Trials@uspto.gov
`571-272-7822
`
`Paper 12
`Entered: June 22, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and GOOGLE LLC,
`Petitioner,
`v.
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner.
`
`IPR2022-00284
`Patent 9,997,962 B2
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, KARL D. EASTHOM, and
`AARON W. MOORE, Administrative Patent Judges.
`EASTHOM, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 12
`Entered: June 22, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and GOOGLE LLC,
`Petitioner,
`v.
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner.
`
`IPR2022-00284
`Patent 9,997,962 B2
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, KARL D. EASTHOM, and
`AARON W. MOORE, Administrative Patent Judges.
`EASTHOM, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2022-00284
`Patent 9,997,962 B2
`
`INTRODUCTION
`I.
`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc.,
`and Google LLC (collectively “Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting an inter partes review of claims 1–8, 18, and 19 of U.S. Patent
`No. 9,997,962 B2 (Ex. 1001, the “’962 patent”). Scramoge Technology
`Ltd. (“Patent Owner”) filed a Preliminary Response (Paper 8,
`“Prelim. Resp.”). Petitioner filed a Preliminary Reply to Patent Owner’s
`Preliminary Response (Paper 9, “Pet. Prelim. Reply”) and Patent Owner
`filed a Preliminary Sur-reply (Paper 11, “PO Prelim. Sur-reply”) to address
`discretionary denial issues.
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). Institution
`of an inter partes review requires that “the information presented in the
`petition and . . . any response . . . shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set
`forth below, we determine that there is a reasonable likelihood that
`Petitioner will prevail with respect to at least one challenged claim.
`Accordingly, we institute an inter partes review of the ’962 patent.
`II. BACKGROUND
`A. Real Parties in Interest
`The parties identify themselves as real parties in interest. Pet. 1;
`Paper 6, 2.
`
`B. Related Matters
`The parties identify the following proceedings as related matters
`involving the ’962 patent: Scramoge Ltd. v. Samsung Electronics Co.,
`Ltd. No., 6:21-cv-0454-ADA (filed Apr. 30, 2021, W.D. Tex.) (“Samsung
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`2
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`IPR2022-00284
`Patent 9,997,962 B2
`District Court proceeding”); Scramoge Technology Ltd. v. Google LLC,
`No. 6:21-cv-0616-ADA (filed June 15, 2021, W.D. Tex.) (“Google District
`Court proceeding”); Scramoge Technology Ltd. v. Apple Inc.,
`No. 6:21-cv-0579-ADA (filed June 7, 2021, W.D. Tex., transferred to ND
`Cal., May 17, 2022, now No. 5:22-cv-03041) (“Apple District Court
`proceeding”); See Paper 6, 2–3; Pet. 1–2.
`The parties identify Apple Inc. v. Scramoge Technology Ltd.,
`IPR2022-00120 (PTAB October 29, 2021) (instituted May 4, 2021 on claims
`1–4, 7, 8, 18, and 19 of the ’962 patent) (“Apple-120IPR”) as involving the
`’962 patent. Other proceedings involving related patents follow: Apple
`Inc. v. Scramoge Technology Ltd., IPR2022-00117 (PTAB October 29,
`2021); Apple Inc. v. Scramoge Technology Ltd., IPR2022-00118
`(PTAB October 29, 2021); Apple Inc. v. Scramoge Technology Ltd.,
`IPR2022-00119 (PTAB October 29, 2021); Samsung Electronics Co. Ltd.,
`and Samsung Electronics America, Inc. v. Scramoge Technology Ltd.,
`IPR2022-00185 (PTAB November 12, 2021); Samsung Electronics Co. Ltd.,
`and Samsung Electronics America, Inc. v. Scramoge Technology Ltd.,
`IPR2022-00241 (PTAB November 30, 2021). See Paper 6 at 2–3; Pet. 1.
`C. The ’962 Patent
`The ’962 patent relates to a wireless charging device using a
`transmitting primary coil coupled via electromagnetic induction to a
`receiving secondary coil for charging a power supply in household
`electronic products and other products. See Ex. 1001, code (57), 1:24–21.
`[A]n embodiment of the present invention includes a substrate, a
`soft magnetic layer stacked on the substrate, and a receiving coil
`configured to receive electromagnetic energy emitted from a
`wireless power transmission device, wound in parallel with a
`plane of the soft magnetic layer, and formed inside of the soft
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`IPR2022-00284
`Patent 9,997,962 B2
`magnetic layer, and an insulating layer is formed between the
`soft magnetic layer and the receiving coil.
`Id. at code (57).
`
`Figure 5 of the ’962 patent follows:
`
`
`
`’962 Patent’s Figure 5
`Figure 5 illustrates an example of “a soft magnetic layer and a
`receiving coil” as described above. Ex. 1001, 6:8–9. The embodiment
`includes “an adhesive layer 510 . . . formed on a soft magnetic layer 500
`[and] a receiving coil 520 . . . formed on the adhesive layer 510.” Id. at
`6:11–30. “[A] support means 530 is formed on the receiving coil 520 . . .
`and may have a form of film.” Id. at 6:14–17. As depicted by Figure 5, the
`highest position of the soft magnetic layer 500 is higher from an underlying
`substrate (not shown) than the lowest portion of the receiving coil 520.
`See also id. at 5:10–12 (describing a substrate 210).
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`IPR2022-00284
`Patent 9,997,962 B2
`Figure 6 of the ’962 patent follows:
`
`’962 Patent’s Figure 6
`Figure 6 illustrates an example of the adhesive layer 510 as described
`above, otherwise known as double-sided tape. See Ex. 1001, 6:42–45.
`“[T]he adhesive layer 510 may have a double-sided structure including an
`insulating layer.” Id. at 6:37–38. Specifically, “the adhesive layer 510 may
`include a first adhesive layer 512, an insulating layer 514 formed [on] the
`first adhesive layer 512, and a second adhesive layer 516 formed on the
`insulating layer.” Id. at 6:42–45.
`As collectively depicted by Figures 5 and 6, adhesive layer 510 forms
`a double-sided configuration including first 512 and second 516 adhesive
`layers that sandwich an insulating layer 514 and mount the receiving coil
`520 to the soft magnetic layer 500. Id. at 6:42–45. The insulating layer 514
`“may include . . . polyethylene terephthalate (PET) material.” Id. at 6:47.
`
`5
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`IPR2022-00284
`Patent 9,997,962 B2
`
`D. Illustrative Claim
`Independent claim 1 follows:
`[1pre] A wireless power receiving antenna comprising:
`[1a] a substrate;
`[1b] a soft magnetic layer comprising a first magnetic
`sheet disposed on the substrate and a second magnetic sheet
`disposed on the first magnetic sheet;
`[1c] a receiving coil disposed on the second magnetic
`sheet; and
`[1d] an adhesive layer formed between the second
`magnetic sheet and the receiving coil,
`[1e] wherein the adhesive layer includes a first adhesive
`layer in contact with the second magnetic sheet, a second
`adhesive layer in contact with the receiving coil, and an
`insulating layer disposed between the first adhesive layer and
`the second adhesive layer, and
`[1f] wherein a height of a highest position of the second
`magnetic sheet from the substrate is higher than a height of a
`lowest position of the receiving coil from the substrate.
`Ex. 1001, 8:54–9:4 (bracketed information added). Claim 18, the other
`independent claim challenged, differs only in its preamble limitation 18pre,
`which recites “[a] wireless power receiving apparatus comprising a receiving
`circuit and a wireless power receiving antenna, the wireless power receiving
`antenna comprising.” Id. at 10:29–48. 1
`E. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–8, 18, and 19 are unpatentable as
`follows:2
`
`
`1 We herein and below designate and refer to each limitation in claim 18 in
`similar fashion as claim 1, i.e., referencing limitations 18pre, 18a, . . . 18f.
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’962 patent’s
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`IPR2022-00284
`Patent 9,997,962 B2
`
`Claim(s) Challenged
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`1–8, 18, 19
`
`103(a)
`
`Suzuki,3 Okada4
`
`2–8
`1–8, 18, 19
`
`2–8
`
`Suzuki, Okada, Yang5
`Suzuki, Okada, Lin6
`Suzuki, Okada, Lin,
`Yang
`Suzuki, Lee7
`103(a)
`1–8, 18, 19
`Suzuki, Lee, Lin
`103(a)
`6
`Pet. 3–4. Petitioner supports its Petition with the Declaration of
`Dr. Gary Woods (Ex. 1002). Pet. 3.
`III. DISCRETION TO DENY INSTITUTION
`UNDER 35 U.S.C. § 314(a)
`Institution of an inter partes review is discretionary.
`See 35 U.S.C. § 314(a) (authorizing institution of an inter partes review
`under particular circumstances, but not requiring institution under any
`circumstances); Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 273 (2016)
`(“[T]he agency’s decision to deny a petition is a matter committed to the
`Patent Office’s discretion.”); SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356
`(2018) (“[Section] 314(a) invests the Director with discretion on the
`question whether to institute review . . . .” (emphasis omitted)); Harmonic
`
`effective filing date is after the March 16, 2013 effective date of the
`applicable AIA amendment, the post-AIA version of § 103 applies.
`3 U.S. Patent No. 9,515,513 B2, issued Dec. 6, 2016 (Ex. 1005).
`4 U.S. Pub. No. 2009/0284341 A1, published Nov. 19, 2009 (Ex. 1006).
`5 U.S. Patent No. 8,268,092 B2, issued Sept. 18, 2012 (Ex. 1013).
`6 U.S. Pub. No. 2014/0147625 A1, published May 29, 2014 (Ex. 1014).
`7 U.S. Patent No. 9,252,611 B2, issued Feb. 2, 2016 (Ex. 1007).
`
`103(a)
`103(a)
`
`103(a)
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`Patent 9,997,962 B2
`Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
`permitted, but never compelled, to institute an IPR proceeding.”).
`A. General Plastic Factors
`Relying on General Plastic Indus. Co. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (Sept. 6, 2017) (precedential), Patent Owner
`argues the Petition is a “follow on’ petition” of the petition for the
`Apple-120IPR (identified at supra § II.B). Prelim. Resp. 31–32. That is,
`Patent Owner contends the General Plastic factors (see infra 8) weigh in
`favor of denying institution based on the earlier Apple-120IPR petition filed
`by another petitioner, Apple Inc. (“Apple”). Id. at 32–40. Patent Owner
`contends that Petitioner could have earlier-filed the Petition in response to
`the complaint filed in the Samsung District Court proceeding
`(identified at supra § II.B). Id. at 34–36 (Factors 4 and 5).
`In the Apple-120IPR, after Patent Owner sued Apple in a separate
`district court action (i.e., separate relative to the action Patent Owner filed
`against the instant Petitioner), Apple challenged the ’962 patent and the
`Board instituted on claims 1–4, 7, 8, 18, and 19. Apple-120IPR, Paper 9
`(Decision Granting Institution) at 2, 35. The challenges in the
`Apple-120IPR follow:
`
`Claim(s) Challenged
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`1, 18, 19
`
`103
`
`Suzuki-574,8 Lee9
`Suzuki-574, Lee,
`Sawa10
`
`103
`
`2–4, 7
`
`8 U.S. Pat. No. 8,421,574 B2, issued Apr. 16, 2013 (“Suzuki-574”).
`9 U.S. Pat. No. 9,252,611 B2, issued Feb. 2, 2016.
`10 U.S. Pat. No. 9,443,648 B2, issued Sept. 13, 2016.
`
`8
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`IPR2022-00284
`Patent 9,997,962 B2
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`Claim(s) Challenged
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`8
`
`103
`
`Suzuki-574, Lee, Sawa,
`Park11
`See Apple 120IPR, Paper 9, 6; Ex. 1005; supra note 7.
`In General Plastic, the Board articulated the following
`non-exhaustive list of factors to be considered in determining whether to
`exercise discretion under § 314(a) to deny a petition that challenges the same
`patent as a previous petition:
`1. whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
`2. whether at the time of filing of the first petition the
`petitioner knew of the prior art asserted in the second petition or
`should have known of it;
`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision on
`whether to institute review in the first petition;
`4. the length of time that elapsed between the time the
`petitioner learned of the prior art asserted in the second petition
`and the filing of the second petition;
`5. whether the petitioner provides adequate explanation for
`the time elapsed between the filings of multiple petitions directed
`to the same claims of the same patent;
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a
`final determination not later than 1 year after the date on which
`the Director notices institution of review.
`General Plastic at 9–10. As with other non-dispositive factors considered
`for institution under § 314(a), the Board weighs these factors as part of a
`“balanced assessment of all relevant circumstances in the case, including the
`
`
`11 U.S. Pat. No. 8,922,162 B2, issued Dec. 30, 2014.
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`merits.” Patent Trial and Appeal Board Consolidated Trial Practice Guide
`58 & n.2 (Nov. 2019), https://www.uspto.gov/
`TrialPracticeGuideConsolidated (“CTPG”) (discussing follow-on petitions
`and parallel proceedings, citing General Plastic).
`1. Factor 1: whether the same petitioner previously filed a petition
`directed to the same claims of the same patent
`Patent Owner acknowledges: “Factor[] 1 . . . relate[s] to successive
`petitions filed by the same petitioner, which is not at issue here. Factor 1
`weighs in favor of institution[.]” Prelim. Resp. 33.
`Petitioner and Patent Owner dispute whether the “same petitioner”
`consideration of Factor 1 is dispositive under General Plastic. See Pet. 85;
`Prelim. Resp. 33–34. Petitioner contends that
`General Plastic concerns serial petitions filed by the same
`petitioner directed to the same claims of the same patent.
`Id. (first factor). Here, this is Petitioner’s first petition directed
`to any claims of the ’962 Patent. Moreover, the Apple-120IPR
`does not challenge the “same claims” of the ’962 Patent as the
`instant IPR. In particular, the Apple-120IPR does not cover
`Claims 5 and 6, which are challenged here. And, significantly,
`claim 6 is asserted against Samsung.
`Pet. 85 (arguing that “second through fifth factors have little to no bearing
`here given factor one favors institution”). Patent Owner characterizes
`Petitioner’s argument as treating “Factor 1 as dispositive,” and contends that
`this “is directly contrary to NetApp’s holding that all ‘General Plastic factors
`provide a useful framework for analyzing the facts and circumstances.’” See
`Prelim. Resp. 33–34 (citing NetApp v. Realtime Data, IPR2017-01195,
`Paper 9 at 12–13 (PTAB Oct. 12, 2017); Valve v. Elec. Scripting Prods.,
`IPR2019-00062, Paper 11 at 9 (Apr. 2, 2019) (designated precedential May
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`10
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`IPR2022-00284
`Patent 9,997,962 B2
`7, 2019) (“Valve I”); Valve v. Elec. Scripting Prods., IPR2019-00064, Paper
`10 (May 1, 2019) (designated precedential Aug. 2, 2019) (“Valve II”).
`As Valve II held, “when different petitioners challenge the same
`patent, [the Board] consider[s] any relationship between those petitioners
`while weighing the General Plastic factors.” Valve II at 10. For example, in
`weighing this consideration against second petitioner Valve involved in
`Valve II, the Board noted that “Valve and HTC were co-defendants in the
`District Court litigation and were accused of infringing the ’935 patent based
`on the same product, namely HTC’s VIVE devices that incorporate
`technology licensed from Valve.” See id. at 10–11. Also, Valve joined the
`previous petition as a party and the later-filed Valve petitions challenged the
`same claims as the previous petition. See id. at 11. Valve II found a
`“complete overlap in the challenged claims and . . . significant relationship
`between Valve and [the prior petitioner] HTC.” Id. Valve I and Valve II
`both found a “complete overlap in the challenged claims and the significant
`relationship between Valve and [prior petitioner] HTC” to “favor denying
`institution. Valve I at 10 (emphasis added); Valve II at 11 (same).
`Patent Owner does not allege that Petitioner and the Apple-120IPR
`petitioner (“Apple”) have the type of “significant relationship” found in
`Valve I and Valve II. The record does not support a “significant
`relationship.” For example, Petitioner did not seek to join the earlier
`Apple-120IPR petition, Petitioner and Apple are not co-defendants in the
`same trial, and Patent Owner does not contend that the two defendants
`infringe by using the same products.
`Also different from Valve I and Valve II, Petitioner and Apple do not
`challenge the same claims. Petitioner challenges two additional claims not
`challenged in Apple-120IPR. Compare supra § II.E (grounds in the
`
`11
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`IPR2022-00284
`Patent 9,997,962 B2
`Petition) and supra 8 (grounds in the Apple-120IPR). See Valve I at 10;
`Valve II at 11.
`Therefore, this factor favors not exercising discretion to deny
`institution.
`2. Factor 2: whether at the time of filing of the first petition the
`petitioner knew of the prior art asserted in the second petition or
`should have known of it
`Petitioner argues that “the second through fifth factors have little to no
`bearing here given factor one favors institution.” Pet. 85 (citing Amneal
`Pharmaceuticals LLC et al. v. Almirall, LLC, IPR2019-00207, Paper
`13 at 12–13 (May 10, 2019) (finding factor one dispositive); Western Digital
`Corp. v. Spex Technologies, Inc., IPR2018-00084, Paper 14 at 17 (April 25,
`2018) (“Because Petitioner has not previously filed a petition against the
`same patent, factors 2–5 bear little relevance in this case.”).
`Patent Owner concedes that Factor 2 is “neutral” because it “relate[s]
`to successive petitions filed by the same petitioner, which is not at issue
`here.” Prelim. Resp. 33.
`Factor 2 of General Plastic, “whether at the time of filing of the first
`petition the petitioner knew of the prior art asserted in the second petition or
`should have known of it,” is of little probative value as Patent Owner
`essentially concedes—Petitioner did not file a first petition and there is no
`significant relationship between Petitioner here and prior petitioner Apple.
`Hence, the issue of whether Petitioner could have raised the prior art at issue
`here in the first petition is not relevant. See General Plastic at 19–20.
`Therefore, this factor favors not exercising discretion to deny
`institution.
`
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`IPR2022-00284
`Patent 9,997,962 B2
`3. Factor 3: whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision on
`whether to institute review in the first petition
`Patent Owner concedes that “whether the petitioner already received
`the Board’s decision on whether to institute review in the first petition” “is
`not at issue here,” so “Factor 3 is neutral.” Prelim. Resp. 33.
`Petitioner contends Factor 3 favors institution because it filed the
`Petition “shortly after” the Apple-120IPR petition and before the
`Apple-120IPR preliminary response. Pet. 85; see also Pet. Prelim. Reply 6.
`Therefore, Petitioner explains that it “could not have leveraged any
`perceived flaws in the Apple-120IPR. Pet. 85 (citing Unified Patents Inc. v.
`Speakware, Inc., IPR2019-00495, Paper 9 at 14–15 (PTAB July 1, 2019).
`As Patent Owner essentially concedes, Petitioner received no potential
`benefit based on the timing here. See Prelim. Resp. 33.
`Therefore, this factor favors not exercising discretion to deny
`institution.
`4. Factors 4 and 5: (4) the length of time that elapsed between the
`time the petitioner learned of the prior art asserted in the second
`petition and the filing of the second petition; (5) whether the
`petitioner provides adequate explanation for the time elapsed
`between the filings of multiple petitions directed to the same
`claims of the same patent
`Factors 4 and 5 involve the elapse of time between when Petitioner
`learned of the references it filed with the Petition (i.e., Suzuki, Okada, Lee,
`Lin, and Yang) and when it filed the Petition, and whether Petitioner
`adequately explains the elapse of time between the filings of Apple’s
`petition and the instant Petition, respectively.
`
`13
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`Patent 9,997,962 B2
`Petitioner contends that “while [Patent Owner] argues that Petitioner
`was aware of the relied-upon prior art in this IPR by November 15, 2021,
`when invalidity contentions were served,” Patent Owner “fails to
`acknowledge that the instant petition was filed within three weeks of that
`date.” Pet. Prelim. Reply 6 (citing Prelim. Resp. 34–35). As indicated
`above, Petitioner also contends that “[t]he fourth and fifth factors . . . are
`inapplicable since this is Petitioner’s first petition challenging any claims of
`the ’962 Patent and because there is little to no overlap between the grounds
`of this petition and the grounds in the Apple-120IPR.” Pet. 86.
`Regarding Factor 4, Patent Owner contends that “[a]t a minimum,
`Petitioner knew of the Suzuki, Okada, Lee, and Yang references by
`November 15, 2021, when they served invalidity contentions that provided
`claim charts for Suzuki, Okada, Lee, and Yang.” See Prelim. Resp. 34–35
`(citing Ex. 2011 (excerpts of Samsung’s invalidity contentions), Ex. 2019
`(excerpts of Google’s invalidity contentions); see also PO Prelim. Sur-reply
`(arguing that “Petitioner fails to identify when it first learned of the prior art
`asserted in the Petition”)). Regarding Factor 5, Patent Owner argues that
`“Petitioner has not provided any reason why they could not have [earlier]
`identified the Suzuki, Okada, Lee, and Yang references, which are publicly
`available patents, [and thus] brought the Petition earlier.” Id. at 35. Patent
`Owner also explains that “Petitioner provided no explanation for waiting
`more than seven months after being served with the complaint to file the
`Petition.” Id.
`Patent Owner’s arguments support Petitioner’s contention that
`Petitioner filed the Petition three weeks after Patent Owner served Petitioner
`with its invalidity contentions. See Prelim. Resp. 35; Pet. Prelim. Reply 6
`(citing Prelim. Resp. 34–35). Under these circumstances, Petitioner
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`provides a reasonable explanation for why it filed its Petition seven months
`after the Apple petition.
`As reflected above, Valve II groups General Plastic factors four and
`five together. Valve II at 13. This indicates a concern over challenges to the
`same claims for both factors, as General Plastic factor five explicitly relates
`to challenges to the “same claims,” a situation not present here. General
`Plastic at 9. As also noted, the Petition challenges additional claims not
`challenged in the Apple-120IPR.
`Therefore, General Plastic factors 4 and 5 favor not exercising
`discretion to deny institution.
`5. Factor 6: the finite resources of the Board
`As to Factor 6, Patent Owner contends that “[t]he fact that the Petition
`challenges two additional dependent claims does not justify wasting the
`Board’s resources.” Prelim. Resp. 37. Patent Owner also contends that
`“Petitioner could and should have . . . joined the earlier Apple IPR and
`provides no justification for why it did not do so.” Id. at 38.
`Petitioner responds that “Samsung and Google jointly filed this
`petition, which promotes efficiency, including conserving the Board’s
`resources.” Pet. Prelim. Reply 6.
`The joint filing conserves resources, as Petitioner argues. And
`because the prior art issues and challenged claims are not the same across
`the two petitions, joinder is not possible under current precedent. Facebook,
`Inc. v. Windy City Innovations, LLC, 953 F.3d 1313, 1325 (Fed. Cir. 2020)
`(“We therefore conclude that the unambiguous meaning of § 315(c) is that it
`allows the Director discretion to join a person as a party to an already
`instituted IPR but does not permit the joined party to bring new issues from
`the newer proceeding into the existing proceeding.”).
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`In addition, sufficient similarities exist in the Petition and Apple’s
`petition based on similar claimed subject matter and similar prior art.
`Suzuki and Suzuki-574 each relate to similar wireless coils provided on a
`magnetic sheet for providing wireless charging to a battery, and each
`petition relies on the similar references as a primary reference to challenge
`the claims. Compare Ex. 1005, 1:7–15, 2:13–16, code (57) and Pet. 10–70
`with Apple-120IPR. Ex. 1005, 1:8–11, 2:6–18, code (57) and Paper 2, 17–
`61. These similarities provide some basis for efficiency in resolving issues
`timely.
`Therefore, this factor is neutral or favors not exercising discretion to
`deny institution.
`6. Factor 7: the requirement under 35 U.S.C. § 316(a)(11) to issue a
`final determination not later than 1 year after the date on which
`the Director notices institution of review
`After considering the resources of the Board as discussed above in
`connection with Factor 6, we determine there is no problem with issuing a
`final determination within a year of institution. Therefore, this factor is
`neutral or favors not exercising discretion to deny institution.
`7. Conclusion
`Under a holistic analysis and under the particular circumstances of
`this case, the interests of efficiency and integrity of the patent system tilt
`toward not invoking our discretionary authority under § 314(a) to deny
`institution of the Petition.
`
`B. Fintiv Factors
`Patent Owner argues that we should exercise discretion to deny
`institution under 35 U.S.C. § 314(a) in view of the District Court
`Proceeding. Prelim. Resp. 40–53 (citing, inter alia, Apple Inc. v. Fintiv,
`
`16
`
`
`
`IPR2022-00284
`Patent 9,997,962 B2
`Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential)
`(“Fintiv”)). An advanced state of a parallel district court proceeding is a
`“factor that weighs in favor of denying the Petition under § 314(a).” NHK
`Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20
`(PTAB Sept. 12, 2018) (precedential) (“NHK”). Specifically, an early trial
`date is part of a “balanced assessment of all relevant circumstances in the
`case, including the merits.” CTPG 58.
`This balanced assessment involves consideration of the following
`factors:
`
`1. whether the court granted a stay or evidence exists
`that one may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and
`the parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise
`of discretion, including the merits.
`Fintiv, Paper 11 at 5–6.
`1. Factor 1: whether the court granted a stay or evidence exists that
`one may be granted if a proceeding is instituted
`The parties initially agreed that a stay has neither been requested nor
`granted in the District Court cases involving Petitioner (supra § II.B
`(identifying Related Matters)). See Pet. 1, 82; Prelim. Resp. 3, 42–44;
`Pet. Prelim. Reply 1; PO Sur-reply 1. Recently, on June 6, 2022, however,
`the parties requested a stay for 30 days, notifying the district court “that all
`
`17
`
`
`
`IPR2022-00284
`Patent 9,997,962 B2
`matters in controversy between the Parties have been settled, in principle.”
`Ex. 3001 (Samsung prospective settlement announcement and request for
`stay); Ex. 3002 (Google prospective settlement announcement and request
`for stay).
`At this stage, based on the settlement in principle and joint request for
`a stay, it appears that a stay may be granted and/or that the trial may not
`occur due to settlement.
`Accordingly, this factor weights against exercising discretion to deny
`institution.
`2. Factor 2: proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision
`The Board assesses this factor on a case-by-case basis. On one hand,
`the Board takes a district court’s trial schedule at “face value” and declines
`to question it “absent some strong evidence to the contrary.” Apple
`Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12–13 (PTAB May 13,
`2020) (informative). On the other hand, the Board considers the uncertainty
`in the schedule despite a scheduled trial date. Sand Revolution II, LLC
`v. Cont’l Intermodal Grp. Trucking LLC, IPR2019-01393, Paper 24 at 11–12
`(PTAB June 16, 2020) (informative) (“Sand Revolution II”).
`The projected date of the Board’s final written decision here is June
`22, 2023. The trial date for the Google District Court proceeding and the
`trial date for the Samsung District Court proceeding is March 6, 2023, with
`the Samsung trial date scheduled to go first. See Ex. 3004. The District
`Court previously scheduled the trial for February 27, 2023. Ex. 3003. Of
`course, the trials will occur only if the parties do not settle, an unlikely
`event, given the settlement in principle as stated by the parties. Ex. 3001;
`Ex. 3002.
`
`18
`
`
`
`IPR2022-00284
`Patent 9,997,962 B2
`Accordingly, given the uncertainty as to a trial occurring based on the
`parties’ intent to settle, this factor weighs against exercising discretion to
`deny institution.
`3. Factor 3: investment in the parallel proceeding by the court
`and the parties
`If, at the time of the institution decision, a district court has issued
`substantive orders related to the challenged patent, such as a
`claim construction order, this circumstance weighs in favor of denial.
`See Fintiv, Paper 11 at 9–10. On the other hand, if the district court has not
`issued such orders, this circumstance weighs against discretionary denial.
`Id. at 10. Moreover, in evaluating this factor, “[i]f the evidence shows that
`the petitioner filed the petition expeditiously, such as promptly after
`becoming aware of the claims being asserted, this fact has weighed against
`exercising the authority to deny institution under NHK.” Id. at 11.
`Patent Owner contends as follows:
`The parties have already exchanged preliminary infringement
`and invalidity contentions—including Samsung’s 29 invalidity
`contention claim charts totaling more than 1711 pages for the
`’962 patent alone. Further, by the June 30, 2022 institution
`decision deadline, the parties will have exchanged final
`infringement and invalidity contentions, discovery will be
`underway, and, more importantly, claim construction will be
`completed. Exs. 2015, 2021. As of the date of this response, the
`parties have completed their claim construction briefing.
`Prelim. Resp. 46–47.
`The District Court held a Markman hearing on May 23, 2022 and
`issued a claim construction order on the same date. Ex. 3005.
`Petitioner contends that Patent Owner “fails to address Petitioner’s
`diligence in filing the Petition just three months after being served with
`preliminary infringement contentions and approximately six or seven
`
`19
`
`
`
`IPR2022-00284
`Patent 9,997,962 B2
`months after the complaint filings.” Pet. Prelim. Reply 1 (citing Prelim.
`Resp. 46–47; Pet. 83). Petitioner also contends “much of the district court’s
`investment relates to ancillary matters untethered to the validity issue itself.”
`Id. Importantly, Petitioner and P[atent] O[wner] have not proposed any
`terms for construction [here].”
`Assuming the trials occur, the record shows some investment in the
`District Court in terms of substantive orders or actions by parties toward the
`patentability issues presented here but “much work remains.” See Sand
`Revolution II, Paper 24 at 11 (“[W]e recognize that much work remains in
`the district court case as it relates to invalidity: fact discovery is still
`ongoing, expert reports are not yet due, and substantive motion practice is
`yet to come.”). Here, fact and expert discovery and dispositive motions are
`not complete in the District Court. Fact discovery closes September 13,
`2022, and expert discovery closes November 18, 2022.12 Ex. 2013, 3.
`Claim construction in the District Court does not impact issues here.
`The parties rely on the plain meaning (infra § V.C) and the District Court
`only construed two claim terms for the ’962 patent, adopting Patent Owner’s
`proposal to construe both under the plain and ordinary meaning. See Ex.
`3005; Pet. Prelim. Reply 2 (“Petitioner
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