UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________________
`
`
`ROKU, INC.,
`
`Petitioner,
`
`v.
`
`IOENGINE, LLC
`
`Patent Owner.
`____________________________
`
`Case IPR2022-01554
`U.S. Patent No. 10,972,584
`________________________________
`
`PETITIONER’S NOTICE RANKING PETITIONS
`
`
`
`
`
`
`
`________________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________________
`
`
`ROKU, INC.,
`
`Petitioner,
`
`v.
`
`IOENGINE, LLC
`
`Patent Owner.
`____________________________
`
`Case IPR2022-01554
`U.S. Patent No. 10,972,584
`________________________________
`
`PETITIONER’S NOTICE RANKING PETITIONS
`
`
`
`
`
`
`
`
`
`Petitioner Roku, Inc. (“Petitioner” or “Roku”) concurrently filed four petitions
`
`against U.S. Patent 10,972,584 (the “’584 Patent”), which has 99 claims. Per the
`
`Trial Practice Guide (“TPG”), Petitioner submits this Notice including (1) a ranking
`
`of the petitions in order in which Petitioner wishes the Board to consider the merits,
`
`and (2) a succinct explanation of the differences between the petitions, why the
`
`issues addressed by the differences are material, and why the Board should use its
`
`discretion to institute all of the petitions if it identifies one petition that satisfies
`
`Petitioner’s burden under 35 U.S.C. §314(a).
`
`
`
`Although all of the petitions are meritorious and justified, Petitioner requests
`
`that the Board consider the Petitions according to the following ranking:
`
`Rank Petition
`
`Prior Art References
`Petitioner Relies On
`Primary Reference: Ozawa
`
`Secondary References: Prabhu and
`Lyle
`Primary Reference: Ozawa
`
`Secondary References: Prabhu, Spies,
`Boebert, and Swix
`Primary Reference: Alger
`
`Secondary References: Lyle and
`Connelly
`Primary Reference: Alger
`
`Secondary References: Lyle, Halbert,
`and Dowling
`
`1
`
`Claims
`Challenged
`1-16, 22-24, 36-
`53, 58, 70-84,
`and 90-92
`
`IPR2022-
`01551
`(Petition 1)
`
`IPR2022-
`01552
`(Petition 2)
`
`17-21, 25-35,
`54-57, 59-69,
`85-89, and 93-99
`
`IPR2022-
`01553
`(Petition 3)
`
`1-16, 22-24, 36-
`53, 58, 70-84,
`and 90-92
`
`IPR2022-
`01554
`(Petition 4)
`
`17-21, 25-35,
`54-57, 59-69,
`85-89, and 93-99
`
`1
`
`2
`
`3
`
`4
`
`
`
`
`
`
`
`
`
`
`
`The material differences between the petitions warrant institution of all of
`
`them. The four petitions are divided by claims challenged, art area, and prior art
`
`date. First, because the ’584 Patent has 99 claims, multiple petitions were needed to
`
`challenge different groups of claims. Specifically, Petitions 1 and 3 each challenge
`
`56 claims related to device-terminal communications, and Petitions 2 and 4 each
`
`challenge 43 claims related to device-network communications.
`
`
`
`Second, the petitions proceed on different primary references from different
`
`art areas. Specifically, Petitions 1 and 2 rely on Ozawa from the set-top box
`
`(“STB”) art, and Petitions 3 and 4 rely on Alger from the personal digital assistant
`
`(“PDA”) art. The STB and PDA petitions rely on different secondary references,
`
`except for one reference, Lyle.
`
`
`
`Patent Owner IOENGINE, LLC (“Patent Owner”) has asserted all 99 claims
`
`(the “Challenged Claims”) against Petitioner in co-pending litigation, IOENGINE,
`
`LLC v. Roku Inc., No. 6:21-cv-1296 (W.D. Tex.). Patent Owner has alleged in
`
`Preliminary Infringement Contentions that many different Roku products are
`
`“portable device[s]” per Claim 1 because these products communicate with a
`
`communications network (Internet) to access media content and display that
`
`content on a TV. EX1310, pp.8-13, 23-28. If all of these different Roku products
`
`are each a “portable device” as urged by Patent Owner, then the STB art cited in
`
`Petitions 1 and 2 render the Challenged Claims unpatentable as they too
`
`
`
`2
`
`
`
`communicate with a communications network (Internet) to access media content
`
`and display that content on a TV.
`
`
`
`Patent Owner has broadly interpreted the Challenged Claims for purposes of
`
`infringement and these infringement theories affirm Petitioner’s assertions as to
`
`how the STB art cited in Petitions 1 and 2 render the Challenged Claims
`
`unpatentable. However, based on discovery in the litigation, it appears that Patent
`
`Owner will argue that the Roku products accused of infringement are different than
`
`STBs and STBs are not relevant to the unpatentability of the Challenged Claims.
`
`Despite the complete inconsistency with Patent Owner’s position, the PDA art
`
`cited in Petitions 3 and 4 also render the Challenged Claims unpatentable. Alger’s
`
`PDA is plainly a “portable device.” The ’584 Patent itself discloses “PDAs . . . are
`
`considered among the smallest portable computing solution.” EX1301, 2:43-46.
`
`
`
`Further, the ’584 Patent has an asserted priority date of March 23, 2004, but
`
`in the litigation Patent Owner has alleged a conception date as early as June 26,
`
`2001. The secondary references in the petitions have different dates to account for
`
`Patent Owner’s potential antedating arguments (Prabhu, Spies, Boebert, and Swix
`
`in Petitions 1 or 2 vs. Lyle, Connelly, Halbert, and Dowling in Petitions 1, 3, or 4).
`
`
`
`Given the material differences between the four petitions, and to prevent
`
`Patent Owner from asserting the ’584 Patent against Petitioner without the Office
`
`ever considering the applicability of STB art to the Challenged Claims, the Board
`
`
`
`3
`
`
`
`should use its discretion to institute all of them. That is, the STB art in Petitions 1
`
`and 2 and the PDA art in Petitions 3 and 4 was not disclosed, cited, or considered
`
`during prosecution. The prior art in the petitions is materially different from and
`
`not cumulative to the prior art considered by the Examiner.
`
`
`
`
`
`In view of the number and relative detail of the Challenged Claims (Claim 1
`
`is 373 words), Patent Owner’s potential arguments about STBs, and Patent
`
`Owner’s potential antedating arguments, four petitions are needed to fully
`
`elaborate the obviousness grounds based on the STB art in Petitions 1 and 2 and
`
`the PDA art in Petitions 3 and 4. The Petitions are not redundant, duplicative, or
`
`substantially similar. Rather, each Petition presents compelling evidence of
`
`obviousness, without repeating the same theory or points.
`
`The litigation history of the ’584 Patent’s family also supports institution of
`
`all of the petitions. Patent Owner is a serial litigant and has asserted patents in the
`
`’584 Patent family against other defendants. But the Board has found that many
`
`claims of ’584 Patent family members are unpatentable. IPR2019-00879 (19
`
`claims of ’969 Patent unpatentable); IPR2019-00929 (53 claims of ’703 Patent
`
`unpatentable).1 The U.S. District Court for the District of Delaware has also
`
`
`1 The Board’s judgments in IPR2019-00879 and IPR2019-00929 are pending on
`
`appeal in IOENGINE, LLC v. Ingenico Inc., Case Nos. 21-1227, -1331, -1332, -
`
`
`
`4
`
`
`
`invalidated claims of the ’969 Patent or ’703 Patent. Ingenico Inc. v. IOENGINE,
`
`LLC, No. 18-cv-826, D.I. 506 (D. Del. July 25, 2022). Petitioner submits that each
`
`Petition provides a strong showing of unpatentability of the Challenged Claims.
`
`
`
`The Board should exercise its discretion under §314(a) to institute. The first
`
`five General Plastic factors weigh in favor of institution because Petitioner filed
`
`the petitions for the first time and on the same day. Intex Recreation Corp. v.
`
`Team Worldwide Corp., IPR2018-00874, Paper 14 at 9-12 (PTAB Oct. 29, 2018)
`
`(five petitions); see also Flex Logix Techs., Inc. v. Venkat Konda, IPR2020-00261,
`
`Paper 22 at 22-24 (PTAB Aug. 3, 2020). As to the sixth and seventh factors, the
`
`grounds asserted in the petitions involve only two primary references, and the
`
`Board’s resources will not be tasked to a degree that the final written decisions will
`
`not be timely completed. Intex, IPR2018-00874, at 11.
`
`
`
`For the foregoing reasons, Petitioner respectfully requests that the Board
`
`institute all four petitions. If the Board decides to institute one petition per each
`
`Challenged Claim, Petitioner requests that the Board institute Petitions 1 and 2.
`
`
`
`
`
`
`1375, and -1376 (Fed. Cir.). Patent Owner took over 240 days of extension of time
`
`to file its opening brief. EFC No. 23, 26, 45, 47, 50.
`
`
`
`5
`
`
`
`
`By: /James L. Lovsin/
`
`
`
`
`James L. Lovsin, Lead Counsel
`Reg. No. 69,550
`
`Counsel for Petitioner Roku, Inc.
`
`
`Dated: September 19, 2022
`
`Respectfully Submitted,
`
`
`
`
`
`
`
`
`
`
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies on this September 19, 2022, that a true and
`
`
`
`correct copies of the foregoing NOTICE RANKING PETITIONS was served in
`
`their entirety on the following party via FedEx Express® or Express Mail:
`
`
`
`
`
`
`
`
`
`
`
`
`
`Correspondence Address:
`Mark Koffsky
`Koffsky Schwalb LLC
`500 Seventh Avenue
`8th Floor
`New York NY 10018
`
`
`
`Dated: September 19, 2022
`
`
`
`
`By: /James L. Lovsin/
`
`
`
`
`James L. Lovsin, Lead Counsel
`Reg. No. 69,550
`
`Counsel for Petitioner Roku, Inc.
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
