For Factor 3, Patent Owner argues that, given the complete overlap of
`prior art and issues, conducting the ’865 reexamination concurrently with the
`instant IPR and the ’1406 IPR would result in an inefficient use of the Office
`resources. Mot. 6. We agree with Patent Owner and find Factor 3 favors
`staying the ’865 reexamination.
`Regarding Factor 4, Patent Owner argues that, given the complete
`overlap of prior art and issues, the Office’s Central Reexamination Unit
`(“CRU”) 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.” Id. at 5−6. We agree
`with Patent Owner and find Factor 4 favors staying the ’865 reexamination.
`As to Factor 5, Patent Owner indicates that amendments are not
`possible in the ’865 reexamination because the ’941 patent has expired. Id.
`at 5; Ex. 1001, code (22) (The application issued as the ’941 patent was filed
`on October 1, 1998). Patent Owner also is not permitted to amend the
`claims of the ’941 patent in the instant IPR and the ’1406 IPR because the
`’941 patent has expired. We find Factor 5 weighs against a stay because
`there is no risk of a claim amendment in one proceeding affecting claim
`scope in another proceeding.
`
`
`3 U.S. Patent No. 5,933,498 issued on August 3, 1999 (Ex. 1006).
`5
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`IPR2021-01338
`Patent 6,411,941 B1
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`For Factors 6 and 7, Patent Owner points out that the Board has
`already decided to institute two IPR proceedings, and that the Board must
`issue a final determination in this IPR before January 27, 2023, and a final
`determination in the ’1406 IPR before February 22, 2023. Mot. 6; see also
`35 U.S.C. § 316(a)(11) (The final determination of any review instituted will
`normally be issued no later than 1 year from institution). Patent Owner also
`avers that, because the request for reexamination was filed in the ’865
`reexamination on September 21, 2021, it is “not likely to conclude before
`October of 2023—many months after a final written decision issues in either
`of the IPR proceedings.” Mot. 7. We agree with Patent Owner and find
`Factors 6 and 7 favor staying the ’865 reexamination.
`Regarding Factor 8, Patent Owner argues that, because the Board will
`issue a final written decision in the instant IPR and the ’1406 IPR before any
`final decision in ’865 reexamination, staying the ’865 reexamination would
`most likely simplify the issues remaining in the ’865 reexamination based on
`the Board’s final written decisions in the IPRs. Id. We agree with Patent
`Owner because all three proceedings involve the same grounds of
`unpatentability based on the same prior art and supported by substantially
`similar expert declarations. We find Factor 8 favors staying the ’865
`reexamination.
`
`III. CONCLUSION
`For the foregoing reasons, we find that Patent Owner has shown good
`cause for staying the ’865 reexamination, pending resolution of the instant
`IPR and the ’1406 IPR.
`
`6
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`IPR2021-01338
`Patent 6,411,941 B1
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`IV. ORDER
`
`Accordingly, it is
`ORDERED that Patent Owner’s Motion to Stay Reexamination
`Control No. 90/014,865 is granted;
`ORDERED that Reexamination Control No. 90/014,865 is stayed
`pending the termination or completion of the instant IPR and the ’1406 IPR;
`FURTHER ORDERED that this stay tolls all time periods for filing
`further papers in Reexamination Control No. 90/014,865, and no further
`papers shall be filed in Reexamination Control No. 90/014,865 or issued
`from the Office while this stay remains in place.
`
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`7
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`IPR2021-01338
`Patent 6,411,941 B1
`
`For PETITIONER:
`Jerry Riedinger
`Jose Villarreal
`Kyle Canavera
`Tara Kurtis
`PERKINS COIE LLP
`riedinger-ptab@perkinscoie.com
`villareal-ptab@perkinscoie.com
`canavera-ptab@perkinscoie.com
`kurtis-ptab@perkinscoie.com
`
`For PATENT OWNER:
`David Gosse
`Nicholas Peters
`Karen Wang
`FITCH, EVEN, TABIN & FLANNERY LLP
`dgosse@fitcheven.com
`ntpete@fitcheven.com
`kwang@fitcheven.com
`
`8
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