Trials@uspto.gov
`571-272-7822
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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.
`
`IPR2022-01554
`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.
`
`IPR2022-01554
`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
`
`
`
`IPR2022-01554
`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. 1301, “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. 1301)
`
`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. 1301, 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. 1301, 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. 1301, 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. 1301, 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;
`
`
`
`
`
`
`1 Roku challenges the independent claims of the ’584 patent in a related
`petition. See IPR2022-01553, 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. 1301, 32:46–33:30.
`Roku argues two grounds for inter partes review, as summarized in
`the following table:
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`Claim(s) Challenged
`17–21, 25, 26, 29–35, 54–57, 59,
`60, 63–69, 85–89, 93, 94, 97, 98
`27, 28, 61, 62, 95, 96
`
`99
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`103(a)2
`
`Alger, 3 Lyle4
`
`103(a)
`
`103(a)
`
`Alger, Lyle, Halbert5
`Alger, Lyle, Halbert,
`Dowling6
`
`Pet. 6.
`In support of its arguments, Roku relies on a declaration of
`Dr. Andrew B. Lippman. Ex. 1303. IOENGINE relies on a declaration of
`Dr. Michael I. Shamos. Ex. 2001.
`
`C. OVERVIEW OF PRIOR ART
`
`Alger describes “[a] client portal that is optimized to fulfill a specific
`function . . . such as reviewing and purchasing electronic books.” Ex. 1305,
`code (57).
`
`
`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 Alger et al., US 2003/0018543 A1 (published Jan. 23, 2003) (Ex. 1305).
`4 Lyle, US 7,242,766 B1 (issued July 10, 2007) (Ex. 1306).
`5 Halbert, US 2004/0003412 A1 (published Jan. 1, 2004) (Ex. 1307).
`6 Dowling et al., US 2003/0050019 A1 (published Mar. 13, 2003)
`(Ex. 1308).
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`Alger’s Figure 1 is reproduced below:
`
`
`
`Figure 1, above, depicts a computer system including “a general purpose
`computing device in the form of a conventional personal digital assistant,
`personal computer or network server 120 or the like.” Ex. 1305 ¶ 19. Also
`depicted is “[a] monitor 147 or other type of display device” which connects
`to computer 120 through video adapter 148. Id. ¶ 21. Alger discloses that,
`“[i]n addition to the monitor 147, personal computers typically include other
`peripheral output devices (not shown), such as speakers and printers.” Id.
`Lyle teaches the use of the High-bandwidth Digital Content Protection
`(HDCP) protocol, which includes the exchange of cryptographic keys, to
`encrypt video data over a digital link between a set-top box and a TV. See
`Ex. 1306, 2:3–11, 3:6–11.
`Halbert describes ways to “perform secure transactions via an
`interactive television ticker.” Ex. 1307, code (57).
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`Dowling describes “[a] mobile unit such as a smart phone” that is
`augmented with peripherals such as a retractable keyboard and display that
`allow the mobile unit to “function as a laptop/desktop computer.” Ex. 1308,
`code (57).
`
`D. RELATED PROCEEDINGS
`
`Inter partes reviews IPR2022-01551, IPR2022-01552, and
`IPR2022-01553, 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
`the proceeding would be inefficient and contrary to the goals of the
`[America Invents Act].” Prelim. Resp. 49 (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 deny
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`institution under Fintiv “because the Petition presents compelling evidence
`of unpatentability.” Pet. 6. For the reasons below, we agree with
`IOENGINE, and we disagree with Roku that the Petition presents a
`compelling, meritorious challenge.
`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;
`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
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`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. 54 (citing Ex. 2015, 1).
`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).
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`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. 54–55 (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. at 55 (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. 55 (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
`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.
`
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`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. 56. 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 56–57 (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
`third Fintiv factor weighs heavily in favor of discretionary denial of
`institution.
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`FINTIV FACTOR 4: OVERLAP BETWEEN ISSUES RAISED IN THE
`D.
`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. 58 (citing Ex. 2023, 6, 11–
`12 (citing Alger, Lyle, Halbert, and Dowling among its asserted prior art
`references)); see also id. at 57. 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 59–60.
`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 ([Alger, Lyle, Halbert, and Dowling]).
`
`Id.
`
`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
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`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 Alger, Lyle, Halbert, or Dowling 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.
`
`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. 60; Pet. 2 (citing
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`Ex. 1309). Accordingly, the fifth Fintiv factor does not weigh against
`discretionary denial, and we regard the factor as neutral.
`
`F.
`FINTIV FACTOR 6: OTHER CIRCUMSTANCES THAT IMPACT THE
`BOARD’S EXERCISE OF DISCRETION, INCLUDING THE MERITS
`
`Roku argues that we should not deny institution under Fintiv “because
`the Petition presents compelling evidence of unpatentability.” Pet. 6. In
`response, 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. 61.
`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. 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 determine that the Petition and the
`preliminary evidence do not present a compelling, meritorious challenge. 7
`
`
`7 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. 15 (citing Ex. 1303 ¶ 60); Prelim. Resp. 9–10; see also Phillips
`v. AWH Corp., 415 F.3d 1303, 1312–1313 (Fed. Cir. 2005) (en banc) (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).
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`In particular, the preliminary record does not plainly show that Alger
`or the other references teach or disclose a portable device and a separate
`terminal with processing capabilities sufficient to facilitate a key exchange
`between the terminal and the portable device as recited in the claims. See,
`e.g., Ex. 1301, 32:48–53, 33:26–30.
`In the Petition, Roku contends that “Alger’s PDA 120 is a ‘portable
`device,’” and that “Alger’s ‘monitor 147,’ which includes a screen/display,
`. . . , is the ‘terminal comprising . . . an output component’ in Claim 1.” Pet.
`27–28 (citing Ex. 1303 ¶¶ 158–159, 163). Roku relies on Lyle for teaching
`the use of HDCP, which involves the exchange of a key between a
`transmitter and a receiver. See Pet. 69–70.
`In response, IOENGINE argues that “[t]he only alleged ‘terminal’ that
`[Roku] identifies in either reference is Alger’s monitor 147,” but according
`to IOENGINE, Alger’s monitor 147 “is merely an ‘output component’ with
`no processor or memory as required by every Challenged Claim.” Prelim.
`Resp. 27. IOENGINE argues that at the time of Alger’s disclosure, monitors
`such as monitor 147 did not have general-purpose computing capabilities
`that could facilitate a key exchange. Id. (Ex. 2001 ¶ 88). IOENGINE also
`argues that Figure 1 of Alger includes video adapter 148 which “is necessary
`in Alger . . . precisely because monitor 147 cannot render digital data, further
`confirming that it is not a computing device.” Id.
`IOENGINE also takes issue with Roku’s argument that Alger’s
`computer 120 is a PDA which is connected to a separate monitor 147. See
`Prelim. Resp. 22–23. According to IOENGINE, Figure 1 depicts a computer
`with typical PC peripherals such as floppy drive 128, optical drive 130,
`external keyboard 140, mouse 142, and externally-connected monitor 147,
`
`
`
`
`16
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`
`IPR2022-01554
`Patent 10,972,584 B2
`
`which a PDA would not have had at the time of Alger’s disclosure, and
`“Alger itself never refers to ‘Computer 120’ . . . as a PDA.” Id. at 22 (citing
`Ex. 2001 ¶¶ 79–80). Thus, IOENGINE contends that “Figure 1 of Alger
`illustrates the architecture of Alger’s general-purpose-computer
`embodiment,” not its PDA embodiment. Id. at 22–23.
`IOENGINE also contends that in Alger’s PDA embodiment, the
`display would be internal to the PDA, and Roku has not shown that a
`connection to an external monitor would have been necessary or desirable
`for such a handheld device. See Prelim. Resp. 29–30 (citing Ex. 1305 ¶ 21;
`Ex. 2001 ¶¶ 88, 90).
`Based on the preliminary record, IOENGINE has raised substantial
`issues with Roku’s analysis, so that even if we were to determine that Roku
`met the lower threshold for instituting an inter partes review (a question we
`need not reach in our Fintiv analysis), the evidence does not plainly support
`Ozawa’s position at this stage. Thus, we determine that Roku’s Petition has
`not 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
`
`
`
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`17
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`
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`IPR2022-01554
`Patent 10,972,584 B2
`
`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.
`
`V. ORDER
`
`In consideration of the foregoing, it is
`
`ORDERED that the Petition is denied, and no trial is instituted.
`
`
`
`
`18
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`
`
`IPR2022-01554
`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
`
`
`
`
`
`
`19
`
`
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