Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 10
`Date: May 4, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_______________
`
`IPR2023-00130
`Patent 7,116,710 B1
`_______________
`
`
`
`Before KEN B. BARRETT, JOHN A. HUDALLA, and AMBER L. HAGY,
`Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`

`

`IPR2023-00130
`Patent 7,116,710 B1
`
`
`INTRODUCTION
`I.
`A. Background and Summary
`Samsung Electronics Co., Ltd. (“Petitioner”) filed a Petition
`requesting inter partes review of claims 11–17 and 19–33 of U.S. Patent No.
`7,116,710 B1 (“the ’710 patent,” Ex. 1001). Paper 1 (“Pet.”). California
`Institute of Technology (“Patent Owner”) filed a preliminary response to the
`Petition. Paper 7 (“Prelim. Resp.”). With our authorization, Petitioner filed
`a Preliminary Reply (Paper 8, “Pet. Reply”) and Patent Owner filed a
`Preliminary Sur-reply (Paper 9, “PO Sur-reply”) directed to the issue of
`discretionary denial under 35 U.S.C. § 314.
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). The
`standard for instituting an inter partes review is set forth in 35 U.S.C.
`§ 314(a), which provides that an inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” For the
`reasons explained below, we decline to institute an inter partes review of the
`’710 patent.
`
`B. Real Parties in Interest
`The parties each identify themselves as the real parties in interest.
`Pet. 1; Paper 5, 1.
`
`C. Related Matters
`As required by 37 C.F.R. § 42.8(b)(2), the parties identify the
`following related matters (Pet. 1–2; Paper 5, 1–2):
`Cal. Inst. of Tech. v. Samsung Elecs. Co., No. 2-21-cv-00446 (E.D.
`Tex. filed Dec. 3, 2021) (“the Underlying Litigation”);
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`2
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`IPR2023-00130
`Patent 7,116,710 B1
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`Cal. Inst. of Tech. v. Microsoft Corp., No. 6-21-cv-00276 (W.D. Tex.
`filed Mar. 19, 2021);
`Cal. Inst. of Tech. v. HP Inc. f/k/a/ Hewlett-Packard Co., No. 6-20-cv-
`01041 (W.D. Tex. filed Nov. 11, 2020);
`Cal. Inst. of Tech. v. Dell Techs. Inc., No. 6-20-cv-01042 (W.D. Tex.
`filed Nov. 11, 2020);
`Cal. Inst. of Tech. v. Broadcom Ltd., No. 2:16-cv-03714 (C.D. Cal.
`filed May 26, 2016);
`Cal. Inst. of Tech. v. Hughes Commc’ns, Inc., No. 2:15-cv-01108
`(C.D. Cal. filed Feb. 17, 2015); and
`Cal. Inst. of Tech. v. Hughes Commc’ns, Inc., 2:13-cv-07245 (C.D.
`Cal. filed Oct. 1, 2013).
`The ’710 patent was previously the subject of five inter partes
`reviews identified by the parties (Pet. 2; Paper 5, 2–3): IPR2015-00067
`(“067 IPR”), IPR2017-00068 (“068 IPR”), IPR2017-00210 (“210 IPR”),
`IPR2017-00211 (“211 IPR”), and IPR2017-00219 (“219 IPR”). In the Final
`Written Decisions from the 210 and 219 IPRs, the Board determined that
`claims 1–8, 10–17, and 19–33 of the ’710 patent were not shown to be
`unpatentable over “Frey,” “Divsalar,” and “Luby” (for the 210 IPR) and
`“Divsalar,” “Luby,” and “Luby97” (for the 219 IPR). None of those
`references are at issue in this proceeding.
`Patent Owner also identifies the following prior inter partes review
`proceedings for patents related to the ’710 patent (Paper 5, 2–3):
`IPR2015-00059, IPR2015-00060, IPR2015-00061, IPR2015-00067,
`IPR2015-00068, IPR2015-00081, IPR2017-00297, IPR2017-00423,
`
`3
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`IPR2023-00130
`Patent 7,116,710 B1
`
`IPR2017-00700, IPR2017-00701, IPR2017-00702, IPR2017-00703, and
`IPR2017-00728.
`We additionally identify the following co-pending inter partes review
`proceedings between the parties: IPR2023-00131, IPR2023-00133, and
`IPR2023-00137.
`
`D. The ’710 Patent
`The ’710 patent describes the serial concatenation of interleaved
`convolutional codes forming turbo-like codes. Ex. 1001, code (54). It
`explains some of the prior art with reference to its Fig. 1, reproduced below.
`
`
`Figure 1 is a schematic diagram of a prior “turbo code” system. Id. at 2:14–
`15. The ’710 patent specification describes Figure 1 as follows:
`A standard turbo coder 100 is shown in FIG. 1. A block of k
`information bits is input directly to a first coder 102. A k bit
`interleaver 106 also receives the k bits and interleaves them
`prior to applying them to a second coder 104. The second coder
`produces an output that has more bits than its input, that is, it is a
`coder with rate that is less than 1. The coders 102,104
`are typically recursive convolutional coders.
`
`4
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`IPR2023-00130
`Patent 7,116,710 B1
`
`
`Three different items are sent over the channel 150: the
`original k bits, first encoded bits 110, and second encoded bits
`112. At the decoding end, two decoders are used: a first
`constituent decoder 160 and a second constituent decoder 162.
`Each receives both the original k bits, and one of the encoded
`portions 110, 112. Each decoder sends likelihood estimates of
`the decoded bits to the other decoders. The estimates are used to
`decode the uncoded information bits as corrupted by the noisy
`channel.
`Id. at 1:38–53 (emphasis omitted).
`A coder 200, according to a first embodiment of the invention, is
`described with respect to Figure 2, reproduced below.
`
`
`
`Figure 2 of the ’710 patent is a schematic diagram of coder 200. Id. at 2:16–
`17.
`
`The specification states that “coder 200 may include an outer coder
`202, an interleaver 204, and inner coder 206.” Id. at 2:34–35. It further
`states as follows:
`The outer coder 202 receives uncoded data. The data may be
`partitioned into blocks of fixed size, say k bits. The outer coder
`may be an (n,k) binary linear block coder, where n>k. The
`coder accepts as input a block u of k data bits and produces an
`output block v of n data bits. The mathematical relationship
`
`5
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`IPR2023-00130
`Patent 7,116,710 B1
`
`between u and v is v=T0u, where T0 is an n×k matrix, and the
`rate[1] of the coder is k/n.
`The rate of the coder may be irregular, that is, the value
`of T0 is not constant, and may differ for sub-blocks of bits in the
`data block. In an embodiment, the outer coder 202 is a repeater
`that repeats the k bits in a block a number of times q to produce
`a block with n bits, where n=qk. Since the repeater has an
`irregular output, different bits in the block may be repeated a
`different number of times. For example, a fraction of the bits in
`the block may be repeated two times, a fraction of bits may be
`repeated three times, and the remainder of bits may be repeated
`four times. These fractions define a degree sequence, or degree
`profile, of the code.
`The inner coder 206 may be a linear rate-1 coder, which
`means that then-bit output block x can be written as x=TIw,
`where TI is a nonsingular n×n matrix. The inner coder 210 can
`have a rate that is close to 1, e.g., within 50%, more preferably
`10% and perhaps even more preferably within 1% of 1.
`Id. at 2:41–64 (emphasis omitted). Codes characterized by a regular repeat
`of message bits into a resulting codeword are referred to as “regular repeat,”
`whereas codes characterized by irregular repeat of message bits into a
`resulting codeword are referred to as “irregular repeat.” The second
`(“inner”) encoder 206 performs an “accumulate” function. Thus, the two
`step encoding process illustrated in Figure 2, including a first encoding
`(“outer encoding”) followed by a second encoding (“inner encoding”),
`results in either a “regular repeat accumulate” (“RRA”) code or an “irregular
`repeat accumulate (“IRA”) code, depending upon whether the repetition in
`the first encoding is regular or irregular.
`
`
`1 We understand that the “rate” of an encoder refers to the ratio of the
`number of input bits to the number of resulting encoded output bits related to
`those input bits.
`
`6
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`IPR2023-00130
`Patent 7,116,710 B1
`
`Figure 4 of the ’710 patent, reproduced below, shows an alternative
`embodiment in which the first encoding is carried out by a low-density
`generator matrix.
`
`
`
`Figure 4 of the ’710 patent is a schematic of an irregular repeat and
`accumulate coder using a low-density generator matrix (LDGM)2 coder. Id.
`at 2:20–21, 3:25. The LDGM coder “performs an irregular repeat of the k
`bits in the block, as shown in FIG. 4.” Id. at 3:52–54. LDGM codes are a
`special class of low-density parity check codes that allow for less encoding
`and decoding complexity. LDGM codes are systematic linear codes
`generated by a “sparse” generator matrix. No interleaver (as in the Figure 2
`embodiment) is required in the Figure 4 embodiment because the LDGM
`provides scrambling otherwise provided by the interleaver.
`
`
`
`
`2 A “generator” matrix (typically referred to by “G”) is used to create
`(generate) codewords. A parity check matrix (typically referred to by “H”)
`is used to decode a received message.
`
`7
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`

`IPR2023-00130
`Patent 7,116,710 B1
`
`
`E. Challenged Claims
`Claims 11–17 and 19–33 are challenged. Of the challenged claims,
`claims 11, 15, and 25 are independent.
`Claim 11 recites:
`11. A method of encoding a signal, comprising:
`receiving a block of data in the signal to be encoded, the data
`block including a plurality of bits;
`first encoding the data block such that each bit in the data block
`is repeated and two or more of said plurality of bits are
`repeated a different number of times in order to form a first
`encoded data block; and
`second encoding the first encoded data block in such a way that
`bits in the first encoded data block are accumulated.
`Ex. 1001, 7:49–59. Claims 12–14 depend from claim 11. Id. at 7:60–65.
`Independent claim 15 recites:
`15. A coder comprising:
`a first coder having an input configured to receive a stream of
`bits, said first coder operative to repeat said stream of bits
`irregularly and scramble the repeated bits; and
`a second coder operative to further encode bits output from the
`first coder at a rate within 10% of one.
`Id. at 8:1–7. Challenged claims 16, 17, and 19–24 depend from claim
`15. Id. at 8:7–15, 8:19–31.
`
`Independent claim 25 recites:
`25. A coding system comprising:
`a first coder having an input configured to receive a stream of
`bits, said first coder operative to repeat said stream of bits
`irregularly and scramble the repeated bits;
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`8
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`IPR2023-00130
`Patent 7,116,710 B1
`
`a second coder operative to further encode bits output from the
`first coder at a rate within 10% of one in order to form an
`encoded data stream; and
`a decoder operative to receive the encoded data stream and
`decode the encoded data stream using an iterative decoding
`technique.
`Id. at 8:32–41. Challenged claims 26–33 depend from claim 25. Id.
`at 8:42–63.
`
`F. Prior Art and Asserted Grounds of Unpatentability
`Petitioner asserts that claims 11–17 and 19–33 are unpatentable on the
`following grounds:3
`
`Claims Challenged
`11, 12, 14–17, 19, 21,
`22, 24–27, 29, 32, 33
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`102(e)
`
`Kobayashi4
`
`13, 16, 17, 20, 23, 28
`
`103(a)
`
`Kobayashi
`
`13, 20, 25–33
`
`103(a)
`
`Kobayashi, McEliece5
`
`
`3 For purposes of this Decision, we assume the claims at issue have an
`effective filing date not later than March 16, 2013, the effective date of
`certain amendments in the Leahy-Smith America Invents Act, Pub. L. No.
`112-29, 125 Stat. 284 (2011) (“AIA”), and we apply the pre-AIA versions of
`35 U.S.C. §§ 102 and 103.
`4 Kobayashi et al., U.S. Pat. No. 6,029,264, filed Apr. 28, 1997, issued
`Feb. 22, 2000 (Ex. 1005, “Kobayashi”).
`5 McEliece et al., Turbo Decoding as an Instance of Pearl’s “Belief
`Propagation” Algorithm, 16 IEEE J. ON SELECTED AREAS IN COMM. 140
`(Feb. 1998) (Ex. 1006, “McEliece”).
`
`9
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`IPR2023-00130
`Patent 7,116,710 B1
`
`As further support, Petitioner offers the Declaration of Matthew C.
`Valenti, Ph.D. Ex. 1002.
`
`
`II. ANALYSIS
`A. Principles of Law
`A claim is anticipated if a single prior art reference either expressly or
`inherently discloses every limitation of the claim. Orion IP, LLC v. Hyundai
`Motor Am., 605 F.3d 967, 975 (Fed. Cir. 2010). Although the elements must
`be arranged or combined in the same way as in the claim, “the reference
`need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not
`required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citing In re
`Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990)).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`evidence of nonobviousness.6 Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`
`
`6 No evidence of secondary considerations is before us, and, therefore,
`secondary considerations do not constitute part of our analysis herein.
`
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`IPR2023-00130
`Patent 7,116,710 B1
`
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden of persuasion never
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`inter partes review).
`B. Level of Ordinary Skill in the Art
`The level of skill in the art is a factual determination that provides a
`primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v.
`VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383
`U.S. at 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718
`(Fed. Cir. 1991)).
`Relying on the declaration testimony of Dr. Valenti, Petitioner asserts
`a person of ordinary skill in the art of the ’710 patent “would have had a
`Ph.D. in mathematics, electrical or computer engineering, or computer
`science with an emphasis in signal processing, communications, or coding,
`or a master’s degree in the above areas with at least three years of work
`experience in the field at the time of the alleged invention.” Pet. 5 (citing
`Ex. 1002 ¶¶ 21–22). Petitioner further states that “[a]dditional education
`would compensate for less experience, and vice versa.” Id.
`Patent Owner does not offer a different assessment.
`To the extent necessary, and for purposes of this Decision, we adopt
`the definition offered by Petitioner, as it is consistent with the teachings of
`
`11
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`

`IPR2023-00130
`Patent 7,116,710 B1
`
`the ’710 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect
`an appropriate level of skill in the art).
`C. Claim Construction
`In interpreting the claims of the ’710 patent, we “us[e] the same claim
`construction standard that would be used to construe the claim[s] in a civil
`action under 35 U.S.C. [§] 282(b).” See 37 C.F.R. § 42.100(b) (2022). The
`claim construction standard includes construing claims in accordance with
`the ordinary and customary meaning of such claims as would have been
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303,
`1312–14 (Fed. Cir. 2005) (en banc).
`Petitioner proposes that the term “repeat,” as recited in claims 11, 15,
`16, 25, and 26, should be construed to mean “generation of additional bits,
`where generation can include, for example, duplication or reuse of bits.”
`Pet. 8. As support, Petitioner notes that this construction was adopted by the
`District Court in California Institute of Technology v. Broadcom Ltd., and
`affirmed by the Federal Circuit. California Inst. of Tech v. Broadcom Ltd.,
`25 F.4th 976, 986 (Fed. Cir. 2022).7 Petitioner states that, in affirming this
`construction, “the Federal Circuit agreed with the district court and [Patent
`Owner] that the claims simply require bits to be repeated and do not limit
`how the duplicate bits are created or stored in memory.” Pet. 8. Petitioner
`also states that “the Federal Circuit found that simply passing an input bit
`
`
`7 Subsequent to the parties’ main briefing, the District Court in the
`Underlying Litigation adopted this same construction. Ex. 1019, 21.
`
`12
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`

`IPR2023-00130
`Patent 7,116,710 B1
`
`through an AND gate (when the other input was ‘1’) was ‘repeating’ within
`the context of the asserted claims.” Id. (citing Broadcom, 25 F.4th at 986–
`88).
`
`Patent Owner does not offer a different construction, nor does Patent
`Owner dispute this construction. Prelim. Resp. 3. Patent Owner does,
`however, take issue with Petitioner’s application of this construction,
`asserting that Petitioner is “mischaracterize[ing] the Federal Circuit’s
`construction” and “extend[ing] this construction in an unreasonable way.”
`Id. We address Patent Owner’s arguments infra in connection with our
`assessment of the strength of Petitioner’s showing for purposes of
`institution.
`Consistent with the court in the Underlying Litigation, we adopt the
`construction of “repeat,” as proposed by Petitioner and not disputed by
`Patent Owner, as meaning “generation of additional bits, where generation
`can include, for example, duplication or reuse of bits.”
`We otherwise determine that no other claim term requires express
`interpretation at this time. See Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`D. Discretionary Denial Under 35 U.S.C. § 314
`In view of co-pending district court litigation, our disposition of this
`case turns on the issue of discretionary denial. Patent Owner contends we
`should exercise our discretion to deny institution under 35 U.S.C. § 314(a).
`Prelim. Resp. 36–50; PO Sur-reply 1–3. Petitioner contends that we should
`not deny institution based on discretionary factors. Pet. 63–71; Pet. Reply
`1–3.
`
`13
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`IPR2023-00130
`Patent 7,116,710 B1
`
`Institution of inter partes review is discretionary. SAS Inst. Inc. v.
`Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director
`with discretion on the question whether to institute review . . . .” (emphasis
`omitted); Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 273 (2016)
`(“[T]he agency’s decision to deny a petition is a matter committed to the
`Patent Office’s discretion.”); Harmonic, 815 F.3d at 1367 (“[T]he [Office] is
`permitted, but never compelled, to institute an [inter partes review]
`proceeding.”).
`In Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20,
`2020) (precedential) (“Fintiv”), the Board discussed potential applications of
`NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8
`(PTAB Sept. 12, 2018) (precedential) (“NHK”), as well as a number of other
`cases dealing with discretionary denial under § 314(a). Fintiv identifies a
`non-exclusive list of factors parties may consider addressing, particularly
`where there is a related, parallel district court action and whether such action
`provides any basis for discretionary denial. Fintiv, Paper 11 at 5–16. Those
`factors include:
`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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`IPR2023-00130
`Patent 7,116,710 B1
`
`6. other circumstances that impact the Board’s exercise of discretion,
`including the merits.
`Id. at 5–6.
`Our analysis of the Fintiv factors is guided by the USPTO Director’s
`Memorandum issued on June 21, 2022, titled “Interim Procedure for
`Discretionary Denials in AIA Post Grant Proceedings with Parallel District
`Court Litigation” (“Interim Procedure”)8, which provides several
`clarifications to the application of the Fintiv factors when there is parallel
`litigation. Interim Procedure 2; see also CommScope Techs. LLC v. Dali
`Wireless, Inc., IPR2022-01242, Paper 23 (PTAB Feb. 27, 2023)
`(precedential) (“CommScope”) (holding that the Board should engage in the
`compelling merits question only if Fintiv factors 1–5 favor discretionary
`denial).
`We now consider these factors to determine whether we should use
`our discretion to deny institution under 35 U.S.C. § 314(a). In evaluating the
`factors, we take a holistic view of whether efficiency and integrity of the
`system are best served by denying or instituting review. Fintiv, Paper 11 at
`6.
`
`1. Stay in the Underlying Litigation
`Under the first Fintiv factor, we consider “whether the court granted a
`stay or evidence exists that one may be granted if a proceeding is instituted.”
`Id. at 6. Patent Owner notes that Petitioner has already filed a motion for a
`stay, and the district court denied the motion. Prelim. Resp. 39–40 (citing
`
`8 Available at https://www.uspto.gov/sites/default/files/documents/
`interim_proc_discretionary_denials_aia_parallel_district_court_litigation_
`memo_20220621_.pdf
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`
`Ex. 2002, 4–5; Ex. 2003). Petitioner argues that it is not precluded from
`filing another motion for a stay if we were to institute inter partes review.
`Pet. Reply 2–3.
`The district court has already denied a motion for a stay, and the
`reasoning in its decision on the motion indicates that the court is unlikely to
`grant a renewed motion. See Ex. 2002, 5–6 (finding that the advanced stage
`of the underlying litigation disfavors a stay and that a stay is unlikely to
`simplify the issues in the underlying litigation). Thus, we find that this
`factor weighs in favor of exercising authority to deny institution. See Fintiv,
`Paper 11 at 6–7.
`2. The Trial Date in the Underlying Litigation
`Under the second Fintiv factor, we consider the “proximity of the
`court’s trial date to the Board’s projected statutory deadline for a final
`written decision.” Fintiv, Paper 11 at 6. Trial in the Underlying Litigation is
`set to start on September 11, 2023. Pet. 65 (citing Ex. 1015, 1); Prelim.
`Resp. 41. Petitioner also notes that, under the time-to-trial statistics for the
`district in which the Underlying Litigation is pending, the trial would be
`expected to start on December 17, 2023. Pet. 65 (citing Ex. 1016, 35). Our
`anticipated one-year statutory deadline for issuing a final written decision in
`this case would be in May 2024.
`Regardless of whether we consider the scheduled trial date or the trial
`date expected based on time-to-trial statistics, the trial in the Underlying
`Litigation would commence several months before the expected date of our
`final written decision. Thus, we find that the second Fintiv factor favors
`exercising authority to deny institution.
`
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`
`3. Investment by the Court and the Parties in the Underlying Litigation
`Under the third Fintiv factor, we consider the “investment in the
`parallel proceeding by the court and the parties” as of the time of the
`institution decision. Fintiv, Paper 11 at 6, 9–10. Both parties acknowledge
`that the court in the Underlying Litigation has already issued a claim
`construction order. Pet. Reply 1; PO Sur-reply 2; see also Ex. 1019 (order).
`In addition, Patent Owner contends that “[b]y the expected May institution
`decision date, substantial pretrial work related to validity will be complete:
`fact discovery will be closed, expert reports will be served, and all
`dispositive motions will be due within a month.” PO Sur-reply 1 (citing
`Ex. 1015, 3).
`Although Petitioner disputes the significance of claim construction to
`our consideration of this factor (see Pet. Reply 1), we find that the advanced
`stage of expert discovery is the most significant fact for our analysis.9 In
`particular, the scheduling order in the Underlying Litigation indicates that
`Petitioner should have already served its opening expert report on validity.
`Ex. 1015, 3. Given that the deadline for rebuttal expert reports is only days
`away (see id.), we also can safely assume that work pertaining to a rebuttal
`expert report on validity is well underway. We consider this work
`
`9 As noted supra Section II.C., the Petition, for the term “repeat,” relies on a
`construction made by the District Court for the Central District of California
`in an earlier proceeding (and affirmed by the Federal Circuit). Pet. 8–9
`(citing Cal. Inst. of Tech. v. Broadcom Ltd., 25 F.4th 976, 986 (Fed. Cir.
`2022)). This construction was also discussed by the parties, and adopted by
`the District Court, in the Underlying Litigation. See Ex. 1019, 19–21. This
`indicates that there has been investment by multiple courts, including the
`court in the Underlying Litigation, that is pertinent to patentability issues
`before us. See Prelim. Resp. 43; PO Sur-reply 2.
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`significant because it relates directly to the merits of the parties’ invalidity
`positions. See Sand Revolution II, LLC v. Continental Intermodal Group –
`Trucking LLC, IPR2019-01393, Paper 24 at 10–11 (PTAB June 16, 2020)
`(informative) (“Sand Revolution”).
`As part of this factor, we additionally consider whether Petitioner
`unreasonably delayed in filing the Petition in this case. See Fintiv, Paper 11
`at 11–12. Patent Owner argues that Petitioner waited approximately
`10 months after Patent Owner filed the Underlying Litigation before
`Petitioner filed the instant Petition.10 Prelim. Resp. 44. Petitioner argues
`that it filed the Petition “just seven months after being served with
`preliminary infringement contentions . . . , which identified the asserted
`claims.” Pet. 67. Petitioner asserts this timing was reasonable given that
`Patent Owner “asserted four patents containing over 90 issued claims.” Id.
`Although Petitioner did file its Petition somewhat late in the statutory period
`and some months after receiving infringement contentions, we do not view
`this timing to be as significant as the advanced stage of case development in
`the Underlying Litigation regarding invalidity.
`Accordingly, on the whole, this factor weighs in favor of exercising
`our authority to deny institution.
`
`
`10 We acknowledge that the timeliness of a petition is measured from the
`date on which a complaint alleging patent infringement is served.
`See 35 U.S.C. § 315(b). In the Underlying Litigation, Petitioner waived the
`service requirement 17 days after the complaint was filed. See Underlying
`Litigation, ECF No. 9. The 17-day difference between filing and waiver of
`service does not impact our analysis.
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`4. Overlap of the Issues
`Under the fourth Fintiv factor, we consider the “overlap between
`issues raised in the petition and in the parallel proceeding.” Fintiv, Paper 11
`at 6. Petitioner stipulates that, if we were to institute inter partes review, it
`would not “pursue invalidity challenges to the ’710 Patent in the parallel
`district court lawsuit that rely on any reference used in the grounds of the
`Petition (Kobayashi and McEliece).” Pet. Reply 1. Patent Owner argues
`that Petitioner can still put forth district court invalidity arguments based on
`references that are “integral to” the asserted grounds, including
`“Lin/Costello and MacKay.” PO Sur-reply 1; see also Prelim. Resp. 46
`(similar argument).
`Petitioner’s stipulation is not as expansive as the stipulation discussed
`in Sotera Wireless Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 13
`(PTAB Dec. 1, 2020) (precedential) (“Sotera”), because Petitioner does not
`relinquish all grounds that it reasonably could have raised in this inter partes
`review.11 Nevertheless, it is broader to some degree than the stipulation
`discussed in Sand Revolution because it precludes Petitioner from relying in
`the district court on any of the same references listed in the statement of the
`grounds in the Petition, and is not limited to only the same grounds. See
`Sand Revolution, Paper 24 at 11–12. We find that Petitioner’s stipulation
`mitigates some concerns of duplicative efforts between the district court and
`the Board. Notwithstanding, the fact that Petitioner’s arguments also rely on
`non-grounds references “Lin/Costello and MacKay,” which are not subject
`
`
`11 As such, Petitioner does not qualify for the treatment described in the
`Interim Procedure for Sotera stipulations. See Interim Procedure at 7–8.
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`to Petitioner’s stipulation, diminishes the impact of Petitioner’s stipulation to
`some extent.
`Accordingly, we find that this factor weighs somewhat against
`exercising our discretion to deny institution.
`5. Whether Petitioner is Unrelated
`to the Defendant in the Underlying Litigation
`Under the fifth Fintiv factor, we consider “whether the petitioner and
`the defendant in the parallel proceeding are the same party.” Fintiv,
`Paper 11 at 6. We determine that the fifth Fintiv factor favors exercising our
`discretion to deny institution because Petitioner, Samsung Electronics Co.,
`Ltd., is a defendant in the Underlying Litigation. See Prelim. Resp. 47;
`Sotera, Paper 12 at 19.
`6. Summary Regarding Fintiv Factors 1–5
`In summary, factors 1–3 and 5 weigh in favor of exercising our
`discretion to deny institution and factor 4 weighs somewhat against
`exercising our discretion to deny institution. Considering these factors as a
`whole, we determine that these factors weigh in favor of exercising our
`discretion to deny institution.
`7. Other Circumstances Including the Merits
`Under the sixth Fintiv factor, we consider “other circumstances that
`impact the Board’s exercise of discretion, including the merits.” Fintiv,
`Paper 11 at 6.
`First, we turn to the merits of the Petition. Because we conclude that
`Fintiv factors 1–5 in this proceeding favor discretionary denial, we consider
`whether the Petition presents a challenge with compelling merits. Interim
`Procedure 4–5. That is, we consider whether the challenges’ “evidence, if
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`unrebutted in trial, would plainly lead to a conclusion that one or more
`claims are unpatentable by a preponderance of the evidence.” Id. at 4.
`“A challenge can only ‘plainly lead to a conclusion that one or more claims
`are unpatentable’ if it is highly likely that the petitioner would prevail with
`respect to at least one challenged claim.” OpenSky Indus., LLC v. VLSI
`Tech. LLC, IPR2021-01064, Paper 102 at 49 (PTAB Oct. 4, 2022)
`(precedential) (quoting Interim Procedure at 4). The “compelling merits”
`standard is a standard higher than that required for institution. CommScope,
`Paper 23 at 3.
`For the reasons given below (infra Section II.E.), we determine that
`Petitioner has not presented a compelling, meritorious challenge to the
`claims of the ’710 patent. Thus, this consideration is neutral as to
`whether we should exercise our discreti