UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`APPLE INC. AND HP INC.,
`Petitioner
`
`v.
`
`XR COMMUNICATIONS, LLC,
`D/B/A VIVATO TECHNOLOGIES,
`Patent Owner
`____________
`
`IPR2022-01155
`U.S. Patent No. 10,715,235
`____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`

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`TABLE OF CONTENTS
`
`INTRODUCTION ............................................................................................. 1
`I.
`II. ’235 PATENT AND CHALLENGED CLAIMS .............................................. 2
`A. Summary of ’235 patent ................................................................................. 2
`B. Challenged Claims .......................................................................................... 5
`C. Level of Skill in the Art .................................................................................. 6
`D. Claim Construction ......................................................................................... 7
`III. PETITIONER’S ASSERTED GROUNDS AND REFERENCES ................... 7
`IV. INSTITUTION SHOULD BE DENIED ON THE MERITS ............................ 7
`The Petition fails to show that the combined Saunders-Hottinen system renders
`obvious the limitations that recite “determining a set of weighting values”
`(Limitation [1c-4], [6c-4], [15c-4]). ..................................................................... 7
`V. FACTUAL BACKGROUND FOR DISCRETIONARY DENIAL ................ 11
`A. Parallel WDTex Cases .................................................................................. 11
`B. Petitioners’ First Petition on ’235 Patent ...................................................... 13
`VI. INSTITUTION SHOULD BE DENIED BASED ON THE FINTIV
`FACTORS ..................................................................................................................
`
`.......................................................................................................................... 13
`A. Factor 1 weighs against institution, as there is no stay in the WDTex case
`now and no evidence that a stay will be granted. ................................................ 14
`B. Factor 2 weighs against institution, as trial in the district court is scheduled
`to be completed before the FWD. ....................................................................... 15
`C. Factor 3 weighs against institution, because claim construction briefing is
`already complete and fact discovery will be nearly complete by the time of the
`institution decision. ............................................................................................. 17
`1. The parties’ and the court’s investment has been substantial and will
`increase. ........................................................................................................... 18
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`

`

`2. Petitioners’ delay of nearly a full year since the WDTex complaints were
`filed also support discretionary denial. ............................................................ 19
`D. Given Petitioners’ stipulation, Factor 4 is neutral or weighs slightly in favor
`of institution. ....................................................................................................... 22
`E. Factor 5 weighs against institution, as Petitioners are defendants in parallel
`district court cases. .............................................................................................. 23
`F. Factor 6 weighs in against institution. .......................................................... 23
`VII. INSTITUTION SHOULD BE DENIED BASED ON THE GENERAL
`PLASTIC FACTORS .............................................................................................. 24
`VIII. CONCLUSION .............................................................................................. 28
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`

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`IPR2022-01555 (’235 patent)
`Patent Owner Preliminary Response
`
`
`
`Exhibit Description
`
`Patent Owner’s Exhibit List
`
`2001 XR Commc’ns. LLC, dba Vivato Techs. v. Apple Inc., 6-21-cv-00620,
`Vivato’s Preliminary Infringement Contentions Cover Pleading
`(served Dec. 20, 2021)
`
`2002 XR Commc’ns. LLC, dba Vivato Techs. v. HP Inc., 6-21-cv-00694,
`Vivato’s Preliminary Infringement Contentions Cover Pleading
`(served Dec. 20, 2021)
`
`2003 XR Commc’ns. LLC, dba Vivato Techs. v. Apple Inc., 6-21-cv-00620,
`Dkt. 27 (W.D. Tex. Jan 13, 2022) Original Scheduling Order
`
`2004 XR Commc’ns. LLC, dba Vivato Techs. v. Apple Inc., 6-21-cv-00620,
`Dkt. 72-1 (W.D. Tex. Sept. 9, 2022) Discovery and Scheduling Order
`
`2005 XR Commc’ns. LLC, dba Vivato Techs. v. Apple Inc., 6-21-cv-00620,
`Vivato’s Second Supplemental Preliminary Infringement Contentions
`Cover Pleading (served Aug. 26, 2022)
`
`2006 XR Commc’ns. LLC, dba Vivato Techs. v. Apple Inc., 6-21-cv-00620,
`Dkt. 74 (W.D. Tex. Sept. 26, 2022) Revised Scheduling Order
`
`2007 XR Commc’ns. LLC, dba Vivato Techs. v. Apple Inc., 6-21-cv-00620,
`Dkt. 76 (W.D. Tex. Sept. 30, 2022) Order Denying Motion to Stay
`
`2008 XR Commc’ns. LLC, dba Vivato Techs. v. Apple Inc., 6-21-cv-00620,
`Defendants Invalidity Contentions (served Feb. 25, 2022)
`
`2009 XR Commc’ns. LLC, dba Vivato Techs. v. Apple Inc., 6-21-cv-00620,
`Defendants Invalidity Contentions, Saunders Chart
`
`2010 XR Commc’ns. LLC, dba Vivato Techs. v. Apple Inc., 6-21-cv-00620,
`Defendants Invalidity Contentions, Hottinen Chart
`
`

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`IPR2022-01555 (’235 patent)
`Patent Owner Preliminary Response
`
`I.
`
`INTRODUCTION
`The Board should deny institution for institution on the merits and as a matter
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`of discretion under the Fintiv and General Plastic factors.
`
`On the merits, the challenged claims require determining a set of weighting
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`values from two different signals received from the same remote station, wherein
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`the set of weighting values is configured to be used by the transceiver to construct
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`one or more beam-formed transmission signals. Petitioners rely almost entirely on
`
`Saunders to disclose this limitation. But Saunders does not teach or suggest
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`determining a set of weighting values from two different signals received from the
`
`same remote station. Petitioners’ single, conclusory sentence addressing a Saunders-
`
`Hottinen combination likewise fails. Accordingly, the Petition fails to show that a
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`Saunders-Hottinen combination renders this limitation obvious.
`
`The Board should also exercise its discretion to deny institution under § 314(a)
`
`based on the Fintiv factors. The facts and circumstances here present a strong case
`
`for discretionary denial. Here, the district court trial is likely to occur 4.5 months
`
`before the FWD deadline. This is because Petitioners unduly delayed in filing the
`
`Petition, waiting nearly a full year after the complaints were filed. Further,
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`substantial work on the ’235 patent has already been done by the parties and district
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`court, and even more work will be done by the institution deadline.
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`1
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`IPR2022-01555 (’235 patent)
`Patent Owner Preliminary Response
`
`
`II.
`
`’235 PATENT AND CHALLENGED CLAIMS
`A.
`Summary of ’235 patent
`
`The ’235 Patent (Ex. 1001) is entitled “Directed wireless communication.”
`
`The ’235 Patent claims are entitled to a priority date at least as early as February 1,
`
`2002, as corroborated by evidence contained within U.S. Provisional Application
`
`No. 60/423,660, filed November 4, 2002. See EX-1002, 265-272.
`
`The ’235 Patent discloses a wireless communications apparatus that
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`comprises an “antenna array 302” with a plurality of “antenna elements” to emanate
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`an array of multiple directed communication beams 214(1), 214(2),…214(N). EX-
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`1001, FIGS. 2, 3. The ’235 Patent teaches that the apparatus receives signal
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`transmissions simultaneously via directed communication beams. EX-1001, 3:38-52
`
`(“An increase in communication range is achieved by beamforming directed
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`communication beams which simultaneously transmit directed signals and receive
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`communication signals from different directions via receive and transmit beam-
`
`forming networks.”). In one embodiment, “antenna array 302 can include sixteen
`
`antenna elements…” from which “sixteen different communication beams 602(0),
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`602(1),…,602(15) are formed,” each of which may have beam patterns that “differ
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`in width, shape, number, angular coverage, azimuth, and so forth.” EX-1001, 9:12-
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`34; see EX-1001, 6:61-7:5 (“directed communication beams 214 of antenna array
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`
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`2
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`IPR2022-01555 (’235 patent)
`Patent Owner Preliminary Response
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`302 can be directionally controllable”). In one embodiment, only thirteen of the
`
`beams are used for transmission and reception. EX-1001, 9:34-60.
`
`The ’235 Patent apparatus receives signal transmissions via the directed
`
`communication beams from other devices or “nodes within the wireless routing
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`network.” EX-1001, 24:25-34. Further, the ’235 Patent apparatus determines a set
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`of weighting values based on multiple received signals from each node. For
`
`example, as shown in Figure 12 below, “communication and/or data transfer signals
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`are received from sources 1202 (e.g., sources A and B).” EX-1001, 24:25-34. These
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`signals are provided to a “signal control and coordination logic 304” which includes
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`a “scanning receiver 822 that is configured to update routing information 1206 with
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`regard to the received signals.” EX-1001, 24:35-25:30. More specifically, the
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`routing information 1206 includes a routing table, and the “routing table includes
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`stored weighting values (w) each associated with a particular signal source 1202
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`(e.g., sources A and B)…[a] description of the received signal(s) can be stored in the
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`routing table in the form of the pattern of weighting of the signal(s). In this example,
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`a polynomial expansion in z, w(z)=w0+w1z+w2z2+w3z3+w4z4+ … +wizi can be
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`utilized to establish the values of the weights (wi) to be applied to a weight vector.”
`
`Id. This is depicted in Figure 12 below:
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`
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`3
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`IPR2022-01555 (’235 patent)
`Patent Owner Preliminary Response
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`
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`After determining a set of weighting values based on the received signals, the
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`“stored weighting values associated with each connection, data signal, and/or source
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`are utilized in a weighting matrix 1210 which operates to apply the latest weighting
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`values to the received signals and also to transmitted signals.” EX-1001, 25:1-29.
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`
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`4
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`IPR2022-01555 (’235 patent)
`Patent Owner Preliminary Response
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`Figure 12 depicts determining weighting values from received signals from a
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`particular node in the network and “apply[ing] the latest weighting values…to
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`transmitted signals” to that same node. EX-1001, FIG. 12. In Figure 12, the
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`apparatus receives signals via antenna array 302 from a particular node (e.g., 1202
`
`A), determines and stores weighting values for that node (e.g., w(A) in routing table
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`1206), and then applies the weighting values that are particular to that node when
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`transmitting signals to that node (e.g., transmissions to 1202 A via transceiver
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`824(0)). Id.
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`B. Challenged Claims
`
`The Petition challenges claims 1-5, 6, 7, 15, and 16 of the ’235 patent. Pet. at
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`8. Independent claim 1 recites:
`
`[1pre]
`
`[1a]
`
`[1b]
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`[1c]
`
`[1c-1]
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`A receiver for use in a wireless communications
`system, the receiver comprising:
`an antenna, wherein the antenna comprises a first
`antenna element and a second antenna element;
`a transceiver operatively coupled to the antenna and
`configured to transmit and receive electromagnetic
`signals using the antenna;
`a processor operatively coupled to the transceiver,
`the processor configured to:
`receive a first signal transmission from a remote
`station via the first antenna element and a second
`
`
`
`5
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`

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`IPR2022-01555 (’235 patent)
`Patent Owner Preliminary Response
`
`[1c-2]
`
`[1c-3]
`
`[1c-4]
`
`[1c-5]
`
`signal transmission from the remote station via the
`second antenna element simultaneously;
`determine first signal information for the first signal
`transmission;
`determine second signal information for the second
`signal transmission, wherein the second signal
`information is different than the first signal
`information;
`determine a set of weighting values based on the
`first signal information and the second signal
`information, wherein the set of weighting values is
`configured to be used by the transceiver to construct
`one or more beam-formed transmission signals; and
`cause the transceiver to transmit a third signal to the
`remote station via the antenna, the third signal
`comprising content based on the set of weighting
`values.
`
`
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`C. Level of Skill in the Art
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`For purposes of this POPR, Patent Owner adopts Petitioner’s definition of a
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`person of ordinary skill in the art (POSITA)—i.e., a Bachelor of Science degree in
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`an academic discipline emphasizing electrical engineering or a related field, in
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`combination with training or at least two years of related work experience in wireless
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`communication systems, or the equivalent. Alternatively, the person could have also
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`6
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`IPR2022-01555 (’235 patent)
`Patent Owner Preliminary Response
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`had a Masters or Doctorate degree in electrical engineering with a year of related
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`work experience in wireless communication systems. See Pet. at 10. Patent Owner
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`reserves the right to further propose a level skill or dispute Petitioners’ proposal.
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`D. Claim Construction
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`The Board need not construe any terms for purposes of this institution
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`decision. Patent Owner reserves the right to further propose constructions or dispute
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`Petitioners’ interpretations.
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`III. PETITIONER’S ASSERTED GROUNDS AND REFERENCES
`The Petition asserts two grounds of unpatentability (Pet. at 8):
`
`
`IV.
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`• Ground 1: Claims 1-5, 15, 16 are obvious in light of Saunders in view of
`Hottinen
`
`• Ground 2: Claims 6 and 7 are obvious in light of Saunders in view of
`Hottinen and Shull
`
`INSTITUTION SHOULD BE DENIED ON THE MERITS
`The Petition fails to show that the combined Saunders-Hottinen system
`renders obvious the limitations that recite “determining a set of weighting
`values” (Limitation [1c-4], [6c-4], [15c-4]).
`
`The Petition fails to show a reasonable likelihood of success in establishing
`
`that the combined Saunders-Hottinen system or the combined Saunders-Hottinen-
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`Shull system renders obvious Claims 1-7, 15, and 16.
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`Each of the challenged claims requires determining a set of weighting values
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`from two different signals received from the same remote station, wherein the set of
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`
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`7
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`IPR2022-01555 (’235 patent)
`Patent Owner Preliminary Response
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`weighting values is configured to be used by the transceiver to construct one or more
`
`beam-formed transmission signals. See, e.g., ’235 Patent, limitations [1c-4], [6c-4],
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`[15c-4]. The Petition fails to identify any teaching in the combined Saunders-
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`Hottinen system (or the combined Saunders-Hottinen-Shull system) that renders this
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`limitation obvious.
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`The Petition principally relies on Saunders, rather than Hottinen, for this
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`limitation. Pet. at 41-43. Petitioners argue that Saunders discloses a set of weighting
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`values Wopt determined based on “x,” which refers to a “received signal vector at n
`
`branches (i.e. n antenna elements)” in the form [x] = [x1, x2], assuming there are two
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`antenna elements. Pet. at 37-38, 41-42; EX-1027, 2:1-18. However, the Petition fails
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`to show that “x” refers to information for two different signals received from the
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`same remote station. Rather, Saunders defines “x” as a “received signal vector at n
`
`branches (i.e. n antenna elements).” EX-1027, 2:1-18. Accordingly, “x” represents
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`information about a single signal—not two different signals from the same remote
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`station, as the challenged claims require. EX-1027, 2:1-18. Indeed, Saunders
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`describes that the “received signal vector, x(k) of a frame k can be derived…once
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`per burst transmission” (EX-1027, 3:54-63), which confirms that “x” refers to
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`information about a single received frame, not two different signals from the same
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`remote station.
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`Notably, Petitioners do not identify any disclosure in Saunders that indicates
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`8
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`IPR2022-01555 (’235 patent)
`Patent Owner Preliminary Response
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`that “x” refers to two different signals from the same remote station. Nor do
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`Petitioners identify any disclosure in Saunders that indicates that “x” refers to two
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`different signals received simultaneously from the same remote station.
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`As a substitute for actual evidence that Saunders’s weighting values
`
`calculated from “x” are determined from information about two different signals
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`from the same remote station, Petitioners cite Dr. Akl’s declaration, in which Dr.
`
`Akl opines that a POSITA would have understood from equations 1-5 that multiple
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`different signals are received simultaneously because of
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`the absence of
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`compensation factors. Pet. at 37-38. But Dr. Akl’s opinion does not address the
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`requirement that both signals be received from the same remote station. Id.
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`Further, Dr. Akl’s opinion directly contradicts the disclosure in Saunders that
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`x is a “received signal vector,” and that [x]=[x1, x2] refers to aspects of a single signal
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`“x”, not two different signals. EX-1027, 2:1-18. The far more plausible reason that
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`there are no “compensation factors” in Saunders is that “x” refers to only one signal.
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`As such, compensation factors for delay or offsets between two signals are not
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`applicable.
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`As Saunders does not disclose or render obvious limitation [1c-4], the Petition
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`finally turns to Hottinen in a single, conclusory sentence at the end of the section.
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`See Pet., at 43. The bulk of the Petition’s analysis of [1c-4] does not rely on Hottinen
`
`in any way. This is unsurprising, because Hottinen does not disclose an apparatus
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`
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`9
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`IPR2022-01555 (’235 patent)
`Patent Owner Preliminary Response
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`that both determines and uses a set of weighting values to construct beam-formed
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`transmission signals, as Petitioners concede. See id. at 44 (asserting only that
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`Hottinen teaches that weighting values calculated at a second device can be
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`transmitted back to the first device so that the first device can use the weighted values
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`to configure beams—not that Hottinen’s second device also uses the weighting
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`values).
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`As to Hottinen, Petitioners merely state that, “as explained above, the second
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`radio communication device” in their Saunders-Hottinen system “also determines
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`covariance matrices and weight values that can be used for transmission back to the
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`first radio communication device.” Id. (citing only Hottinen and Akl Decl. ¶94).
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`Neither Hottinen, paragraph 94 of Dr. Akl’s declaration, nor the other (uncited)
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`portions of the Petition and supporting declaration at issue describe how a single
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`radio communication device in Petitioners’ Saunders-Hottinen system would
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`determine a set of weighting values based on both “the first signal information and
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`the second signal information” originating from the same remote station, where that
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`set of weighting values is used to construct beam-formed transmission signals.
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`Because the Petition cannot show that Saunders’s weighting values are
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`determined from information about two different signals from the same remote
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`station, and the Petition does not substantively articulate how Hottinen teaches
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`limitation [1c-4] in the Saunders-Hottinen system, the Petition fails to establish a
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`10
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`IPR2022-01555 (’235 patent)
`Patent Owner Preliminary Response
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`reasonable likelihood of success in showing that a combined Saunders-Hottinen
`
`system would teach or render obvious limitation [1c-4].
`
`V.
`
`FACTUAL BACKGROUND FOR DISCRETIONARY DENIAL
`A.
`Parallel WDTex Cases
`
`On June 16 and July 1, 2021, Vivato filed district court actions against Apple
`
`and HP asserting infringement of the ’235 patent. See XR Commc’ns. LLC, dba
`
`Vivato Techs. v. Apple Inc., 6-21-cv-00620 (“Apple case”), Dkt. 1 (Compl.) (W.D.
`
`Tex. June 16, 2021); XR Commc’ns. LLC, dba Vivato Techs. v. HP Inc., 6-21-cv-
`
`00694 (“HP case”), Dkt. 1 (Compl.) (W.D. Tex. July 1, 2021). On October 6, 2021,
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`Apple answered the complaint. Apple case, Dkt. 19. On December 6, HP answered
`
`the complaint. HP case, Dkt. 18. On December 13, 2021, the parties filed a case
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`readiness status report in both cases. Apple case, Dkt. 24; HP case, Dkt. 20.
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`On December 20, 2021, Vivato served its preliminary infringement
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`contentions in the Apple and HP cases. In the Apple case, Vivato identified claims
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`1, 2, 4, 8, 9, 11, 12, 15, and 16 as the asserted claims of the ’235 patent. Ex. 2001
`
`(Apple PICs Cover Pleading). In the HP case, Vivato identified the same asserted
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`claims, as well as claim 5 of ’235 patent. Ex. 2002 (HP PICs Cover Pleading).
`
`On January 12, 2022, the parties submitted joint scheduling orders that was
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`entered by the district court. Apple case, Dkt. 26, 27; Ex. 2003 (Original Scheduling
`
`Order); HP case, Dkt. 23, 24. The original scheduling order set the remaining case
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`
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`11
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`IPR2022-01555 (’235 patent)
`Patent Owner Preliminary Response
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`deadlines through the final pretrial conference on June 2, 2023. Ex. 2003 at 4–6. The
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`scheduling order set “Jury Selection/Trial” for June 23, 2023. Id. at 6.
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`On February 25, 2022, Apple and HP served preliminary invalidity
`
`contentions. Id. at 4. From March to June 2022, the parties engaged in claim
`
`construction proceedings, including exchanges of terms, proposed constructions,
`
`and extrinsic evidence, and four rounds of claim construction briefing. Id. at 4–5.
`
`On August 1, 2022, in the HP case, the district court granted HP’s motion to
`
`transfer to the Northern District of California. HP case, Dkt. 53. On August 25, 2022,
`
`in the Apple case, the district court issued a revised scheduling order to address
`
`Apple’s new transfer declarations and briefing. Apple case, Dkt. 68. The district
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`court later issued an expanded order substituting the order, to set a “more organized
`
`schedule.” Apple case, Dkt. 72-1 (Ex. 2004, Discovery and Scheduling Order). The
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`revised schedule “moves the completion of transfer motion briefing and the
`
`Markman hearing until after the conclusion of fact discovery[.]” Id. at 5.
`
`On August 25, 2022 fact discovery opened in the Apple case. Apple case, Dkt.
`
`68 at 3. On August 26, 2022, Vivato served supplemental infringement contentions,
`
`identifying the same asserted claims as its original contentions (claims 1, 2, 4, 8, 9,
`
`11, 12, 15, 16 of the ’235 patent). Ex. 2005 (Apple Supp. PICs Cover Pleading).
`
`On September 23 and 26, 2022, the Vivato and Apple submitted joint revised
`
`scheduling orders that was entered by the district court. Apple case, Dkt. 73, 74; Ex.
`
`
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`12
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`2006 (Apple Revised Scheduling Order). The revised schedule sets the following,
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`IPR2022-01555 (’235 patent)
`Patent Owner Preliminary Response
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`current deadlines (id. at 2–3):
`
`Date
`
`Deadline
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`January 20, 2023
`
`Close of fact discovery
`
`January 20, 2023
`
`Exchange of preliminary exhibit lists and witness lists
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`March 23, 2023
`
`Postponed Markman hearing
`
`April 6, 2023
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`Opening expert reports
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`June 1, 2023
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`Close of expert discovery
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`June 15, 2023
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`Dispositive motion and Daubert motion deadline
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`August 17, 2023
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`Final pretrial conference
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`August 28, 2023
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`Jury selection/trial.
`
`
`
`B.
`
`Petitioners’ First Petition on ’235 Patent
`
`On January 7, 2022, Petitioners Apple and HP filed their first IPR on the ’235
`
`patent. See IPR2022-00367 (“-367 IPR”), Paper 1 (PTAB). That petition challenged
`
`8–14 of the ’235 patent. On July 14, 2022, the PTAB instituted review. -376 IPR,
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`Paper 10. The final written decision is expected by July 14, 2023.
`
`VI.
`
`INSTITUTION SHOULD BE DENIED BASED ON THE FINTIV
`FACTORS
`The Board should exercise its discretion to deny institution under 35 U.S.C. §
`
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`13
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`IPR2022-01555 (’235 patent)
`Patent Owner Preliminary Response
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`314(a) based on the Fintiv factors.1 The facts and circumstances here present a strong
`
`case for discretionary denial, including under the Director’s June 2022 memorandum
`
`on
`
`interim procedure for discretionary denials. Here, even after several
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`postponements (caused by Apple’s supplemental motion practice), the district court
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`trial is scheduled for 4.5 months before the FWD deadline. This is because
`
`Petitioners unduly delayed in filing the Petition, waiting a full year since the WDTex
`
`complaints were filed. Further, substantial work on the ’235 patent has already been
`
`done by the parties and court, and even more work will be done by the institution
`
`deadline. The parties completed claim construction briefing months ago and are now
`
`in the midst of fact discovery. By the time of institution decision (by Jan. 11, 2023),
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`fact discovery will be nearly complete (on Jan. 20, 2023). By then, the parties will
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`be progressing quickly through expert reports, dispositive motions, and trial in
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`August 2023. Yet the final written decision in this IPR would not be expected until
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`a year later (in Jan. 2024). This is inefficient and supports discretionary denial.
`
`A.
`
`Factor 1 weighs against institution, as there is no stay in the
`WDTex case now and no evidence that a stay will be granted.
`
`Factor 1 concerns whether the district court granted a stay or evidence exists
`
`
`1 Apple Inc., v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`(precedential, designated May 5, 2020) (“Fintiv Order”) at 6; Apple Inc., v. Fintiv,
`Inc., IPR2020-00019, Paper 15 (PTAB May 13, 2020) (order denying institution)
`(informative, designated July 13, 2020) (“Fintiv ID”) at 7–8.
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`14
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`IPR2022-01555 (’235 patent)
`Patent Owner Preliminary Response
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`that one may be granted if a proceeding is instituted. Fintiv Order at 6; Fintiv ID at
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`12. This factor weighs against institution.
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`Apple has not moved to stay the WDTex pending IPR, even after the first IPR
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`on the ’235 patent was instituted. Although Apple moved to stay pending its writ of
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`mandamus to the Federal Circuit, the district court denied that motion. Apple case,
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`Dkt. 96 (W.D. Tex. Sept. 30, 2022) (Ex. 2007, Order Denying Motion to Stay). Thus,
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`there is no reason to believe that the WDTex will be stayed. Indeed, the district court
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`recently granted the parties’ agreed scheduling order (on Sept. 26, 2022), and the
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`parties have been complying with that schedule, including conducting discovery in
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`a compressed schedule. Ex. 2006. Under that schedule, discovery will be complete
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`in a few months, on January 20, 2022. Id. at. 2.
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`Because there is no non-speculative reason that the WDTex case will be
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`stayed, Factor 1 weighs against institution.
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`B.
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`Factor 2 weighs against institution, as trial in the district court is
`scheduled to be completed before the FWD.
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`Factor 2 relates to proximity of the court’s trial date to the Board’s projected
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`statutory deadline for a final written decision. Fintiv Order at 9; Fintiv ID at 12. The
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`statutory deadline for the final written decision (FWD) for this IPR is January 11,
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`2024. Meanwhile, trial in the Apple district court case is set for August 28, 2023,
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`which is 4.5 months before the FWD deadline. See Ex. 2006 at 3.
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`No trial date has been set in the HP case since it was transferred to the
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`Northern District of California. But in urging transfer, HP argued that time-to-trial
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`in NDCal would be similar to WDTex. This suggests that the HP trial will occur
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`around the FWD deadline, if not before. Regardless of the HP trial, the Apple trial
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`in WDTex provides a compelling reason for discretionary denial.
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`Under Factor 2, a trial date that is 4.5 months earlier weighs strongly against
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`institution. See Fintiv Order at 9 (“If the court’s trial date is earlier than the projected
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`statutory deadline, the Board generally has weighed this fact in favor of exercising
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`authority to deny institution under NHK.”). As NHK Spring explained, one of the
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`primary objectives of the AIA was “to provide an effective and efficient alternative”
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`to parallel litigation. NHK Spring at 19–20 (emphasis added). Here, this IPR cannot
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`be an efficient alternative to one trial (if not two) expected to occur earlier.
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`Further, even putting aside the district court’s trial date, the median time to
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`trial in WDTex still results in a trial occurring before the FWD in this IPR. Current
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`statistics for WDTX show a median time from filing to trial in a civil proceeding to
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`be 27.2 months. See “U.S. District Courts—Federal Court Management Statistics–
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`Profiles—During the 12-Month Periods Ending March 31, 2017 Through 2022,”
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`available at https://www.uscourts.gov/statistics/table/na/federal-court-management-
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`statistics/2022/03/31-1; Interim Procedure 8–9. Thus, even conservatively assuming
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`that trial would occur 27.2 months after the June 16, 2021 complaint would result in
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`IPR2022-01555 (’235 patent)
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`a trial in mid-September 2023. This is still about four months earlier than the FWD
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`deadline in January 2024.
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`The same statistics bear on the HP case that was transferred to the Northern
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`District of California. Current statistics for NDCal show a median time from filing
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`to trial in a civil proceeding to be 31.1 months. Assuming that trial would occur 31.1
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`months after the July 1, 2021 complaint would result in a trial around the time of the
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`FWD deadline in this IPR.
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`Here, this IPR cannot be an alternative to a trial in the WDTex district court
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`set to occur 4.5 months before the FWD deadline. Accordingly, Factor 2 weighs
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`strongly against institution and is a compelling reason for the Board to exercise its
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`discretion to deny institution. Fintiv ID at 13; Intel Corp. v. VLSI Tech. LLC,
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`IPR2020-00158, Paper 16 (PTAB May 20, 2020) at 9.
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`C.
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`Factor 3 weighs against institution, because claim construction
`briefing is already complete and fact discovery will be nearly
`complete by the time of the institution decision.
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`Factor 3 relates to investment in the parallel proceeding by the court and the
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`parties. Fintiv Order at 9; Fintiv ID at 14. Here, the parties and the district court have
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`already (and will continue to) invest substantial effort and resources.
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`Importantly, this factor is judged from the date of the institution decision,
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`which is expected to be in January 2023. See Fintiv Order at 9 (considering “the
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`amount and type of work already completed in the parallel litigation by the court and
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`IPR2022-01555 (’235 patent)
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`the parties at the time of the institution decision”) (emphasis added).
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`1.
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`The parties’ and the court’s investment has been substantial
`and will increase.
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`The district court litigation began a year and half ago in June 2021, and the
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`parties have expended substantial resources since then, particularly in light of
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`Apple’s delay in filing this Petition for nearly a full year after the filing of the
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`complaints in district court. Had Apple acted diligently, the parties and the court
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`could have avoided significant expenditure of effort and resources. The parties have
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`already completed the following efforts directed to the ’235 patent, including
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`infringement contentions, invalidity contentions, supplemental contentions, and four
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`rounds of claim construction briefing. Although the district court was ready to
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`conduct a Markman hearing, it was forced to postpone after the close of discovery
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`given Apple’s motions to supplement the transfer record.
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`In the Apple case, fact discovery opened on August 25, 2022. The next day,
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`Vivato served supplemental infringement contentions (previously the deadline for
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`final infringement contentions). Discovery is now well underway. And by the time
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`of the institution decision in January 2023, the parties will have conducted discovery
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`for more than four months. Discovery during this time is expected to be intense, as
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`the scheduling orders provides a compressed discovery period of 4.5 months, with
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`fact discovery closing on January 20, 2023.
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`IPR2022-01555 (’235 patent)
`Patent Owner Preliminary Response
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`This level of investment is greater than in the Fintiv v. Apple case. In that case,
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`the Board noted for Factor 3 that “this factor weighs somewhat in favor of
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`discretionary denial in this case.” Fintiv ID at 14. Here, Factor 3 weighs more heavily
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`against institution because more work is likely to be expended by the time of the
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`institutio