Trials@uspto.gov
`571-272-7822
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`
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`Paper 11
`Entered: May 5, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`IOENGINE, LLC,
`Patent Owner.
`
`IPR2022-01552
`Patent 10,972,584 B2
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, CHRISTOPHER L. OGDEN, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 11
`Entered: May 5, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`IOENGINE, LLC,
`Patent Owner.
`
`IPR2022-01552
`Patent 10,972,584 B2
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, CHRISTOPHER L. OGDEN, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`IPR2022-01552
`Patent 10,972,584 B2
`
`
`I. INTRODUCTION
`
`Roku, Inc. (“Roku”) filed a Petition (Paper 2, “Pet.”) under 35 U.S.C.
`§§ 311–319 requesting inter partes review of claims 17–21, 25–35, 59–69,
`85–89, 93–99 of U.S. Patent No. 10,972,584 B2 (Ex. 1101, “the
`’584 patent”). Patent Owner IOENGINE, LLC (“IOENGINE”) filed a
`Preliminary Response (Paper 7, “Prelim. Resp.”).
`Under the authority delegated to us by the Director under 37 C.F.R.
`§ 42.4(a), we may only institute an inter partes review when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a)
`(2018); see also 37 C.F.R. § 42.108(c) (2022). However, institution of inter
`partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815
`F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never
`compelled, to institute an IPR proceeding.”). For the reasons below, we
`exercise our discretion not to institute an inter partes review.
`
`II. BACKGROUND
`
`A.
`
`THE ’584 PATENT (EX. 1101)
`
`The ’584 patent describes “a portable device configured to
`communicate with a terminal and a network server, and execute stored
`program code in response to user interaction with an interactive user
`interface.” Ex. 1101, code (57). “The portable device contains program code
`configured to render an interactive user interface on the terminal.” Id.
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`According to the ’584 patent, personal digital assistants (PDAs) are
`examples of “portable” devices (see Ex. 1101, 1:26–32), and even though
`they are “among the smallest portable computing solution[s],” they “are
`bulky, provide uncomfortably small user interfaces, and require too much
`power to maintain their data (id. at 2:43–46).
`To remedy these and other issues with PDAs, the ’584 patent
`describes a “tunneling client access point (TCAP)” which has “storage,
`execution, and/or processing resources” but, unlike a traditional PDA, does
`not need to have its own display or other bulky input or output facilities, and
`can instead have “a highly portable ‘thumb’ footprint.” Ex. 1101, 2:55–63.
`“[B]y providing the equivalent of a plug-n-play virtual private network,” the
`user may “plug the [TCAP] device into any existing and available desktop or
`laptop computer, through which[] the TCAP can make use of a traditional
`user interface and input/output (I/O) peripherals.” Id. at 2:57–60, 2:63–65. In
`one embodiment, “a user . . . may plug-in a TCAP into any number of access
`terminals . . . located anywhere.” Id. at 3:62–64.
`“Access terminals (ATs) may be any number of computing devices
`such as servers, workstations, desktop computers, laptops, portable digital
`assistants (PDAs), and/or the like.” Ex. 1101, 3:64–67. According to the
`’584 patent, “[t]he type of AT used is not important other than the device
`should provide a compatible mechanism of engagement to the TCAP . . . and
`provide an operating environment for the user to engage the TCAP through
`the AT.” Id. at 3:67–4:4. For example, a TCAP can connect to an AT through
`a USB, Bluetooth, or WiFi connection and the AT can “provide[] Java and/or
`Windows runtime environments, which allows the TCAP to interact with the
`input/output mechanisms of the AT.” Id. at 4:4–11.
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`B. CHALLENGED CLAIMS AND GROUNDS
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`Claim 1, one of the three independent claims of the ’584 patent (none
`of which are challenged in this Petition1), reads as follows:
`1. A portable device configured to communicate with (i) a
`communications network comprising a plurality of communications
`network nodes and (ii) a terminal comprising a processor, an output
`component, and a memory configured to store program code, including
`first program code which, when executed by the terminal processer, is
`configured to facilitate a key exchange between the terminal and the
`portable device, the portable device comprising:
`(a) a network interface configured to enable transmission of
`communications between the portable device and a
`communications network node;
`(b) a communication interface configured to enable transmission of
`communications between the portable device and the terminal;
`(c) a processor; and
`(d) a memory having executable program code stored thereon,
`including:
`(1) second program code which, when executed by the portable
`device processor, is configured to cause a communication to
`be transmitted to the terminal to display an interactive user
`interface by the terminal output component, the interactive
`user interface comprising at least one user interface element
`configured to be manipulated by a user to cause the portable
`device processor to execute stored program code;
`(2) third program code which, when executed by the portable
`device in response to a command resulting from user
`manipulation of a user interface element of the interactive user
`interface, is configured to cause a communication to be
`transmitted to the terminal to affect the display of the
`interactive user interface by the terminal output component;
`
`
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`1 Roku challenges the independent claims of the ’584 patent in a related
`petition. See IPR2022-01551, Paper 2.
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`(3) fourth program code which, when executed by the portable
`device processor in response to a command resulting from
`user manipulation of a user interface element on an interactive
`user interface, is configured to cause a secure communication
`to be transmitted through the portable device network
`interface to a communications network node; and
`(4) fifth program code which, when executed by the portable
`device processor, is configured to (i) process secure data
`received from the communications network node through the
`portable device network interface and (ii) cause the processed
`data to be securely transmitted through the communications
`interface to the terminal for display by the terminal output
`component, wherein the portable device is configured to
`employ a key exchange between the portable device and the
`terminal to securely transmit the processed data through the
`communication interface to the terminal.
`Ex. 1101, 32:46–33:30.
`Roku argues four grounds for inter partes review, as summarized in
`the following table:
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`35 U.S.C. §
`103(a)2
`
`Reference(s)/Basis
`Ozawa, 3 Prabhu4
`
`103(a)
`
`Ozawa, Prabhu, Spies5
`
`Claim(s) Challenged
`30–35, 64–69
`17–21, 25, 26, 29, 54–57, 59,
`60, 63, 85–89, 93, 94
`27, 28, 61, 62, 95, 96
`97–99
`Pet. 6.
`In support of its arguments, Roku relies on a declaration of
`Dr. Andrew B. Lippman. Ex. 1103. IOENGINE relies on a declaration of
`Dr. Michael I. Shamos. Ex. 2001.
`
`103(a)
`103(a)
`
`Ozawa, Prabhu, Boebert6
`Ozawa, Prabhu, Swix7
`
`C. OVERVIEW OF PRIOR ART
`
`Ozawa “relates generally to the field of television and television
`set-top boxes.” Ex. 1105 ¶ 3. It includes a set-top box for a cable or satellite
`system, which is connected to a television to provide media content and
`listing data. Id. ¶ 20. Figure 1 of Ozawa is reproduced below:
`
`
`2 35 U.S.C. §§ 102, 103 (2006), amended by Leahy–Smith America Invents
`Act, Pub. L. No. 112-29 §§ 102, 103, sec. (n)(1), 125 Stat. 284, 287, 293
`(2011) (effective Mar. 16, 2013). Petitioner cites the pre-AIA version of
`§ 102 (see Pet. 5), and we assume that these versions of §§ 102 and 103
`apply.
`3 Ozawa et al., US 2001/0030959 A1 (published Oct. 18, 2001) (Ex. 1105);
`see also Exs. 1006–1011 (provisional applications incorporated by
`reference).
`4 Prabhu et al., US 2002/0104091 A1 (published Aug. 1, 2002) (Ex. 1113).
`5 Spies et al., US 6,055,314 (issued Apr. 25, 2000) (Ex. 1114).
`6 Boebert et al., US 5,596,718 (issued Jan. 21, 1997) (Ex. 1115).
`7 Swix et al., US 2004/0250273 A1 (published Dec. 9, 2004) (Ex. 1116).
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`Figure 1, above, is a block diagram for a cable or satellite TV system 100,
`which includes, at head end 10 of a service provider, media server 12 for
`providing media programming, electronic programming guide (EPG) server
`16 for providing program listings, and internet service provider (ISP) host 38
`for providing internet access, each of which serve content via transmission
`medium 20 to set top box (STB) 22. Ex. 1105 ¶¶ 20–21, 26. STB 22 is
`coupled to TV 24 (possibly a digital TV) via interface 30 (which may be a
`digital interface). Id. ¶¶ 22, 33, 36.
`Prabhu teaches “[a] method for interfacing a digital set-top box with a
`digital television.” Ex. 1113, code (57). The method includes a copy
`protection scheme that includes an exchange of cryptographic keys. See id.
`¶¶ 40–49.
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`Spies describes “[a] system and method for secure purchase and
`delivery of video content programs over various distribution media” such as
`a cable television network via a set-top box. Ex. 1114, code (57), 1:1:39–43.
`Boebert describes ways “for ensuring secure communication over an
`unsecured communications medium between a user working on an
`unsecured workstation or computer and a host computer.” Ex. 1115, code
`(57).
`
`Swix describes a set-top box with a thin client that can control the
`display of a web-browser-based user interface. Ex. 1116 ¶¶ 54–57.
`
`D. RELATED PROCEEDINGS
`
`Inter partes reviews IPR2022-01551, IPR2022-01553, and
`IPR2022-01554, involving the same parties, also challenge the ’584 patent.
`See Paper 4, 2. Roku filed a Notice Ranking Petitions addressing these four
`proceedings. Paper 3. Because we deny institution in this proceeding for
`other reasons, we need not address IOENGINE’s argument that Roku is not
`entitled to multiple petitions. See Paper 8.
`The parties also identify IOENGINE, LLC v. Roku, Inc., No.
`6:21-cv-1296 (W.D. Tex. filed Dec. 14, 2021) (“parallel district court
`proceeding”) as challenging the ’584 patent in federal district court. Pet. 2;
`Paper 4, 2.
`
`III. DISCRETION TO DENY INSTITUTION UNDER § 314(a)
`
`In light of the parallel district court proceeding challenging the ’584
`patent, IOENGINE argues that “[t]he Board should exercise its discretion to
`deny institution of the Petition under Fintiv and 35 U.S.C. § 314(a) because
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`the proceeding would be inefficient and contrary to the goals of the
`[America Invents Act].” Prelim. Resp. 52 (citing Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential); NHK
`Spring Co., Ltd. v. Intri-Plex Techs. Inc., IPR2018-00752, Paper 8 (PTAB
`Sept. 12, 2018) (precedential)). Roku argues that we should not
`discretionally deny institution under 35 U.S.C. §§ 314(a), but does not offer
`any reasons. See Pet. 6; Prelim. Resp. 63. For the reasons below, we agree
`with IOENGINE.
`Institution of inter partes review is discretionary. See Harmonic v. Avid
`Tech., 815 F.3d at 1367; see also 35 U.S.C. § 314(a). The Board has held
`that the advanced state of a parallel district court action is a factor weighing
`in favor of denying a petition under § 314(a). See NHK Spring, Paper 8 at
`20; Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 58 &
`n.2 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/
`tpgnov.pdf. (“Trial Practice Guide”).
`In Fintiv, the Board explained that “cases addressing earlier trial dates
`as a basis for denial under NHK Spring have sought to balance
`considerations such as system efficiency, fairness, and patent quality.”
`Fintiv, Paper 11 at 5. Fintiv sets forth six non-exclusive factors for
`determining “whether efficiency, fairness, and the merits support the
`exercise of authority to deny institution in view of an earlier trial date in the
`parallel proceeding.” Id. at 6. These factors consider the following:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
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`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Id. at 5–6. We discuss the parties’ arguments in the context of considering
`the above factors. In evaluating these factors, we “take[] a holistic view of
`whether efficiency and integrity of the system are best served by denying or
`instituting review.” Id. at 6.
`The Director has issued additional guidance on the application of
`Fintiv. See Katherine K. Vidal, Interim Procedure for Discretionary Denials
`in AIA Post-Grant Proceedings with Parallel District Court Litigation (June
`21, 2022) 9, https://www.uspto.gov/sites/default/files/documents/
`interim_proc_discretionary_denials_aia_parallel_district_court_litigation_m
`emo_20220621_.pdf (“Fintiv Memo,” Ex. 2011).
`We address each of the above Fintiv factors below.
`
`FINTIV FACTOR 1: WHETHER THE COURT GRANTED A STAY OR
`A.
`EVIDENCE EXISTS THAT ONE MAY BE GRANTED IF A PROCEEDING IS
`INSTITUTED
`
`IOENGINE argues that the first Fintiv factor weighs in favor of
`discretionary denial because Judge Albright, who presides over the parallel
`district court proceeding, “has noted that in 30 months on the bench, ‘he has
`only put “one or two” cases on hold so the PTAB can review the patent.’”
`Prelim. Resp. 57 (citing Ex. 2015, 1).
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`Neither party has brought to our attention any request for a stay or any
`specific indication from Judge Albright that a stay is likely in the parallel
`district court proceeding. Thus, we find that this factor does not weigh
`against discretionary denial, and we regard the factor as neutral. See Fintiv,
`Paper 15 at 11–12 (May 13, 2020).
`
`FINTIV FACTOR 2: PROXIMITY OF THE COURT’S TRIAL DATE TO
`B.
`THE BOARD’S PROJECTED STATUTORY DEADLINE FOR A FINAL WRITTEN
`DECISION
`IOENGINE argues that the parallel district court proceeding “is
`scheduled for trial on October 26, 2023, nearly seven months before the
`expected [final written decision] in this case,” which IOENGINE estimates
`would be in May of 2024. Prelim. Resp. 58 (citing Ex. 2004, 7; Ex. 2006).
`IOENGINE contends that the Board should take this date at “face value”
`because there is no evidence of record that the date would change or be
`postponed. Id. (citing Fintiv, Paper 15 at 13; Samsung Elecs. Co., Ltd. v.
`Ancora Techs., Inc., IPR2020-01184, Paper 11 at 13 (PTAB Jan. 5, 2021)).
`Noting that the Fintiv Memo directs that the Board “will consider the
`median time from filing to disposition of the civil trial for the district in
`which the parallel litigation resides” (Ex. 2011, 3), IOENGINE argues that
`the median time-to-trial in the Western District of Texas is 23 months for
`patent trials before Judge Albright, which “would put trial in November
`2023, still nearly six months before any final written decision on this
`petition.” Prelim. Resp. 59 (citing Ex. 2014; Ex. 2017; Ex. 2018, 37).
`We agree with IOENGINE that trial in the parallel district court
`proceeding is likely to be about six months prior to the due date for our final
`written decision if we were to institute an inter partes review. Because the
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`district court would address issues relating to the validity of the ’584 patent
`well before we would issue a final written decision, we find that the second
`Fintiv factor weighs heavily in favor of discretionary denial of institution.
`
`FINTIV FACTOR 3: INVESTMENT IN THE PARALLEL PROCEEDING
`C.
`BY THE COURT AND THE PARTIES
`IOENGINE argues that the third Fintiv factor “weighs heavily in
`favor of denial” because the civil case “was filed in December 2021 and is
`now at an advanced stage.” Prelim. Resp. 60. According to IOENGINE,
`(1) the parties in the district court case have entered their final infringement
`and invalidity contentions; (2) claim construction proceedings are complete;
`(3) the parties have exchanged and responded to 105 requests for production
`(including 145,000 pages of documents produced by Roku and 17,500 pages
`produced by IOENGINE) and 44 interrogatories; (4) Roku has served eight
`third-party subpoenas, receiving 26,000 pages in response; (5) “[b]y the time
`the Board makes an institution decision, fact discovery will be closed, and
`expert discovery will be nearly complete”; and (6) if we institute trial, the
`Patent Owner response “would be due in the middle of pretrial
`submissions.” Id. at 60–61 (citing Ex. 2004, 6; Ex. 2006; Ex. 2008;
`Ex. 2023, 6, 8–9, 11–12); see also Paper 10, 5 (stating that “[t]he parties
`have taken 13 depositions, and the rest will be completed by April 27[,
`2023]” and that fact discovery closes in April 2023 (citing Ex. 2028 ¶¶ 7–
`9)).
`
`We agree with IOENGINE that there has been substantial investment
`by the parties and the district court in the parallel proceeding, including the
`completion of preliminary disclosures and claim construction, and the
`near-completion of discovery. Under the circumstances, we find that the
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`third Fintiv factor weighs heavily in favor of discretionary denial of
`institution.
`
`D.
`FINTIV FACTOR 4: OVERLAP BETWEEN ISSUES RAISED IN THE
`PETITION AND IN THE PARALLEL PROCEEDING
`According to IOENGINE, Roku “has incorporated by reference its
`arguments [from its Petition] in its invalidity contentions in the district court
`and its invalidity contentions rely on the very same art and arguments
`asserted here,” and challenges every claim of the ’584 patent, including the
`claims challenged in the Petition. Prelim. Resp. 62 (citing Ex. 2023, 6, 11–
`12 (citing Ozawa, Prabhu, Spies, Boebert, and Swix among its asserted prior
`art references)); see also id. at 60–61. IOENGINE also notes that, at the time
`of its Preliminary Response, Roku had not submitted any stipulation not to
`pursue any subject matter in the parallel district court proceeding that
`overlaps with its challenges in the Petition. Id. at 63.
`After IOENGINE submitted its Preliminary Response, Roku
`requested authorization to submit a stipulation relevant to the fourth Fintiv
`factor, which we authorized on March 28, 2023. See Paper 9, 1. Roku
`stipulated as follows:
`[I]f (and only if) the Patent Trial and Appeal Board institutes an
`IPR in this proceeding on the grounds presented in the Petition,
`Petitioner will not pursue an invalidity defense in the [parallel
`district court proceeding] that the patent claims subject to the
`instituted IPR are invalid based on the same grounds as in the
`Petition or that the patent claims subject to the instituted IPR
`are invalid in view of the references that form the stated bases
`for those grounds ([Ozawa, Prabhu, Spies, Boebert, and Swix]).
`
`Id.
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`In response, IOENGINE contends that Roku’s stipulation would have
`limited impact in the parallel district court proceeding because Roku also
`challenges a separate, closely related patent in that case for which Roku has
`raised substantially the same patentability issues. Paper 10, 2–3. IOENGINE
`argues that the stipulation would not restrict Roku’s ability to challenge the
`other patent on the same grounds as the Petition. Id. at 3. And according to
`IOENGINE, the language of the stipulation is ambiguous enough that it
`would potentially allow Roku to challenge the ’584 patent based on
`combinations of Ozawa, Prabhu, Spies, Boebert, or Swix with other
`references. Id. at 4.
`In the Fintiv Memo, the Director stated that, “[c]onsistent with Sotera
`Wireless, Inc., the PTAB will not discretionarily deny institution in view of
`parallel district court litigation where a petitioner presents a stipulation not
`to pursue in a parallel proceeding the same grounds or any grounds that
`could have reasonably been raised before the PTAB.” Ex. 2011, 3 (footnote
`omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019,
`Paper 12 (PTAB Dec. 1, 2020) (precedential)). Roku’s stipulation, however,
`falls far short of a Sotera-type stipulation that would bar Roku from
`pursuing any grounds in the parallel district court proceeding that could have
`reasonably been raised before the Board. Thus, while Roku’s stipulation
`would prevent some overlap between this proceeding and the parallel district
`court proceeding, the scope of the stipulation does not rise to the level
`contemplated in the Fintiv Memo.
`Thus, although we find that the fourth Fintiv factor weighs somewhat
`against discretionary denial of institution, this does not end our analysis
`because Roku has declined to submit a Sotera-type stipulation.
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`FINTIV FACTOR 5: WHETHER THE PETITIONER AND THE
`E.
`DEFENDANT IN THE PARALLEL PROCEEDING ARE THE SAME PARTY
`
`The parties in this proceeding are the same as the parties in the
`parallel district court proceeding. See Prelim. Resp. 63–64; Pet. 2 (citing
`Ex. 1117). Accordingly, the fifth Fintiv factor does not weigh against
`discretionary denial, and we regard the factor as neutral.
`
`FINTIV FACTOR 6: OTHER CIRCUMSTANCES THAT IMPACT THE
`F.
`BOARD’S EXERCISE OF DISCRETION, INCLUDING THE MERITS
`
`The Fintiv Memo directs that “compelling, meritorious challenges
`will be allowed to proceed at the PTAB even where district court litigation is
`proceeding in parallel.” Ex. 2011, 4. The Director defines “[c]ompelling,
`meritorious challenges [as] those in which the evidence, if unrebutted in
`trial, would plainly lead to a conclusion that one or more claims are
`unpatentable by a preponderance of the evidence.” Id.
`Roku does not specifically contend that its Petition presents a
`compelling, meritorious challenge (see Pet. 6), and IOENGINE contends
`that “no ground is ‘sufficiently strong to override the concerns about
`duplication of effort by the Board and the district court.” Prelim. Resp. 64.
`We consider whether there are compelling merits when, as here, our analysis
`of the first five Fintiv factors favors denial of institution. See CommScope
`Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 5 (PTAB Feb.
`27, 2023) (precedential). For the reasons below, we agree with IOENGINE.8
`
`
`8 Our compelling-merits analysis relies on the parties’ agreed understanding
`of the level of ordinary skill in the pertinent art, which Roku articulates in its
`Petition. Pet. 17–18 (citing Ex. 1103 ¶ 60); Prelim. Resp. 8–9; see also
`Phillips v. AWH Corp., 415 F.3d 1303, 1312–1313 (Fed. Cir. 2005) (en banc)
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`In particular, we find it a close issue whether Ozawa discloses a
`“portable device” as recited in unchallenged independent claims 1, 39, and
`73, which is also part of the challenged dependent claims. In claims 1 and
`39, the term “portable device” is introduced in the preamble and appears
`throughout the claims. See Ex. 1101, 32:46–33:30, 36:32–37:11. In claim 73,
`a “portable device” is recited as an element of the claimed system. See id. at
`39:44–40:20. In its Petition, Roku assumes, for its arguments, that the claim
`preambles, including the term “portable,” are limiting. See Pet. 24, 27–28.
`In its Preliminary Response, IOENGINE argues that “[t]he term
`‘portable device’ is limiting because it provides antecedent basis for 11
`instances in the body of claim 1,” and because the specification specifically
`focused on portability as an important feature of the invention. Prelim. Resp.
`11–13.
`We agree with IOENGINE that the claim preambles are limiting at
`least to the extent that “portable” is a necessary feature of the portable
`device recited in the claims. We also point out that in the parallel district
`court litigation, the court specifically held that the preambles of claims 1, 39,
`and 73 are limiting. See Ex. 2008, 29–31. We agree with the district court’s
`analysis.
`Roku contends that Ozawa’s “STB 22 is a ‘portable device’ as recited
`in Claim 1 because a [person of ordinary skill in the art] would have
`understood that an STB could be carried or moved from one TV to another.”
`Pet. 28. Roku also argues that, according to Ozawa, “STB 22 can be moved,
`
`
`(the level of ordinary skill is pertinent to claim construction); Graham v.
`John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966) (the level of ordinary
`skill is one of the factors to consider when determining obviousness).
`
`16
`
`
`
`
`IPR2022-01552
`Patent 10,972,584 B2
`
`and there is nothing in Ozawa that indicates that STB 22 is a fixed
`installation.” Id. (citing Ex. 1110, 18; Ex. 1103 ¶ 136). Finally, Roku argues
`that IOENGINE’s infringement theories in the parallel district court
`proceeding are consistent with its position that Ozawa’s STB 22 is
`“portable” because they are similar in size and weight to Roku’s streaming
`devices that IOENGINE accuses of infringement. Id. (citing Ex. 1117, 58–
`69; Ex. 1118, 136–141, 151–156; Ex. 1103 ¶ 137).
`In response, IOENGINE argues that the term “portable” means more
`than “the fact that it might be physically possible to move a device.” Prelim.
`Resp. 30. According to IOENGINE, a traditional set-top cable box like
`Ozawa’s STB 22 “cannot be used for its intended purpose outside of the
`specific proprietary cable system it belongs to, or even outside of a user’s
`specific location as provisioned in that cable system.” Id. (citing Ex. 2001
`¶¶ 90–91). IOENGINE contrasts this with the type of portability described in
`the ’584 patent in which a portable device can be used with a terminal
`“anywhere” in a “plug-n-play” manner. Id. at 30–33 (citing Ex. 1101, 2:56–
`58, 2:63–67, 3:62–67, 4:13–16, 4:59–63, 5:67–6:9, 9:35–39; Ex. 1110, 18;
`Ex. 1018, 9 16, 18, 21; Ex. 2019, 4; Ex. 2020, 4; Ex. 2002 ¶¶ 92–96).
`According to IOENGINE, at the time of Ozawa’s disclosure, set-top boxes
`were physically connected to a coaxial cable and moving it to a different
`location would have required rewiring, typically by a cable-company
`technician. Id. at 33–34 (citing Ex. 2001 ¶¶ 98–99).
`In light of IOENGINE’s preliminary arguments, we find the issue of
`whether Ozawa discloses a “portable device” to be a close issue. The
`
`9 IOENGINE erroneously identifies the Preliminary Infringement
`Contentions as Exhibit 1116 rather than Exhibit 1118.
`
`17
`
`
`
`
`IPR2022-01552
`Patent 10,972,584 B2
`
`evidence does not plainly support Roku’s position at this stage, and the
`question would need to be further developed at trial. Because the “portable
`device” limitation is part of all challenged claims, Roku would need to
`prevail on this issue to prevail on any claim at trial. Thus, we determine that
`Roku has not, at this stage, presented a “compelling, meritorious
`challenge[]” to any claim of the ’584 patent. Ex. 2011, 4. Accordingly, we
`find that the sixth Fintiv factor does not weigh against discretionary denial.
`
`G. BALANCING THE FINTIV FACTORS
`
`A holistic balancing of the Fintiv factors weighs in favor of
`discretionary denial. As discussed above, only factor 4 weighs against
`discretionary denial, and factors 2 and 3 weigh heavily in favor. Moreover,
`Roku has not submitted a Sotera-type stipulation that would make
`discretionary denial inappropriate under the Fintiv Memo, and likewise, the
`Petition does not show compelling evidence of unpatentability under
`factor 6.
`Given the late stage of the parallel district court proceeding, the
`substantial investment by the parties in that proceeding, and the lack of
`strong countervailing considerations, the evidence of record favors
`exercising our discretion to deny institution of an inter partes review.
`
`IV. CONCLUSION
`
`For the above reasons, we exercise our discretion under 35 U.S.C.
`§ 314(a) to deny institution of an inter partes review challenging claims 17–
`21, 25–35, 59–69, 85–89, 93–99 of the ’584 patent.
`
`
`
`
`18
`
`
`
`IPR2022-01552
`Patent 10,972,584 B2
`
`
`V. ORDER
`
`In consideration of the foregoing, it is
`
`ORDERED that the Petition is denied, and no trial is instituted.
`
`
`
`
`19
`
`
`
`IPR2022-01552
`Patent 10,972,584 B2
`
`For PETITIONER:
`
`James Lovsin
`James Korenchan
`Margot Wilson
`Mateusz Kulesza
`McDONNELL BOEHNEN HULBERT AND BERGHOFF LLP
`lovsin@mbhb.com
`korenchan@mbhb.com
`wilson@mbhb.com
`kulesza@mbhb.com
`
`For PATENT OWNER:
`
`Derek Brader
`Michael Fisher
`DECHERT LLP
`Derek.brader@dechert.com
`Michael.fisher@dechert.com
`
`
`
`
`
`
`20
`
`
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