Trials@uspto.gov
`571-272-7822
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` Paper 23
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` Entered: May 4, 2022
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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 for IPR2021-01338,
`ROKU, INC. and VIZIO, INC.,
`Petitioner for IPR2021-01406
`v.
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`IPR2021-01338; IPR2021-014061
`Patent 6,411,941 B1
`____________
`
`
`Before THU A. DANG, JONI Y. CHANG, and KEVIN W. CHERRY,
`Administrative Patent Judges.
`
`
`CHANG, Administrative Patent Judge.
`
`
`
`DECISION
`Dismissing Joint Motions to Consolidate as Moot
`Granting Requests for Changing Oral Hearing Date and Due Dates
`35 U.S.C. § 315(d); 37 C.F.R. §§ 42.5 and 42.71
`
`
`
`
`
`1 This Decision applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Order to be filed in each proceeding. The parties
`are not authorized to use this heading style in any subsequent papers.
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 23
`
`
` Entered: May 4, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NINTENDO CO., LTD., and NINTENDO OF AMERICA INC.,
`Petitioner for IPR2021-01338,
`ROKU, INC. and VIZIO, INC.,
`Petitioner for IPR2021-01406
`v.
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`IPR2021-01338; IPR2021-014061
`Patent 6,411,941 B1
`____________
`
`
`Before THU A. DANG, JONI Y. CHANG, and KEVIN W. CHERRY,
`Administrative Patent Judges.
`
`
`CHANG, Administrative Patent Judge.
`
`
`
`DECISION
`Dismissing Joint Motions to Consolidate as Moot
`Granting Requests for Changing Oral Hearing Date and Due Dates
`35 U.S.C. § 315(d); 37 C.F.R. §§ 42.5 and 42.71
`
`
`
`
`
`1 This Decision applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Order to be filed in each proceeding. The parties
`are not authorized to use this heading style in any subsequent papers.
`
`
`
`IPR2021-01338; IPR2021-01406
`Patent 6,411,941 B1
`
`
`INTRODUCTION
`I.
`Nintendo Co., Ltd. and Nintendo of America Inc. (collectively,
`“Nintendo”) 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”) in IPR2021-01338 (“the ’1338
`IPR”). Paper 12, 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.
`(collectively, “Roku”). IPR2021-01406, Paper 10 (Institution Decision).
`On April 1, 2022, Patent Owner, Nintendo, and Roku filed a Joint
`Motion to Consolidate the ’1338 IPR and the ’1406 IPR in each case. 3
`Paper 17 (“Mot.”). On April 28, 2022, we held a conference call with the
`parties for both IPRs to seek clarifications regarding their Joint Motions.
`For the reasons discussed below, we dismiss the parties’ Joint
`Motions to Consolidate as moot, and we grant the parties’ requests to align
`the trial schedules for both IPRs.
`
`
`2 We cite to the record in IPR2021-01338, unless otherwise noted.
`3 Both Joint Motions are substantively the same. Comparing Paper 17, with
`IPR2021-01406, Paper 17.
`
`2
`
`
`
`IPR2021-01338; IPR2021-01406
`Patent 6,411,941 B1
`
`
`II. ANALYSIS
`The Director has authority to consolidate proceedings 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
`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).
`In their Motions, the parties for both proceedings indicate that they
`agree that a single deposition for each expert will be shared between both
`IPRs. Mot. 3. During the conference call, we explained that, even without a
`consolidation of the proceedings, the parties may agree to sharing a single
`deposition for each expert between both IPRs. Therefore, consolidating the
`proceedings is not necessary for sharing depositions between the IPRs.
`In their Motions, the parties also indicate that: (1) “the parties
`anticipate filing separate papers for each matter”; (2) “[t]he parties further
`agree that separate counsel for Petitioners will have the opportunity to argue,
`to address differences between the respective matter”; and (3) “[t]he parties
`will seek additional time for each side beyond normal limits and the
`Petitioners will share the time allocated for their side.” Mot. 4.
`Under that scenario, it appears that Nintendo and Roku, as Petitioner
`for a consolidated proceeding, may not necessarily speak with a uniform
`voice, as they may not share the same position on any issue. Indeed, during
`
`3
`
`
`
`IPR2021-01338; IPR2021-01406
`Patent 6,411,941 B1
`
`the conference call, Nintendo and Roku confirmed that, for example, they do
`not share the same claim construction position for certain claim terms.
`An IPR is not like a trial in the district court. For efficiency, we
`generally consolidate proceedings under 35 U.S.C. § 315(d) with the same
`petitioner, providing a single Final Written Decision to resolve the issues
`between the petitioner and patent owner. See, e.g., Nevro Corp. v. Boston
`Sci. Neuromodulation Corp., IPR2017-01812, Paper 79 at 2 (PTAB Feb. 1,
`2019). According to 37 C.F.R. § 42.2, “Petitioner” means “the party filing a
`petition requesting that a trial be instituted.” In an IPR, the separate
`companies, who filed the petition, constitute and stand in the shoes of a
`single “Petitioner.” Because those companies constitute collectively a single
`party, they speak with a single voice, both in writing and oral representation.
`See, e.g., Agilysys, Inc. v. Ameranth, Inc., CBM2014-00014, Paper 11, 3
`(PTAB Feb. 11, 2014); 505 Games, Inc. v. Babbage Holdings, Inc.,
`IPR2014-00954, Paper 17 at 2 (PTAB Aug. 22, 2014); Cradlepoint, Inc. v.
`3G Licensing S.A., IPR2021-00639, Paper 12 at 2 (PTAB May 13, 2021).
`Here, Nintendo and Roku do not agree to consolidated filings or oral
`arguments for the proposed consolidated proceeding. Mot. 4. During the
`conference call, we explained that, under that scenario, we would need to
`maintain two separate file records and render two separate Final Written
`Decisions for clarity. Such a consolidation would not provide efficiency.
`During the conference call, the parties alternatively requested to align
`the trial schedules for both IPRs. Mot. 4−5. The parties’ proposed schedule
`would not impact our ability to complete these trials within one year from
`institution, as required by 35 U.S.C. § 316(a)(11) and 37 C.F.R § 42.100(c).
`
`4
`
`
`
`IPR2021-01338; IPR2021-01406
`Patent 6,411,941 B1
`
`For example, the parties’ proposed schedule would move the ’1406 IPR’s
`oral hearing date from November 10, 2022 to October 3, 2022, the same oral
`hearing date for the ’1338 IPR. As such, we grant the parties’ request to
`align the trial schedules for both IPRs in lieu of consolidating the IPRs. We
`dismiss as moot the parties’ Joint Motions to Consolidate the proceedings.
`As to aligning the trial schedules, the parties’ proposed schedule4
`would change the ’1338 IPR’s Due Dates 1−4 for filing Patent Owner
`Response, Petitioner’s Reply, Patent Owner’s Sur-reply, and Requests for
`Oral Hearing. Id. The ’1338 IPR’s Scheduling Order already allows
`Nintendo and Patent Owner to stipulate to different dates for Due Dates 1−3.
`Paper 10, 7. We authorize Nintendo and Patent Owner to stipulate to a
`different date for Due Date 4 (earlier or later, but no later than Due Date 5).
`The parties’ proposed schedule also would change the ’1406 IPR’s
`Due Dates 4−8. Mot. 4−5. The ’1406 IPR’s Scheduling Order already
`allows Roko and Patent Owner to stipulate to different dates for Due Dates 5
`and 6. IPR2021-01406, Paper 11, 7. We authorize Roku and Patent Owner
`to stipulate to different dates for Due Date 4 (earlier or later, but no later
`than Due Date 5) and Due Date 7 (earlier or later, but no later than 1 week
`before the Oral Hearing). Also, as the parties proposed, the ’1406 IPR’s
`Due Date 8 for Oral Hearing will be moved to October 3, 2022. Mot. 5.
`
`
`
`4 Because the ’941 patent has expired, the parties’ proposed schedule does
`not affect the Due Dates for filing a Motion to Amend, Opposition to a
`Motion to Amend, or Reply to the Opposition.
`5
`
`
`
`IPR2021-01338; IPR2021-01406
`Patent 6,411,941 B1
`
`
`III. CONCLUSION
`For the foregoing reasons, we dismiss the parties’ Joint Motions to
`Consolidate as moot, and we grant the parties’ requests to align the trial
`schedules for both IPRs.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that parties’ Joint Motions to Consolidate IPR2021-01338
`and IPR2021-01406 are dismissed as moot;
`FURTHER ORDERED that the parties’ requests to align the trial
`schedules for both IPR2021-01338 and IPR2021-01406 are granted, as
`provided in this Order;
`FURTHER ORDERED that, in IPR2021-01338, Nintendo and Patent
`Owner may stipulate to a different date for Due Date 4 (earlier or later, but
`no later than Due Date 5);
`FURTHER ORDERED that, in IPR2021-01406, Roku and Patent
`Owner may stipulate to different dates for Due Date 4 (earlier or later, but no
`later than Due Date 5) and Due Date 7 (earlier or later, but no later than 1
`week before the Oral Hearing); and
`FURTHER ORDERED that, in IPR2021-01406, Due Date 8 for Oral
`Hearing (if requested) is set to October 3, 2022.
`
`
`
`
`
`
`6
`
`
`
`IPR2021-01338; IPR2021-01406
`Patent 6,411,941 B1
`
`PETITIONER NINTENDO:
`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
`
`PETITIONER ROKU:
`Jon Wright
`Lestin Kenton
`Dohm Chankong
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jwright-PTAB@sternekessler.com
`lkenton-PTAB@sternekessler.com
`dchankong-PTAB@sternekessler.com
`PTAB@sternekessler.com
`
`PATENT OWNER:
`David Gosse
`Nicholas Peters
`Karen Wang
`FITCH, EVEN, TABIN & FLANNERY LLP
`dgosse@fitcheven.com
`ntpete@fitcheven.com
`kwang@fitcheven.com
`
`7
`
`
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