UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`ROKU, INC. and VIZIO, INC.,
`Petitioners,
`
`v.
`
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`__________
`
`Case IPR2021-01406
`U.S. Patent No. 6,411,941 B1
`
`____________________________________________________________
`
`
`JOINT MOTION TO CONSOLIDATE IPR2021-01338 AND IPR2021-01406
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`ROKU, INC. and VIZIO, INC.,
`Petitioners,
`
`v.
`
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`__________
`
`Case IPR2021-01406
`U.S. Patent No. 6,411,941 B1
`
`____________________________________________________________
`
`
`JOINT MOTION TO CONSOLIDATE IPR2021-01338 AND IPR2021-01406
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`
`
`Case IPR2021-01406: Joint Motion to Consolidate IPR2021-01338 and IPR2021-
`01406
`I.
`BRIEF STATEMENT OF RELIEF REQUESTED
`
`In response to the Board’s email on March 25, 2022, Patent Owner Ancora
`
`Technologies, Inc. (“Ancora” or “Patent Owner”), Petitioners Nintendo Co., Ltd.,
`
`and Nintendo of America Inc. (collectively “Nintendo”) and Petitioners Roku, Inc.
`
`and Vizio, Inc. (collectively “Roku/Vizio” and jointly with Nintendo “Petitioners”)
`
`jointly request the Board to consolidate certain aspects of IPR2021-01338 and
`
`IPR2021-01406, both of which challenge U.S. Patent No. 6,411,941 (“the ’941
`
`Patent”).
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`Each of the matters 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.).
`
`Both IPR2021-01338 and IPR2021-01406 assert the same grounds against the
`
`same claims as were previously asserted by petitioner TCT Mobile in IPR2020-
`
`01609, as discussed below.
`
`
`
`1
`
`
`
`Case IPR2021-01406: Joint Motion to Consolidate IPR2021-01338 and IPR2021-
`01406
`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.
`
`
`
`2
`
`
`
`Case IPR2021-01406: Joint Motion to Consolidate IPR2021-01338 and IPR2021-
`01406
`III. PROPOSED CONSOLIDATION
`
`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
`
`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). The significant overlap of
`
`issues in IPR2021-01338 and IPR2021-01406 warrants consolidation of these
`
`matters for efficiency and fairness. As noted above, IPR2021-01338 and IPR2021-
`
`01406 involve identical grounds asserted against the same claims of the ’941 patent.
`
`Both petitions are supported by substantively identical declarations submitted by Dr.
`
`Andrew Wolfe. Ancora intends to use a single expert for both matters, and expects
`
`differences between the arguments and issues in the two IPRs to be minimal.
`
`The Parties have conferred and jointly propose the following alignment of
`
`these two matters, in the interest of fairness and efficiency. First, the parties agree
`
`that it would be inefficient and unfair to hold separate expert depositions for the two
`
`matters. The parties therefore agree that a single deposition for each expert will be
`
`shared between the two IPRs. In view of the minor differences between the
`
`declarations for each matter and to allow counsel for both parties the opportunity to
`
`question the witness, the parties agree that each deposition will run a maximum of
`
`
`
`3
`
`
`
`Case IPR2021-01406: Joint Motion to Consolidate IPR2021-01338 and IPR2021-
`01406
`nine hours of deposition time on the clock. The parties agree that this time may be
`
`spread across more than one day.
`
`Second, the parties anticipate filing separate papers for each matter.
`
`Third, the parties agree that a single oral hearing (if held) will encompass all
`
`issues for both proceedings. The parties further agree that separate counsel for
`
`Petitioners will have the opportunity to argue, to address differences between the
`
`respective matters. The parties will seek additional time for each side beyond normal
`
`limits and the Petitioners will share the time allocated for their side.
`
`Fourth, the parties propose the following consolidated schedule, to
`
`accommodate discovery and align the oral hearings in each matter. Patent Owner
`
`Ancora will not file a motion to amend the ’941 patent, which allows for some
`
`compression in the proposed schedule:
`
`Existing Dates for
`IPR2021-01338
`(Nintendo)
`April 7, 2022
`
`P.O.
`Response
`Pet. Reply June 16, 2022
`
`Existing Dates for
`IPR2021-01406
`(Roku/VIZIO)
`May 3, 2022
`
`Dates Sought for
`Consolidated
`Proceeding
`May 3, 2022
`
`July 12, 2022
`
`July 12, 2022
`
`
`
`
`
`Due
`Date 1
`Due
`Date 2
`Due
`Date 3
`Due
`Date 4
`
`July 25, 2022
`
`August 19, 2022
`
`August 19, 2022
`
`August 15, 2022
`
`September 9, 2022 August 22, 2022
`
`P.O. Sur-
`Reply
`Request
`Oral
`Hearing
`
`
`
`4
`
`
`
`Case IPR2021-01406: Joint Motion to Consolidate IPR2021-01338 and IPR2021-
`01406
`
`
`
`
`Dates Sought for
`Existing Dates for
`Existing Dates for
`Consolidated
`IPR2021-01406
`IPR2021-01338
`Proceeding
`(Roku/VIZIO)
`(Nintendo)
`September 5, 2022 September 30, 2022 September 5, 2022
`
`September 12, 2022 October 7, 2022
`
`September 12, 2022
`
`September 19, 2022 October 14, 2022
`
`September 19, 2022
`
`October 3, 2022
`
`November 10, 2022 October 3, 2022
`
`to
`Mot.
`Exclude
`Evid.
`to
`Opp.
`to
`Mot.
`Exclude
`Reply ISO
`Mot.
`to
`Exclude
`Oral
`hearing
`
`Due
`Date 5
`
`Due
`Date 6
`
`Due
`Date 7
`
`Due
`Date 8
`
`
`The parties respectfully request the Board’s permission to move Due Date 4
`
`from IPR2021-01338 by one week, to August 22, 2022. To the extent the Board
`
`could maintain the October 3, 2022 hearing date while moving Due Date 4 to occur
`
`several days after Due Date 3 from the Roku/Vizio schedule, the parties prefer to
`
`align Due Dates 1–3 with the corresponding deadlines in the Roku/Vizio schedule.
`
`The parties had alternatively considered setting each of Due Dates 1–3 one week
`
`earlier to avoid the need for moving Due Date 4, but this would undesirably place
`
`Due Date 2 on July 5, creating an unnecessary challenge for Petitioners. The parties
`
`are available to discuss the above at the Board’s convenience if it is desired.
`
`
`
`5
`
`
`
`Case IPR2021-01406: Joint Motion to Consolidate IPR2021-01338 and IPR2021-
`01406
`IV. CONCLUSION
`
`
`
`For at least the reasons set forth above, the parties jointly request
`
`consolidation of IPR2021-01338 and IPR2021-01406 as outlined above, and
`
`respectfully request entry of a new order on the conduct of the proceedings in each
`
`of the two proceedings to memorialize the revised schedule.
`
`
`
`
`
`
`
`
`Dated: April 1, 2022
`
`
`
`120 South LaSalle Street
`Suite 2100
`Chicago, Illinois 60603
`(312) 577-7000
`(312) 577-7007 (fax)
`
`Respectfully submitted,
`FITCH EVEN TABIN & FLANNERY LLP
`
`By: /David A. Gosse/
`David A. Gosse
`Registration No. 61,511
`dgosse@fitcheven.com
`
`
`
`
`
`
`
`6
`
`
`
`Case IPR2021-01406: Joint Motion to Consolidate IPR2021-01338 and IPR2021-
`01406
`
`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 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 IPR2021-01406 at their respective electronic mail
`
`addresses:
`
`Lead Counsel
`Jon Wright, Reg. No. 50,720
`jwright-PTAB@sternekessler.com
`(202) 772-8651
`STERNE, KESSLER, GOLDSTEIN & FOX
`P.L.L.C
`
`Back-up Counsel
`Lestin Kenton, Reg. No. 72,314
`lkenton-PTAB@sternekessler.com
`(202) 772-8594
`
`Dohm Chankong, Reg. No. 72,314
`dchankong-PTAB@sternekessler.com
`(202) 772-8529
`
`
`
`7
`
`
`
`Case IPR2021-01406: Joint Motion to Consolidate IPR2021-01338 and IPR2021-
`01406
`
`
`
`Dated: April 1, 2022
`
`By:
`
`
`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
`
`
`
`
`8
`
`
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