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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________________
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`SAMSUNG ELECTRONICS CO., LTD AND DELL TECHNOLOGIES INC.
`
`Petitioners
`
`v.
`
`MYPAQ HOLDINGS LTD.
`
`Patent Owner
`
`_____________________
`
`Case No. IPR2022-00311
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`U.S. Patent No. 8,477,514
`
`_______________________
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`_______________________
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`Case IPR2022-00311
`U.S. Pat. No. 8,477,514
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`TABLE OF CONTENTS
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`Page
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`I.
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`INTRODUCTION ....................................................................................... 1
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`II.
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`BACKGROUND .......................................................................................... 2
`
`A.
`
`Procedural History ............................................................................ 2
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`B.
`
`The ’514 Patent .................................................................................. 3
`
`1.
`
`2.
`
`The Invention ........................................................................... 3
`
`Prosecution History ................................................................ 7
`
`C.
`
`Petitioners’ Cited References ........................................................... 8
`
`1.
`
`2.
`
`Chagny (Ex. 1004) ................................................................... 8
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`Hwang (Ex. 1006) .................................................................... 10
`
`III. CLAIM CONSTRUCTION ........................................................................ 11
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`IV. PERSON OF ORDINARY SKILL IN THE ART .................................... 11
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`V.
`
`THE BOARD SHOULD EXERCISE DISCRETION UNDER
`SECTION 314 AND DENY INSTITUTION FOR ALL
`GROUNDS ................................................................................................... 11
`
`VI. NO COMBINATION OF THE CITED REFERENCES
`TEACHES OR SUGGESTS EVERY LIMITATION OF ANY
`CHALLENGED CLAIM ............................................................................ 22
`
`A. Ground 1A: Claims 1-12, 14-17 and 19-20 are not
`anticipated by Chagny ...................................................................... 22
`
`1.
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`Chagny’s VRM is not a power converter and is not
`coupled to a load ...................................................................... 22
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`2.
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`Chagny does not teach or suggest both a “power
`system controller” and a “controller” within the power
`converter as required by independent Claims 6 and 11 ...... 24
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`B. Ground 1B: Claims 1-20 are not rendered obvious by
`Chagny in view of the knowledge of a POSITA ............................. 27
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`C. Ground 2A: Claims 1-10, 16-17 and 19-20 are not
`anticipated by Hwang ....................................................................... 28
`
`1.
`
`2.
`
`Hwang does not disclose “a power converter controller
`configured to receive a signal from said load indicating
`a system operational state of said load” ................................ 28
`
`Hwang does not disclose the “power system controller”
`as required by independent claim 6 ...................................... 30
`
`D. Ground 2B: Hwang in view of Chagny does not render
`Claims 11-12, 14-17 and 19-20 obvious ........................................... 32
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`E. Ground 2C: Hwang in view of the knowledge of a POSITA
`renders obvious claim 18 .................................................................. 34
`
`F. Ground 2D: Hwang in view of Chagny does not render
`obvious claims 13 and 18 .................................................................. 34
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`VII. CONCLUSION ............................................................................................ 34
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`TABLE OF AUTHORITIES
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`Page(s)
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`
`
`
`Cases
`
`California Institute of Technology v. Broadcom Limited, et al.,
`Case No. 20-2222, Dkt. No. 63 (Fed. Cir. Feb. 4, 2022) ..................................19
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) .......................................................................................12
`
`Harmonic Inc. v. Avid Tech.,
`815 F.3d 1356 (Fed. Cir. 2016) .........................................................................11
`
`Verdegaal Bros. v. Union Oil Co. of California,
`814 F.2d 628, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987) .....................................31
`
`Statutes
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`35 U.S.C. § 102 ....................................................................................................7, 29
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`35 U.S.C. § 103 ....................................................................................................7, 29
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`35 U.S.C. § 314 ................................................................................................ passim
`
`35 U.S.C. § 315 ........................................................................................................19
`
`Agency Decisions
`
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) ............................................13
`
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 15 (PTAB May 13, 2020) ............................................13
`
`General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (PTAB. Sept. 6, 2017).............................................14
`
`NHK Spring Co. v. Intri-Plex., Inc.,
`IPR2018- 00752, Paper 8 (PTAB Sept. 12, 2018).............................................12
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`
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`Regulations
`Regulations
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`37 CLE.R. § 42.104 oo. eee cesscseesccesecssecseeenecscsesecssscneesneesessaecsesensesesaecsusessesnsesessaeees29
`37 C.F.R. § 42.104 ...................................................................................................29
`
`37 C.E.R. § 42.108 ooo. ee eecssscssesccesecssecssscnsescessecossensesneesessaecssseneeseseaecsuseseesnsesessasees 12
`37 C.F.R. § 42.108 ...................................................................................................12
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`EXHIBIT LIST
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`2001 Defendants’ Joint Preliminary Invalidity Contentions, served on January
`12, 2022 in MyPAQ Holdings, Ltd. v. Samsung Electronics Co., Ltd. et
`al., 6:21-CV-398-ADA
`2002 Complaint in MyPAQ Holdings, Ltd. v. Samsung Electronics Co., Ltd. et
`al., 6:21-CV-398-ADA (W.D. Tex.)
`2003 Complaint in MyPAQ Holdings, Ltd. v. Samsung Electronics Co., Ltd. et
`al., 6:21-CV-398-ADA (W.D. Tex.)
`2004 Albright Says He’ll Very Rarely Put Cases On Hold For PTAB, Ryan
`Davis, Law360, May 11, 2021, available at
`https://www.law360.com/articles/1381597/print?section=ip; last accessed
`February 8, 2022.
`2005 Second Amended Standing Order Regarding Motions for Inter-District
`Transfer, Judge Albright (W.D. Tex. Aug. 18, 2021)
`2006 Order Granting Early Discovery in MyPAQ Holdings, Ltd. v. Dell
`Technologies, Inc. and Dell Inc., 6:21-cv-00933-ADA, Dkt. No. 42
`(February 24, 2022)
`2007 Standing Order Governing Proceedings—Patent Cases, Eastern District
`of Texas, Waco Division (Mar. 7, 2022)
`2008 Defendants’ First Venue-Related Requests for Production (Nos. 1-6) in
`MyPAQ Holdings, Ltd. v. Dell Technologies, Inc. and Dell Inc., 6:21-cv-
`00933-ADA (March 15, 2022)
`2009 Defendants’ First Set of Venue-Related Interrogatories (Nos. 1-4) in
`MyPAQ Holdings, Ltd. v. Dell Technologies, Inc. and Dell Inc., 6:21-cv-
`00933-ADA (March 15, 2022)
`2010 Plaintiff’s Notice of Deposition of Merle Wood in MyPAQ Holdings, Ltd.
`v. Dell Technologies, Inc. and Dell Inc., 6:21-cv-00933-ADA, (February
`16, 2022)
`2011 Plaintiff’s Notice of Deposition of Andy Sultenfuss in MyPAQ Holdings,
`Ltd. v. Dell Technologies, Inc. and Dell Inc., 6:21-cv-00933-ADA
`(February 16, 2022)
`2012 Plaintiff’s Notice of Deposition of Dell Venue Witnesses in MyPAQ
`Holdings, Ltd. v. Dell Technologies, Inc. and Dell Inc., 6:21-cv-00933-
`ADA (March 11, 2022)
`2013 Plaintiff’s First Notice of Deposition of Samsung Venue Witnesses in
`MyPAQ Holdings, Ltd. v. Dell Technologies, Inc. and Dell Inc., 6:21-cv-
`00933-ADA (February 21, 2022)
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`2014 Plaintiff’s Second Notice of Deposition of Samsung Venue Witnesses in
`MyPAQ Holdings, Ltd. v. Dell Technologies, Inc. and Dell Inc., 6:21-cv-
`00933-ADA (March 16, 2022)
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`I.
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`INTRODUCTION
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`MyPAQ Holdings LTD. (“MyPAQ” or “Patent Owner”) submits this
`
`Preliminary Response to Samsung Electronics Co., LTD and Dell Technologies
`
`Inc.’s (collectively “Petitioners” and individually “Samsung” or “Dell”
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`respectively) Petition challenging Claims 1-20 of U.S. Patent No. 8,477,514
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`(“’514 Patent”).
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`The Board should exercise its discretion under 35 U.S.C. § 314(a) to
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`deny institution of this IPR because each Fintiv factor weighs in favor of
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`discretionary denial. The ’514 Patent is the subject of ongoing district court
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`litigations. Trial is scheduled to take place well before a final written decision
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`(FWD) would issue in this matter and significant progress will have taken place
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`by the time of institution, including the exchange of preliminary infringement
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`and invalidity contentions, claim construction, and substantial discovery.
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`Further, conducting this IPR would not significantly simplify the issues in the
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`litigation.
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`Alternately, the Board should deny institution because none of the
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`references or combinations of references relied upon by Petitioners establishes a
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`reasonable likelihood that Petitioners will prevail with respect to any challenged
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`claim of the ’514 Patent. The ’514 Patent is directed to an innovative power
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`system that comprises a power converter with adaptive controllers that was not
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`obvious from the alleged prior art of record. Ex. 1001 [’514 Patent], Abstract.
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`Accordingly, the Board should decline to institute.
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`II.
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`BACKGROUND
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`A.
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`Procedural History
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`Two related litigations are currently pending in the Western District of
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`Texas: MyPAQ Holdings Ltd. v. Samsung Electronics Co., Ltd., 6:21-CV-00398
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`(W.D. Tex.), filed on April 23, 2021, and MyPAQ Holdings Ltd. v. Dell
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`Technologies Inc., 6:21-CV-00933 (W.D. Tex.), filed on September 10, 2021. The
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`’514 Patent is asserted in both litigations along with U.S. Pat. No. 7,675,759. The
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`Samsung litigation also involves U.S. Pat. Nos. 7,403,399 and 7,978,489.
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`This Petition was filed on December 14, 2021. Samsung and Dell also
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`jointly filed a petition against MyPAQ in IPR2022-00312, and Samsung alone
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`filed petitions against MyPAQ in IPR2022-00307 and IPR2022-00308. The -
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`00307, -00308, and -00312 IPRs involve the other patents asserted in the Samsung
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`and Dell litigations but do not involve the ’514 Patent.
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`The litigations have been progressing since well before the petitions were
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`filed. The parties have exchanged preliminary infringement and invalidity
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`contentions in both litigations. Ex. 1014 [Scheduling Order], 2. The parties are
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`currently briefing claim construction, and a Markman hearing is tentatively
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`scheduled for May 4, 2022.1 Discovery opens on May 5, 2022 and trial will begin
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`on May 3, 2023. Id.
`
`B.
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`The ’514 Patent
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`U.S. Pat. Appl. No. 12/709,795 (the “’795 Application”, which issued as the
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`’514 Patent) was filed on February 22, 2010 and is a continuation of U.S. Appl.
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`No. 12/051,334, filed on March 19, 2008 (now Pat. No. 7,667,986). The ’334
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`Application is a continuation-in-part of Application No. 11/710,276, filed on
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`February 23, 2007 (the “’276 Application”, which is now the ’759 Patent). The
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`’276 Application is a continuation-in part of application No. 11/607,325, filed on
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`December 1, 2006. The ’514 Patent issued on July 2, 2013.
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`1.
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`The Invention
`
`The invention of the ’514 Patent relates to an innovative power system with
`
`power converters that have an adaptive controller. Ex. 1001 [’514 Patent], Title.
`
`The invention “adaptively improves power conversion efficiency of a power
`
`converter in response to a measured parameter of the power converter after a
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`manufacturing step, or to a parameter measured on a representative power
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`converter” and “includes consideration of operating conditions, a signal from an
`
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`1 This date is a placeholder that the district court may adjust as the Markman
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`hearing approaches. Ex. 1014 [Scheduling Order], 4.
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`external source representing an environmental parameter or system operational
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`state of a load coupled to the power system.” Ex. 1001 [’514 Patent], 6:36-44.
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`Thus, the invention improves on a conventional feedback loop that simply
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`monitors the output of a power converter by accounting for additional
`
`considerations such as operating conditions or system operational state of loads
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`and using those considerations to adaptively improve power conversion efficiency.
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`Id., 6:44-47.
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`’514 Patent Fig. 3, for example, illustrates an embodiment of a power
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`converter disclosed in the ’514 Patent. As shown below, the power converter
`
`includes controller 311. The inputs to controller 311 not only include voltages and
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`currents measured at locations on the power converter, including Vin, Vbus, Vout and
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`Iload, they include external signal Vext “indicating an environmental parameter from
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`an external source such as a server powered by the power converter” and a setup
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`signal Vsetup that “may provide the result of a parameter measured in a test fixture
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`after a manufacturing step to set or otherwise tailor parameters for the operation of
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`the controller 311.” Ex. 1001 [’514 Patent], 12:44-49. Further inputs may include
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`thermistors 313 to “provide multiple temperature measurements to the controller
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`311” (id., 12:32-35) and a “signal indicating a system operation state Sop_state.” Id.,
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`13:10-15.
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`Controller 311 is not simply a switch or transistor designed to execute
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`simple binary (on/off) decisions. Instead, controller 311 preferably “includes
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`digital processing capability at least comparable to that of a low-end
`
`microprocessor (or other digital implementations, such as a microcontroller, digital
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`signal processor, a field-programmable gate array, or complex programmable logic
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`device).” Id., 12:49-57. As such, controller 311 “may include a multidimensional
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`table or other functional representation of a value to control an internal operating
`
`characteristic or an output characteristic of the power converter.” Id., 14:1-5. See
`
`also id., Figs. 5A-5B. Thus, the ’514 Patent teaches an adaptive controller that is
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`capable of more complex and nuanced power control than, for example, merely
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`switching between high power and low power modes based on a feedback loop.
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`In certain embodiments, the ’514 Patent also discloses a “power system
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`controller” distinct from the power converter controller and load. For example, Fig.
`
`11 (below) discloses an embodiment including multiple power converters (PU_1,
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`PU_2, … PU_n) controlled by a power system controller. The power system
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`controller may also be coupled to multiple loads (SVR_1, SVR_2, … SVR_n).
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`
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`Based in part on information from the loads, “[t]he power system controller
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`PSC may command different power converter operational states PC0 p_state to
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`different power converters PU in the power system.” Ex. 1001 [’514 Patent],
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`23:53-56. “[O]ne power converter PU may be disabled, while the other power
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`converters PU continue to operate under a light system load, preferably with a
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`consideration of measured operating efficiencies of the particular power converters
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`PU installed.” Id., 19:45-49.
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`Thus, the ’514 Patent discloses multiple levels of system control that allow
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`the power system controller “to enhance (e.g., optimize) power system operating
`
`efficiency on a power system level basis” (id., 25:7-9) as well as at individual
`
`power converters. Id., 23:50-53.
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`2.
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`Prosecution History
`
`The ’334 Application was the subject of a non-final rejection on September
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`9, 2010 for nonstatutory obviousness-type double patenting over its parent U.S Pat.
`
`No. 7,667,986. On December 20, 2010, Applicant filed a terminal disclaimer to
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`overcome the rejection.
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`On March 18, 2011, the Office issued a non-final rejection rejecting all
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`claims under 35 U.S.C. § 102(b) and/or 103(a). Ex. 1003 [’514 Patent File History
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`Excerpts], 81-91. On June 20, 2011, the Applicant traversed the rejections. Ex.
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`1003 [’514 Patent File History Excerpts], 63. The Applicant distinguished the Jain
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`reference (U.S. Pat. No. 6,344,986) by stating “the power converter as recited in
`
`independent Claim 1 of the present application includes a power controller
`
`configured to receive a signal from a load indicating a system operational state of
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`the load and control an internal operating characteristic of the power converter as a
`
`function of the signal. A system operational state of the load is more than just an
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`output voltage of the power converter.” Ex. 1003 [’514 Patent File History
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`Excerpts], 69.
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`The Applicant distinguished the Qahouq reference (U.S. Pat. Pub. No.
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`2007/0222463) because “the controller 124 of Qahouq monitors the change in the
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`error signal FSe, such as the output voltage error change ∆Ve, of the power stages
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`118, and does not sense a power level of a state of power drain in response to a
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`signal to identify operation of a processor system in the state of power drain.” Ex.
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`1003 [’514 Patent File History Excerpts], 73.
`
`On September 21, 2011, the Office issued a Notice of Allowance. Ex. 1003
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`[’514 Patent File History Excerpts], 52-59. After several Requests for Continued
`
`Examination to examine additional relevant art, the ’514 Patent issued on July 2,
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`2013 without further rejections.
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`C.
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`Petitioners’ Cited References
`
`The Petition contains six grounds (labeled 1A, 1B, 2A, 2B, 2C and 2D)
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`using two different alleged prior art references: U.S. Pat. 6,873,136 (“Chagny”, Ex.
`
`1004) and U.S. Pat. App. Publ. 2004/0174152 (“Hwang”, Ex. 1006).
`
`1.
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`Chagny (Ex. 1004)
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`Chagny discloses a voltage regulator module (VRM) meant to extend battery
`
`life of a processor. Ex. 1004 [Chagny]. Chagny contains a controller module that
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`receives an activity input from an associated device and switches between a
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`plurality of switching frequencies depending on activity level. Ex. 1004 [Chagny],
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`Abstract. In particular, the VRM generates a switched DC voltage output at the
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`chosen frequency and then filters the switching frequency to generate a regulated
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`DC voltage output. Id. Chagny Fig. 2A, below, is one embodiment of Chagny’s
`
`VRM with a selectable switching frequency:
`
`Fig. 2A illustrates “control module 210 dynamically changes the switching
`
`frequency 216 of the VRM 200 responsive to the activity input 202.” Ex. 1004
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`[Chagny], 5:9-12. “When the activity level of the processor 292 is low, the
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`switching frequency 216 is selected to be low 130 to save power.” Id., 5:16-18.
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`2. Hwang (Ex. 1006)
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`Hwang is directed to a pulse-skipping switching power converter. Ex. 1006
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`[Hwang], Abstract. The power converter has two stages. As the load decreases, one
`
`or both stages may enter pulse-skipping mode (or be disabled) to improve
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`efficiency. Id. Hwang Fig. 1 (below) discloses a block diagram of an embodiment
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`of Hwang’s two-stage power converter:
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`
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`As seen in Fig. 1, the first stage is a power factor correction stage (PFC) 102
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`and the second stage is pulse width modulation (PWM) stage 103. Hwang,
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`¶[0019]. The PFC stage 102 forces the input current substantially into a sinusoidal
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`waveform in phase with the AC input voltage. Id., ¶[0020]. The PWM stage 103
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`provides output voltage regulation. Controller 105 receives an input signal from
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`the load 104 indicating, for example, power drawn by the load 104. Id., ¶[0021]. In
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`some embodiments, this includes standby or sleep modes. Id. Controller 105 uses
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`that signal to attempt to maintain a constant output voltage or current by, for
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`example, causing PWM stage 103 to enter a pulse-skipping mode or to become
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`disabled. Id., ¶ [0021].
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`III.
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`CLAIM CONSTRUCTION
`
`For purposes of this Preliminary Response only, Patent Owner interprets all
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`claim terms in accordance with their ordinary and customary meaning.
`
`IV.
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`PERSON OF ORDINARY SKILL IN THE ART
`
`For purposes of this Preliminary Response only, Patent Owner does not
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`dispute Petition’s definition of level of ordinary skill as a person having either “(i)
`
`a Master of Science in Electrical Engineering, or an equivalent field, or (ii) a
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`Bachelor of Science in Electrical Engineering or an equivalent field as well as at
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`least two years of experience in the design of power electronics.” Petition, 9.
`
`V.
`
`THE BOARD SHOULD EXERCISE DISCRETION UNDER SECTION
`314 AND DENY INSTITUTION FOR ALL GROUNDS
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`There is no requirement that the Board institute IPR. See, e.g., Harmonic
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`Inc. v. Avid Tech., 815 F.3d 1356, 1367 (Fed. Cir. 2016). “[T]he PTO is permitted,
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`but never compelled, to institute an IPR proceeding.” Id. Rather, the decision to
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`institute is delegated to the Board and is purely discretionary. As 35 U.S.C.
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`§ 314(b) explains, “[t]he Director shall determine whether to institute an inter
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`partes review.” See also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140
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`(2016); 37 C.F.R. § 42.108(a).
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`35 U.S.C. § 314(a) gives the Board discretion to deny institution because of
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`efficiency considerations stemming from parallel proceedings on the same patent.
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`See NHK Spring Co. v. Intri-Plex., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12,
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`2018) (precedential, designated May 7, 2019) (“NHK Spring”). The PTAB has set
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`forth six factors for determining whether discretionary denial due to efficiency
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`considerations relating to parallel proceedings is appropriate (the “Fintiv factors”):
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`1. whether the court granted a stay or evidence exists that one may be
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`granted if a proceeding is instituted;
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`2. proximity of the court’s trial date to the Board’s projected statutory
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`deadline for a final written decision;
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`3.
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`investment in the parallel proceeding by the court and the parties;
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`4. overlap between issues raised in the petition and in the parallel
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`proceeding;
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`5. whether the petitioner(s) and the defendant in the parallel proceeding are
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`the same party; and
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`6. other circumstances that impact the Board’s exercise of discretion,
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`including the merits.
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`Case IPR2022-00311
`U.S. Pat. No. 8,477,514
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`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
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`(precedential) (“Fintiv I”), 6; Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15
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`(PTAB May 13, 2020) (order denying institution) (informative, designated July 13,
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`2020) (“Fintiv II”), 7-8. Here, all six Fintiv factors weigh in favor of discretionary
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`denial.
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`The first Fintiv factor—regarding whether a motion to stay has been granted
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`or denied without prejudice pending an institution decision—weighs in favor of
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`denial. Although Petitioners state that they “intend to seek a stay” (Petition, 11),
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`neither Petitioner has yet done so. Further, the Western District of Texas—where
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`the parallel litigations are based—has almost never granted stays in the past. Ex.
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`2004 [Albright Article] (“Judge Albright [ ] said that during his two and a half
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`years on the bench, he has only put ‘one or two’ cases on hold so the PTAB can
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`review the patent.”). There is nothing in the Petition that indicates any unusual
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`circumstances here that would make a stay more likely. Because it is highly
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`unlikely on these facts that a stay will be granted, this factor favors discretionary
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`denial.
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`The second Fintiv factor—the proximity of the court’s trial date to the
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`Board’s projected statutory deadline for an FWD—weighs in favor of denial. Trial
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`will begin May 3, 2023. Ex. 1014 [Scheduling Order], 4. Based on the Notice of
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`Filing Date Accorded in this proceeding (December 14, 2021), a FWD is expected
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`Case IPR2022-00311
`U.S. Pat. No. 8,477,514
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`no later than June 21, 2023, which is seven weeks after the trial is scheduled to
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`begin.
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`Under Fintiv factor 2, this weighs in favor of discretionary denial. See Fintiv
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`I, 9 (“If the court’s trial date is earlier than the projected statutory deadline, the
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`Board generally has weighed this factor in favor of exercising authority to deny
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`institution under NHK.”). Further, denying institution here will result in one of the
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`primary objectives of the AIA, which is “to provide an effective and efficient
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`alternative” to parallel litigation. NHK Spring, 19-20 (quoting General Plastic
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`Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19, 15-19
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`(PTAB. Sept. 6, 2017) (precedential, designated Oct. 18, 2017) (emphasis added).
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`If instituted, any potential FWD will issue well after trial concludes. Thus,
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`instituting IPR here cannot be viewed as an “alternative” to litigation. Accordingly,
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`factor 2 weighs in favor of denying institution.
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`The third Fintiv factor—which relates to “the amount and type of work
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`already completed in the parallel litigation by the court and the parties at the time
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`of the institution decision”—also favors denial. Fintiv I, 9-12. An institution
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`decision in this IPR is not expected until late June 2022. 35 U.S.C. § 314(b).
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`Significant work in the parallel litigations has already taken place and will
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`continue to take place until that time. Preliminary infringement and invalidity
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`contentions have already been served. Ex. 1014 [Scheduling Order], 2. The
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`Case IPR2022-00311
`U.S. Pat. No. 8,477,514
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`Markman hearing in this matter is tentatively scheduled for May 4, 2022. Ex. 1014
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`[Scheduling Order], 4. The typical practice of the judge in the parallel litigations is
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`to provide constructions at the time of the Markman hearing; thus, the claims of the
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`’514 Patent will likely be construed by the district court by early May.
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`By the time of the institution decision, a substantial portion of discovery in
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`the parallel litigations will also be complete. Full discovery opens on May 5, 2022,
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`almost two months before the expected institution decisions.2 Ex. 1014
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`[Scheduling Order], 4. Further, the parties are already engaged in significant
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`discovery activities. The judge has permitted Patent Owner discovery related to the
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`foreign suppliers of Petitioners, including documents related to the identity,
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`quantity and price of charging devices supplied by foreign suppliers, along with
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`contact information for those suppliers and relevant agreements governing those
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`purchases. Ex. 2006 [Order Granting Early Discovery], 4. The judge ordered that
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`discovery to be produced “on a rolling basis and as fast as practicably possible.”
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`Id. The parties are also currently engaged in discovery relating to motions to
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`2 This date is based on the expected Markman hearing date but will not
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`change even if the Markman hearing is delayed. Ex. 2007 [Standing Order
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`Governing Proceedings], 12 n. 8.
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`Case IPR2022-00311
`U.S. Pat. No. 8,477,514
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`transfer venue from the Waco division of the Western District of Texas to the
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`Austin division of the Western District of Texas.3
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`To date, Petitioners have produced over 3,200 pages of documents in
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`response to Patent Owner’s discovery requests. Moreover, on March 15, 2022, Dell
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`served its own discovery requests on MyPAQ related to venue. See Exs. 2008 [Dell
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`Discovery Requests], 2009 [Dell Interrogatories]. And on March 18, 2022,
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`MyPAQ deposed, for venue purposes, two of Dell’s employees—Merle Wood,
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`who testified both as Dell’s corporate representative and in his individual capacity,
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`and Andy Sultenfuss. See Exs. 2010 [Wood Deposition Notice], 2011 [Sultenfuss
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`Deposition Notice]. In addition to these two depositions, MyPAQ has numerous
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`other depositions of Dell and Samsung employees scheduled to take place over the
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`next two weeks. Exs. 2012 [Dell Venue Notices of Deposition], 2013 [Samsung
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`3 The judge presiding over the parallel litigations will rule on the transfer
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`motions before conducting a Markman hearing. See Ex. 2005 [Inter-district
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`transfer order] (“The Court will not conduct a Markman hearing until it has
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`resolved the pending motion to transfer.”). While the present transfer motions are
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`intra-district (i.e., between two divisions in the same district) rather than inter-
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`district (between two different U.S. District Court districts), the judge is still
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`expected to resolve the motions before the Markman hearing.
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`Case IPR2022-00311
`U.S. Pat. No. 8,477,514
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`First Venue Notices of Deposition], 2014 [Samsung Second Venue Notices of
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`Deposition].
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`Thus, Factor 3 favors discretionary denial because significant substantive
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`work will have already been completed in the parallel litigation by the time of the
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`institution decision. See Fintiv II (“Based on the level of investment and effort
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`already expended on claim construction and invalidity contentions in the District
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`Court, this factor weighs somewhat in favor of discretionary denial in this case.”).
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`Petitioners argue that they have been diligent in filing the Petition because
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`they filed after receiving Patent Owner’s preliminary infringement contentions.
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`Petition, 12. Petitioners’ position is misleading. The litigation against Samsung
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`was filed on April 23, 2021. Ex. 2002 [Samsung Complaint], 15. The Petition was
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`filed on December 14, 2021. Petition, 82. Thus, at least Samsung waited almost
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`eight months to file its Petition.4 While Petitioners are correct that infringement
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`contentions were served on November 3 (Samsung) and 29 (Dell), 2021,
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`respectively, that fact has little relevance here because the Petition challenges
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`every claim of the ’514 Patent, including a number of claims (4, 9, 13-14 and 18-
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`4 The complaint against Dell was filed on September 10, 2021. Ex. 2003
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`[Dell Complaint], 18.
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`Case IPR2022-00311
`U.S. Pat. No. 8,477,514
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`19) that have never been asserted in the litigation.5 Given that the Petition
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`challenges every claim of the ’514 Patent regardless of whether it was asserted in
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`the litigation, there was no reason to delay in filing the Petition based on the
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`infringement contentions. If Petitioners were truly diligent, this Petition would
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`have been filed long before infringement contentions were due. Accordingly,
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`Factor 3 weighs in favor of discretionary denial.
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`The fourth Fintiv factor—which relates to overlap between issues raised in
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`the petition and in the parallel proceeding—also weighs in favor of denying
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`institution. Each claim at issue in the parallel litigations is also at issue in the
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`Petition. Further, all the alleged prior art at issue in the Petition has been identified
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`in Petitioners’ invalidity contentions. Ex. 2001 [Preliminary Invalidity
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`Contentions], 20-21. Fintiv I, 12 (“if the petition includes the same or substantially
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`5 Petitioners cite Fintiv’s statement that “it is often reasonable for a
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`petitioner to wait to file its petition until it learns which claims are being asserted
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`against it in the parallel proceeding” (Petition, 11 (quoting Fintiv I)) to justify its
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`delay. That rationale only makes sense where the infringement contentions inform
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`the contents of the Petition. Here, Petitioners challenged every claim of the ’514
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`Patent. There was no nee