UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________________________
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`ROKU, INC.,
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`Petitioner,
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`v.
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`IOENGINE, LLC
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`Patent Owner.
`____________________________
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`Case IPR2022-01553
`U.S. Patent No. 10,972,584
`________________________________
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`PETITIONER’S NOTICE RANKING PETITIONS
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`________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________________________
`
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`ROKU, INC.,
`
`Petitioner,
`
`v.
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`IOENGINE, LLC
`
`Patent Owner.
`____________________________
`
`Case IPR2022-01553
`U.S. Patent No. 10,972,584
`________________________________
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`PETITIONER’S NOTICE RANKING PETITIONS
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`Petitioner Roku, Inc. (“Petitioner” or “Roku”) concurrently filed four petitions
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`against U.S. Patent 10,972,584 (the “’584 Patent”), which has 99 claims. Per the
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`Trial Practice Guide (“TPG”), Petitioner submits this Notice including (1) a ranking
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`of the petitions in order in which Petitioner wishes the Board to consider the merits,
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`and (2) a succinct explanation of the differences between the petitions, why the
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`issues addressed by the differences are material, and why the Board should use its
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`discretion to institute all of the petitions if it identifies one petition that satisfies
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`Petitioner’s burden under 35 U.S.C. §314(a).
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`Although all of the petitions are meritorious and justified, Petitioner requests
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`that the Board consider the Petitions according to the following ranking:
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`Rank Petition
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`Prior Art References
`Petitioner Relies On
`Primary Reference: Ozawa
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`Secondary References: Prabhu and
`Lyle
`Primary Reference: Ozawa
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`Secondary References: Prabhu, Spies,
`Boebert, and Swix
`Primary Reference: Alger
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`Secondary References: Lyle and
`Connelly
`Primary Reference: Alger
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`Secondary References: Lyle, Halbert,
`and Dowling
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`1
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`Claims
`Challenged
`1-16, 22-24, 36-
`53, 58, 70-84,
`and 90-92
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`IPR2022-
`01551
`(Petition 1)
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`IPR2022-
`01552
`(Petition 2)
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`17-21, 25-35,
`54-57, 59-69,
`85-89, and 93-99
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`IPR2022-
`01553
`(Petition 3)
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`1-16, 22-24, 36-
`53, 58, 70-84,
`and 90-92
`
`IPR2022-
`01554
`(Petition 4)
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`17-21, 25-35,
`54-57, 59-69,
`85-89, and 93-99
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`1
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`2
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`3
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`4
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`The material differences between the petitions warrant institution of all of
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`them. The four petitions are divided by claims challenged, art area, and prior art
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`date. First, because the ’584 Patent has 99 claims, multiple petitions were needed to
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`challenge different groups of claims. Specifically, Petitions 1 and 3 each challenge
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`56 claims related to device-terminal communications, and Petitions 2 and 4 each
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`challenge 43 claims related to device-network communications.
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`Second, the petitions proceed on different primary references from different
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`art areas. Specifically, Petitions 1 and 2 rely on Ozawa from the set-top box
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`(“STB”) art, and Petitions 3 and 4 rely on Alger from the personal digital assistant
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`(“PDA”) art. The STB and PDA petitions rely on different secondary references,
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`except for one reference, Lyle.
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`Patent Owner IOENGINE, LLC (“Patent Owner”) has asserted all 99 claims
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`(the “Challenged Claims”) against Petitioner in co-pending litigation, IOENGINE,
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`LLC v. Roku Inc., No. 6:21-cv-1296 (W.D. Tex.). Patent Owner has alleged in
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`Preliminary Infringement Contentions that many different Roku products are
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`“portable device[s]” per Claim 1 because these products communicate with a
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`communications network (Internet) to access media content and display that
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`content on a TV. EX1209, pp.8-13, 23-28. If all of these different Roku products
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`are each a “portable device” as urged by Patent Owner, then the STB art cited in
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`Petitions 1 and 2 render the Challenged Claims unpatentable as they too
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`
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`2
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`
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`communicate with a communications network (Internet) to access media content
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`and display that content on a TV.
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`
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`Patent Owner has broadly interpreted the Challenged Claims for purposes of
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`infringement and these infringement theories affirm Petitioner’s assertions as to
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`how the STB art cited in Petitions 1 and 2 render the Challenged Claims
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`unpatentable. However, based on discovery in the litigation, it appears that Patent
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`Owner will argue that the Roku products accused of infringement are different than
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`STBs and STBs are not relevant to the unpatentability of the Challenged Claims.
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`Despite the complete inconsistency with Patent Owner’s position, the PDA art
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`cited in Petitions 3 and 4 also render the Challenged Claims unpatentable. Alger’s
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`PDA is plainly a “portable device.” The ’584 Patent itself discloses “PDAs . . . are
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`considered among the smallest portable computing solution.” EX1201, 2:43-46.
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`
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`Further, the ’584 Patent has an asserted priority date of March 23, 2004, but
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`in the litigation Patent Owner has alleged a conception date as early as June 26,
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`2001. The secondary references in the petitions have different dates to account for
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`Patent Owner’s potential antedating arguments (Prabhu, Spies, Boebert, and Swix
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`in Petitions 1 or 2 vs. Lyle, Connelly, Halbert, and Dowling in Petitions 1, 3, or 4).
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`Given the material differences between the four petitions, and to prevent
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`Patent Owner from asserting the ’584 Patent against Petitioner without the Office
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`ever considering the applicability of STB art to the Challenged Claims, the Board
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`3
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`should use its discretion to institute all of them. That is, the STB art in Petitions 1
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`and 2 and the PDA art in Petitions 3 and 4 was not disclosed, cited, or considered
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`during prosecution. The prior art in the petitions is materially different from and
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`not cumulative to the prior art considered by the Examiner.
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`In view of the number and relative detail of the Challenged Claims (Claim 1
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`is 373 words), Patent Owner’s potential arguments about STBs, and Patent
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`Owner’s potential antedating arguments, four petitions are needed to fully
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`elaborate the obviousness grounds based on the STB art in Petitions 1 and 2 and
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`the PDA art in Petitions 3 and 4. The Petitions are not redundant, duplicative, or
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`substantially similar. Rather, each Petition presents compelling evidence of
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`obviousness, without repeating the same theory or points.
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`The litigation history of the ’584 Patent’s family also supports institution of
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`all of the petitions. Patent Owner is a serial litigant and has asserted patents in the
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`’584 Patent family against other defendants. But the Board has found that many
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`claims of ’584 Patent family members are unpatentable. IPR2019-00879 (19
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`claims of ’969 Patent unpatentable); IPR2019-00929 (53 claims of ’703 Patent
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`unpatentable).1 The U.S. District Court for the District of Delaware has also
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`1 The Board’s judgments in IPR2019-00879 and IPR2019-00929 are pending on
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`appeal in IOENGINE, LLC v. Ingenico Inc., Case Nos. 21-1227, -1331, -1332, -
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`4
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`
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`invalidated claims of the ’969 Patent or ’703 Patent. Ingenico Inc. v. IOENGINE,
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`LLC, No. 18-cv-826, D.I. 506 (D. Del. July 25, 2022). Petitioner submits that each
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`Petition provides a strong showing of unpatentability of the Challenged Claims.
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`The Board should exercise its discretion under §314(a) to institute. The first
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`five General Plastic factors weigh in favor of institution because Petitioner filed
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`the petitions for the first time and on the same day. Intex Recreation Corp. v.
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`Team Worldwide Corp., IPR2018-00874, Paper 14 at 9-12 (PTAB Oct. 29, 2018)
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`(five petitions); see also Flex Logix Techs., Inc. v. Venkat Konda, IPR2020-00261,
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`Paper 22 at 22-24 (PTAB Aug. 3, 2020). As to the sixth and seventh factors, the
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`grounds asserted in the petitions involve only two primary references, and the
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`Board’s resources will not be tasked to a degree that the final written decisions will
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`not be timely completed. Intex, IPR2018-00874, at 11.
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`For the foregoing reasons, Petitioner respectfully requests that the Board
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`institute all four petitions. If the Board decides to institute one petition per each
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`Challenged Claim, Petitioner requests that the Board institute Petitions 1 and 2.
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`1375, and -1376 (Fed. Cir.). Patent Owner took over 240 days of extension of time
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`to file its opening brief. EFC No. 23, 26, 45, 47, 50.
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`5
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`By: /James L. Lovsin/
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`
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`James L. Lovsin, Lead Counsel
`Reg. No. 69,550
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`Counsel for Petitioner Roku, Inc.
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`Dated: September 19, 2022
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`Respectfully Submitted,
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`6
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies on this September 19, 2022, that a true and
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`correct copies of the foregoing NOTICE RANKING PETITIONS was served in
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`their entirety on the following party via FedEx Express® or Express Mail:
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`Correspondence Address:
`Mark Koffsky
`Koffsky Schwalb LLC
`500 Seventh Avenue
`8th Floor
`New York NY 10018
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`
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`Dated: September 19, 2022
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`By: /James L. Lovsin/
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`
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`James L. Lovsin, Lead Counsel
`Reg. No. 69,550
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`Counsel for Petitioner Roku, Inc.
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`7
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