Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 10
`Date: November 7, 2023
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`GOTV STREAMING, LLC,
`Patent Owner.
`____________
`
`IPR2023-00758
`Patent 8,478,245 B2
`____________
`
`
`
`
`Before RICHARD M. LEBOVITZ, BRIAN J. McNAMARA, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`AMUNDSON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 10
`Date: November 7, 2023
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`GOTV STREAMING, LLC,
`Patent Owner.
`____________
`
`IPR2023-00758
`Patent 8,478,245 B2
`____________
`
`
`
`
`Before RICHARD M. LEBOVITZ, BRIAN J. McNAMARA, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`AMUNDSON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`IPR2023-00758
`Patent 8,478,245 B2
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`
`I. INTRODUCTION
`Netflix, Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–33 in U.S. Patent No. 8,478,245 B2 (Exhibit 1001,
`“the ’245 patent”) under 35 U.S.C. §§ 311–319. Paper 2 (“Pet.”). GoTV
`Streaming, LLC (“Patent Owner”) filed a Preliminary Response. Paper 7
`(“Prelim. Resp.”). No further briefing was requested or authorized.
`Under 37 C.F.R. § 42.4(a), we have authority to determine whether
`to institute an inter partes review. We may institute an inter partes review
`only if “the information presented in the petition filed under section 311
`and any response filed under section 313 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). The
`“reasonable likelihood” standard is “a higher standard than mere notice
`pleading” but “lower than the ‘preponderance’ standard to prevail in a final
`written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-
`01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).
`Based on the current record and for the reasons explained below,
`Petitioner has shown that there is a reasonable likelihood that it would
`prevail with respect to at least one of the challenged claims. Thus, we
`institute an inter partes review of claims 1–33 in the ’245 patent on
`all challenges included in the Petition.
`II. BACKGROUND
`A. Real Parties in Interest
`Petitioner identifies the following real parties in interest: Netflix, Inc.
`and Netflix Streaming Services, Inc. Pet. 87. Patent Owner identifies itself
`as the real party in interest. Paper 4, 2. Additionally, “although Patent
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`Owner does not believe Phunware Inc. (‘Phunware’) is a real party-in-
`interest to this proceeding, out of an abundance of caution, Patent Owner
`discloses Phunware.” Id. The parties do not raise any issue about real
`parties in interest.
`
`B. Related Matters
`Petitioner and Patent Owner identify the following civil action as a
`related matter involving the ’245 patent: GoTV Streaming, LLC. v. Netflix,
`Inc., No. 2:22-cv-07556 (C.D. Cal. filed Oct. 17, 2022) (the “California
`case”). Pet. 1, 84 n.18, 87; Paper 4, 2; Prelim. Resp. 53.
`Patent Owner identifies the following Board proceedings as related
`matters:
`
`• Netflix, Inc. v. GoTV Streaming, LLC, IPR2023-00757
`(PTAB filed April 7, 2023) (Patent 8,989,715 B2); and
`• Netflix, Inc. v. GoTV Streaming, LLC, IPR2023-00759
`(PTAB filed April 20, 2023) (Patent 8,103,865 B2).
`
`Paper 4, 2.
`
`C. The ’245 Patent (Exhibit 1001)
`The ’245 patent, titled “Method and System for Rendering Content on
`a Wireless Device,” issued on July 2, 2013, from an application filed on
`August 1, 2007. Ex. 1001, codes (22), (45), (54). The patent states that the
`invention relates to “the field of wireless communication systems” and more
`particularly to “a method and system for rendering applications on a wireless
`device.” Id. at 1:14–17; see id. at code (57).
`The ’245 patent explains that an “increase in the number of wireless
`devices has also increased the demand for various applications to run on
`various wireless devices.” Ex. 1001, 1:27–29; see id. at 5:51–52. Because
`“each wireless device is unique,” however, “each application must be
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`tailored in accordance with the wireless device attributes to fully utilize the
`capabilities of the wireless device.” Id. at 1:40–43; see id. at 5:52–54. For
`instance, “to utilize the entire display of the wireless device, the application
`must be tailored to render the application in accordance with the display size
`and resolution of the wireless device.” Id. at 1:43–46. But tailoring “each
`application to a given wireless device type has increased the cost of
`developing applications.” Id. at 1:48–50.
`The ’245 patent identifies a need to “not only relieve software vendors
`from tailoring their applications for a given wireless device type but to
`provide an output that is device specific based on the wireless device
`attributes where the output is generated from a generic application.”
`Ex. 1001, 2:25–29. According to the patent, embodiments of the invention
`“relieve software vendors from tailoring their applications based on each
`wireless device type because the server tailors the output of a generic
`application based on the wireless device capability.” Id. at 2:36–39,
`5:54–58; see id. at 4:19–23, 6:38–41, 20:12–22.
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`The ’245 patent’s Figure 1A (reproduced below) depicts an exemplary
`communication system according to an embodiment of the invention:
`
`
`Figure 1A illustrates “an exemplary communication system 100A” including
`wireless devices 110 coupled through network 120 to server 130. Ex. 1001,
`5:65–6:3, Fig. 1A. A wireless device 110 includes a software program or
`“client” that, among other things, “sends user input and other data to”
`server 130 for processing. Id. at 6:15–17, 6:20–24; see id. at 7:41–42,
`7:53–57.
`Server 130 “executes a generic application” in that “it is not specific
`to any device or any set of device capabilities.” Ex. 1001, 6:10–13.
`Server 130 “translate[s] the output of the application to a device specific set
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`of commands for transmission to the device 110 for rendering,” thereby
`“tailoring the output of the generic application based on the wireless device
`type.” Id. at 6:13–15, 6:28–31.
`For example, server 130 provides a “series of basic commands,
`precompiled and ready for audio and video rendering by the wireless
`device.” Ex. 1001, 6:31–33; see id. at 13:15–19, 16:1–4, 20:1–2, Fig. 7
`(step 780). The “basic commands are discrete low level rendering
`commands” for the wireless device and specify “page layout information”
`for “display and audio rendering” at the wireless device. Id. at 6:33–35,
`13:22–25; see id. at 2:47–50, 3:63–65, 16:63–64, 17:66–18:3, 18:12–13,
`19:63–64. The “basic commands are written in a device independent syntax
`but tailored based on the wireless device rendering capability” such that
`“the parameters of the basic commands are based on the wireless device
`capability.” Id. at 7:46–48, 18:59–62; see id. at 10:67–11:3, 13:19–22,
`18:8–12, 19:65–67.
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`The ’245 patent’s Figure 1B (reproduced below) depicts an exemplary
`wireless device protocol stack:
`
`
`
`Figure 1B illustrates “an exemplary wireless device protocol or software
`stack 100B” including the following components:
`• “a hardware component 102”;
`• “a binary runtime for wireless device (BREW) and/or
`Java platform (J2ME) J2ME/BREW 104”;
`• “an abstraction layer 106”;
`• “a graphical user interface 108”;
`• “a configuration data 112”; and
`• “a reader/engine 114.”
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`Ex. 1001, 6:49–56, Fig. 1B. In one embodiment, “the graphical user
`interface 108, abstraction layer 106, J2ME/BREW 104 and the hardware
`layer 102 are device specific,” while “the engine/reader 114 and the
`configuration data 112 may be device generic in terms of the syntax they
`use to operate.” Id. at 6:56–61, Fig. 1B.
`As Figure 1B shows, graphical user interface 108 includes “a number
`of individual rendering blocks 108a that perform discrete rendering
`operations to render a received page description” provided by server 130.
`Ex. 1001, 7:21–23, Fig. 1B; see id. at 3:31–43. Examples of rendering
`blocks 108a include “an edit box for entering text, static text for displaying
`text, an image, a pop-up menu which may appear in response to a user
`interaction, a drop-down menu list,” “sound for controlling audio,” “video to
`display a video with visual control panel,” a “check box/radio button to
`enable selection/de-selection of items,” “a table for displaying data in a
`tabular form,” and “a calendar for displaying and enabling selection/de-
`selection of a date.” Id. at 8:27–43; see id. at 8:46–10:57.
`Configuration data 112 “may be a set of low level instructions”
`programmed into rendering blocks 108a that cause “the graphical user
`interface to operate and render data (e.g., ‘look’) a certain way.” Ex. 1001,
`7:62–66, 8:21–22; see id. at 10:58–60, 18:41–43. Configuration data 112
`“may include text fonts, text colors, background colors, background images,
`border thickness, border colors,” and images, e.g., images of icons. Id.
`at 8:6–17; see id. at 8:46–10:57, 12:66–13:8. The ’245 patent uses the terms
`“configuration data” and “custom configuration” interchangeably. Id.
`at 8:3–5.
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`Engine/reader 114 communicates with server 130 via “a device
`generic syntax to read the basic commands of a page description.” Ex. 1001,
`7:35–37. Engine/reader 114 may send the following information to
`server 130:
`(1)
`
`“a message that includes a request to access a generic
`application as well as the identification of the wireless
`device type”; and
`“user actions and other state information.”
`(2)
`Id. at 7:37–42. Engine/reader 114 may receive from server 130 “compiled
`content” that “includes a series of basic commands for rendering the
`requested application.” Id. at 7:42–45; see id. at 2:47–50, 10:64–67.
`Engine/reader 114 may receive from graphical user interface 108 “additional
`data” in response to “a user interaction (e.g., selecting an icon) and may
`transmit that data to the server as an event.” Id. at 7:53–57.
`A “page description contains basic commands” that may specify “the
`horizontal and vertical coordinates, the width, the height, the type of
`component to be displayed (e.g., text, image, video, audio and the like),” and
`“the unique identification of the rendering block to be used to render the
`component.” Ex. 1001, 13:26–34. Graphical user interface 108 uses a page
`description obtained from the server to “render the page of the application
`based on the received basic commands and the customized preprogrammed
`plurality of rendering blocks.” Id. at 11:3–5; see id. at 18:63–19:4, Fig. 6
`(steps 650 and 660).
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`
`The ’245 patent’s Figure 3 (reproduced below) depicts an exemplary
`wireless device:
`
`
`
`Figure 3 illustrates exemplary wireless device 300 including the following
`components coupled to bus 302:
`• volatile memory 310;
`• non-volatile memory 320;
`•
`transceiver 330;
`• button inputs 340;
`• display 350;
`• processor 360;
`• speaker 370; and
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`• microphone 380.
`See Ex. 1001, 15:3–55, Fig. 3.
`Transceiver 330 facilitates “wireless communication with a remote
`server.” Ex. 1001, 15:38–39. For instance, transceiver 330 “may receive a
`series of basic commands from a remote server that may be used to render
`application and/or content on the display 350.” Id. at 15:40–42.
`Button inputs 340 “may be used to navigate a website, enter email
`addresses, enter telephone numbers and the like.” Ex. 1001, 15:45–47.
`Button inputs 340 may include “soft key buttons, a plurality of mechanical
`buttons, a rotating input component, a sliding input component, a voice
`activation component and the like.” Id. at 15:47–50.
`A client on a wireless device may cache “downloaded compiled
`content such that it can be retrieved at a later time.” Ex. 1001, 13:38–40.
`For instance, a client on a wireless device may cache a “displayed page such
`that the client can browse back without having to download the page again”
`when “surfing the Internet.” Id. at 13:40–42. Additionally, “[d]uring the
`user navigation, the client may keep the path history of the user such that the
`user can press the ‘back’ key to go to the previous screen without requesting
`for the page to be downloaded again.” Id. at 14:47–50.
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`The ’245 patent’s Figure 4 (reproduced below) depicts an exemplary
`received compiled page description:
`
`
`
`Figure 4 illustrates “an exemplary received compiled page description 400”
`including a “series of basic commands,” e.g., commands 410, 430, 440,
`and 490. Ex. 1001, 15:56–59, 15:65–67, 18:13–15, Fig. 4. “Each basic
`command may describe a given component on the page of the requested
`application to be rendered.” Id. at 15:59–61. The “series of basic
`commands” in a compiled page description forms “a single unified page
`to be rendered by the wireless device.” Id. at 15:65–67.
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`As an example, “basic command 410 may be a description for
`rendering an image” and with “descriptions for rendering [the] image by
`specifying” (1) “the Cartesian coordinates 412 and 414 of a screen region”
`and (2) “the width 416 and the height 418 of the screen region to include
`[the] image.” Ex. 1001, 15:62–63, 16:4–9. As another example, “basic
`command 430 may be the description for rendering a video clip.” Id.
`at 15:63–64.
`As Figure 4 shows, a basic command may include the following:
`• “an object identifier 420” for an object or renderable
`component, such as an image;
`• “an identification number 422” for the object or
`renderable component; and
`• “an identification of a rendering block 424” to be
`used to render the object or renderable component.
`Ex. 1001, 16:17–25, Fig. 4; see id. at 13:31–32.
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`The ’245 patent’s Figure 5 (reproduced below) depicts an exemplary
`remote server:
`
`
`
`Figure 5 illustrates exemplary remote server 590 including the following
`components:
`• decoding system 520;
`•
`library of applications 530;
`•
`library of configuration data 540;
`•
`template engine 550;
`•
`library of device profiles 560;
`• business logic 570; and
`•
`layout solver 580.
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`See Ex. 1001, 16:32–17:65, Fig. 5.
`When decoding system 520 receives a request from client 510,
`decoding system 520 accesses (1) library of applications 530 to “locate and
`execute the requested application” and (2) library of configuration data 540
`“where each application may have a corresponding custom configuration.”
`Ex. 1001, 16:40–42, 16:51–53; see id. at 19:27–31. Then, decoding
`system 520 sends a message to client 510 “identifying the custom
`configuration.” Id. at 16:54–57; see id. at 19:34–36.
`Template engine 550 receives the following: (1) a generic template
`from either decoding system 520 or library of applications 530 and
`(2) dynamic data from business logic 570. Ex. 1001, 17:4–7, 17:9–11,
`17:18–19, 17:49. Template engine 550 merges the dynamic data and the
`generic template. Id. at 17:7–9; see id. at 3:33–36.
`After merging the dynamic data and the generic template, template
`engine 550 sends a “high level and dynamic template,” e.g., in extensible
`markup language (XML) format, to layout solver 580. Ex. 1001, 17:23–27,
`17:54–55; see id. at 3:36–42. Also, decoding system 520 may send a “static
`page” to layout solver 580. Id. at 16:65–67; see id. at 3:50–52, 17:55–57.
`After receiving a “high level and dynamic template” and/or “static
`page,” layout solver 580 “translates the template and/or static page into
`a series of basic commands based on the device profile and device
`capabilities.” Ex. 1001, 3:56–59, 17:57–60. Layout solver 580 may access
`library of device profiles 560 to determine the device capabilities and then
`tailor the received information based on the device capabilities. Id.
`at 17:61–65; see id. at 3:53–56, 19:50–53, 19:56–59.
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`Server 590 transmits the series of basic commands to “client 510
`for rendering.” Ex. 1001, 18:12–13, 20:1–2. For example, “the basic
`commands are the compiled page description 400” as illustrated in Figure 4.
`Id. at 18:13–15, Fig. 4.
`
`•
`
`•
`
`D. The Challenged Claims
`Petitioner challenges the following claims:
`•
`independent claim 1 for a method of rendering content on
`a wireless device;
`• claims 2–11 that depend directly or indirectly from
`claim 1;
`independent claim 12 for a non-transitory computer-
`readable medium;
`• claims 13–22 that depend directly or indirectly from
`claim 12;
`independent claim 23 for a wireless device operable
`to communicate with a remote server; and
`• claims 24–33 that depend directly from claim 23.
`Pet. 1–2, 24–82.
`Claims 1 and 23 exemplify the challenged claims and read as follows
`(with formatting added for clarity and with bracketed numbers and letters
`added for reference purposes):1
`1. [1pre] A method of rendering content on a wireless
`device, said method comprising:
`[1a] receiving an identification of a custom configuration
`of a plurality of rendering blocks of said wireless device,
`[1b] wherein said custom configuration is
`associated with an application and configures said
`
`1 We use the same numbers and letters that Petitioner uses to identify the
`claim language. See Pet. vi, x–xi (Listing of Challenged Claims).
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`plurality of rendering blocks to render content in a
`manner customized to said application;
`[1c] receiving compiled content generated in part from
`execution of said application
`[1d] wherein said compiled content comprises
`render commands expressed in a syntax that is generic
`to said wireless device;
`[1e] using a graphical user interface comprising said
`plurality of rendering blocks to generate renderable content
`based on said compiled content and said custom configuration;
`and
`
`[1f] rendering said renderable content on said wireless
`device,
`
`wherein said receiving compiled content
`comprises:
`
`receiving first compiled content specific to a
`first page of said application; and
`receiving second compiled content specific
`to a second page of said application,
`[1g] wherein said custom configuration is
`applicable to both said first and second compiled content.
`23. [23pre] A wireless device operable to communicate with
`a remote server, said wireless device comprising:
`[23a] a transceiver coupled to a bus and operable to
`receive a custom configuration that is associated with an
`application,
`
`[23b] said transceiver also operable to receive
`compiled content generated in part from execution of
`said application and
`[23c] comprising a plurality of rendering
`commands expressed in a syntax that is generic to said
`wireless device;
`[23d] a memory coupled to said bus and operable to store
`said compiled content and said custom configuration;
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`[23e] a processor coupled to said bus and operable to
`implement the following: a graphical user interface comprising
`a plurality of rendering blocks and operable to generate
`renderable content based on said compiled content and said
`custom configuration
`[23f] wherein said custom configuration is
`operable to configure said plurality of rendering blocks to
`render content in a manner customized to said
`application; and
`[23g] an engine for reading said compiled content and
`responsive thereto for causing said graphical user interface to
`generate said renderable content based on said render
`commands; and
`[23h] a display device coupled to said bus and operable
`to render a portion of said renderable content,
`wherein said compiled content comprises:
`a first compiled content specific to a first
`page of said application; and
`a second compiled content specific to a
`second page of said application,
`wherein said custom configuration is applicable to
`both said first and second compiled content.
`Ex. 1001, 20:41–64, 22:51–23:15.
`E. The Asserted References
`For its challenge, Petitioner relies on the following references:
`Name
`Reference
`Exhibit
`Hariki US 2007/0150617 A1, published June 28, 2007
`(based on an application filed July 25, 2006)
`Harris US 2003/0023755 A1, published January 30, 2003
`(based on an application filed December 18, 2001)
`
`1006
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`Pet. 2, 24–82. Petitioner asserts that Hariki qualifies as prior art under
`§ 102(a) and that Harris qualifies as prior art under § 102(b). Id. at 2; see
`35 U.S.C. § 102(a)–(b) (2006).2
`At this stage of the proceeding, Patent Owner does not dispute that
`each reference qualifies as prior art. See, e.g., Prelim. Resp. 15–58.
`F. The Asserted Challenge to Patentability
`Petitioner asserts the following challenge to patentability:
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1–20
`103(a)
`Hariki, Harris
`Pet. 2, 24–82.
`
`G. Testimonial Evidence
`To support its challenges, Petitioner relies on the declaration of
`Benjamin B. Bederson, Ph.D. (Exhibit 1002). Dr. Bederson states, “I
`received a B.S. degree in Computer Science with a minor in Electrical
`Engineering in 1986 from the Rensselaer Polytechnic Institute. I received
`M.S. and Ph.D. degrees in Computer Science in 1989 and 1992, both from
`New York University,” and “am currently Professor Emeritus of Computer
`Science at the University of Maryland.” Ex. 1002 ¶¶ 6, 31. Dr. Bederson
`also states, “I have been retained by counsel for Netflix Inc.” and “have been
`asked to opine on whether the ’245 patent is anticipated and/or rendered
`obvious by the prior art.” Id. ¶¶ 1–2.
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`125 Stat. 284 (2011), amended 35 U.S.C. § 102 and § 103 effective
`March 16, 2013. Because the filing date of the challenged claims predates
`the AIA’s amendments to § 102 and § 103, this decision refers to the
`pre-AIA versions of § 102 and § 103.
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`At this stage of the proceeding, Patent Owner provides excerpts
`concerning claim construction from a declaration submitted in the California
`case, but Patent Owner does not introduce testimonial evidence responding
`to Dr. Bederson’s testimony. See Prelim. Resp. 59; Ex. 2015 (Excerpts from
`the Corrected Declaration of Dr. John Villasenor).
`III. DISCRETIONARY DENIAL
`IN VIEW OF PARALLEL LITIGATION
`Under § 314(a), the Director possesses “broad discretion” in deciding
`whether to institute an inter partes review. See 35 U.S.C. § 314(a); Saint
`Regis Mohawk Tribe v. Mylan Pharm. Inc., 896 F.3d 1322, 1327 (Fed. Cir.
`2018). The Director is “permitted, but never compelled,” to institute an inter
`partes review. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367
`(Fed. Cir. 2016). The Board decides whether to institute an inter partes
`review on the Director’s behalf. 37 C.F.R. § 42.4(a) (2023).
`Patent Owner argues that we should exercise our discretion under
`§ 314(a) to deny institution in view of the California case. See Prelim. Resp.
`53–60; supra § II.B. Petitioner argues that we should decline to exercise our
`discretion under § 314(a) to deny institution. See Pet. 83–86. For the
`reasons explained below, we decline to exercise our discretion under
`§ 314(a) to deny institution in view of the California case. See infra
`§§ III.C, V.C.
`
`A. Nonexclusive Factors to Consider
`When deciding whether to exercise discretion under § 314(a) to deny
`institution, the Board has considered the status of litigation involving the
`parties in light of the AIA’s objective “to provide an effective and efficient
`alternative to district court litigation.” NHK Spring Co. v. Intri-Plex Techs.,
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`
`
`(3)
`
`(4)
`
`(2)
`
`IPR2023-00758
`Patent 8,478,245 B2
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`Inc., IPR2018-00752, Paper 8 at 12, 19–20 (PTAB Sept. 12, 2018)
`(precedential). The Board has set forth the following nonexclusive factors to
`consider when determining whether to exercise discretion under § 314(a) to
`deny institution due to the advanced state of parallel litigation:
`(1) whether the court granted a stay or evidence exists that
`one may be granted if the Board institutes a trial;
`the proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision;
`the investment in the parallel litigation by the court and
`the parties;
`the overlap in the issues raised by the petition and the
`issues in the parallel litigation;
`(5) whether the petitioner and the defendant in the parallel
`litigation are the same party; and
`other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20,
`2020) (precedential) (“Fintiv”).
`These factors “relate to 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.” Fintiv, IPR2020-00019, Paper 11 at 6.
`Further, Fintiv instructs the Board to take “a holistic view of whether
`efficiency and integrity of the system are best served by denying
`or instituting review.” Id.; see PTAB Consolidated Trial Practice Guide
`at 55–56, 58 (Nov. 2019) (“CTPG”). 3
`
`(6)
`
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`21
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`IPR2023-00758
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`
`We also follow the Interim Procedure for Discretionary Denials in
`AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21,
`2022) (“Interim Procedure”).4
`
`B. Analysis
`1. FACTOR (1): STAY OF PARALLEL LITIGATION
`Patent Owner asserts that factor (1) favors discretionary denial.
`Prelim. Resp. 53.
`Petitioner asserts that factor (1) is neutral. Pet. 84.
`In the California case, the jury has returned a verdict, and the trial has
`ended. See Ex. 3001. Because the trial in the California case has ended,
`factor (1) favors discretionary denial. See Samsung Bioepis Co. v.
`Regeneron Pharm., Inc., IPR2023-00739, Paper 9 at 55 (PTAB Oct. 20,
`2023) (determining that factor (1) favored discretionary denial due to the
`“trial having already taken place”).
`2. FACTOR (2): TRIAL DATE IN PARALLEL LITIGATION
`For factor (2), the Interim Procedure states as follows:
`Parties may present evidence regarding the most recent
`statistics on median time-to-trial for civil actions in the district
`court in which the parallel litigation resides for the PTAB’s
`consideration. Where the parties rely on time-to-trial statistics,
`the PTAB will also consider additional supporting factors such
`as the number of cases before the judge in the parallel litigation
`and the speed and availability of other case dispositions.
`. . . The PTAB will weigh this factor against exercising
`discretion to deny institution under Fintiv if the median time-to-
`
`
`4 Available at https://www.uspto.gov/sites/default/files/documents/
`interim_proc_discretionary_denials_aia_parallel_district_court_litigation_
`memo_20220621_.pdf.
`
`22
`
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`IPR2023-00758
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`
`
`trial is around the same time or after the projected statutory
`deadline for the PTAB’s final written decision.
`Interim Procedure at 8–9 (footnote omitted).
`Patent Owner asserts that factor (2) favors discretionary denial.
`Prelim. Resp. 54–55.
`Petitioner asserts that factor (2) “weighs against discretionary denial”
`based on median time-to-trial statistics. Pet. 84.
`The Board’s projected statutory deadline for a final written decision
`is November 2024. The trial in the California case has ended. See Ex. 3001.
`Because the trial in the California case has ended, factor (2) favors
`discretionary denial.
`3. FACTOR (3): INVESTMENT IN PARALLEL LITIGATION
`Fintiv instructs the Board to consider “the amount and type of work
`already completed in the parallel litigation by the court and the parties at the
`time of the institution decision.” Fintiv, IPR2020-00019, Paper 11
`(precedential) at 9.
`Patent Owner asserts that factor (3) favors discretionary denial
`because fact and expert discovery have been completed in the California
`case, including depositions of “invalidity experts.” Prelim. Resp. 56 (citing
`Ex. 2014, 1).
`Petitioner asserts that factor (3) “weighs against discretionary denial.”
`Pet. 85. Petitioner asserts that “expert reports have not been prepared on any
`issues” at the time of Petition filing (April 2023). Id. Petitioner also asserts
`that the Petition “comes over six months before petitioner’s bar date.” Id.
`
`23
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`IPR2023-00758
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`Based on the current record, factor (3) favors discretionary denial. At
`“the time of the institution decision,” the trial in the California case has
`ended. See Ex. 3001.
`4. FACTOR (4): OVERLAPPING ISSUES
`Fintiv instructs the Board to consider whether another proceeding
`presents “the same or substantially the same” claims, grounds, arguments,
`evidence, and issues to avoid “redoing the work” of a district court and “the
`possibility of conflicting decisions.” Fintiv, IPR2020-00019, Paper 11
`(precedential) at 12–14; see Interim Procedure at 6.
`The Interim Procedure explains that “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.” Interim Procedure at 3 (citing Sotera
`Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1,
`2020) (precedential as to § II.A)); see id. at 7, 9. The Interim Procedure also
`explains that such a stipulation (a Sotera stipulation) “mitigates concerns of
`potentially conflicting decisions and duplicative efforts between the district
`court and the PTAB.” Id. at 7.
`Patent Owner asserts that factor (4) favors discretionary denial
`because Hariki and Harris are “at issue” in the California case and there is
`“substantial overlap among the proceedings.” Prelim. Resp. 57 & n.15
`(citing Ex. 2015, 7). Patent Owner asserts that Petitioner’s stipulation
`(discussed below) is “less than” a Sotera stipulation that agrees not to raise
`“any grounds that could have reasonably been raised in the petition.” Id.
`at 58. Patent Owner also asserts that Petitioner’s stipulation does not
`
`24
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`IPR2023-00758
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`“mitigate the possibility of duplicative work or the possibility of conflicting
`decisions required to avoid discretionary denials.” Id.
`Petitioner asserts that factor (4) “weighs against discretionary denial”
`because Petitioner “stipulates that it will not pursue the ground identified in
`this Petition before the district court.” Pet. 86 (citing Sand Revolution II,
`LLC v. Cont’l Intermodal Grp.-Trucking LLC, IPR2019-01393, Paper 24
`at 11–12 (PTAB June 16, 2020) (informative)).
`Petitioner’s stipulation falls short of a Sotera stipulation, i.e., a
`stipulation “not to pursue in a parallel district court proceeding the same
`grounds as in the petition or any grounds that could have reasonably been
`raised in the petition.” See Interim Procedure at 7, 9; Sotera, IPR2020-
`01019, Paper 12 at 13–14, 18; Pet. 86. But Petitioner’s stipulation does
`reduce the overlap relating to the challenge presented in the Petition and
`“mitigates to some degree the concerns of duplicative efforts between the
`district court and the Board, as well as concerns of potentially conflicting
`decisions.” See Sand Revolution, IPR2019-01393, Paper 24 at 12.
`For these reasons, factor (4) weighs against discretionary denial. See,
`e.g., Sand Revolution, IPR2019-01393, Paper 24 at 12; Google LLC v.
`Jawbone Innovations, LLC, IPR2022-00649, Paper 13 at 11 (PTAB Oct. 31,
`2022).
`5. FACTOR (5): PETITIONER’S STATUS IN PARALLEL LITIGATION
`“If a petitioner is unrelated to a defendant in an earlier court
`proceeding, the Board has weighed this fact against exercising discretion
`to deny institution.” Fintiv, IPR2020-00019, Paper 11 (precedential)
`at 13–14.
`
`25
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`IPR2023-00758
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`
`The parties do not dispute that Petitioner is the defendant in the
`California case. See Pet. 86; Prelim. Resp. 58. Hence, factor (5) favors
`discretionary denial. See Sotera, IPR2020-01019, Paper 12 at 19 (citing
`Fintiv, IPR2020-00019, Paper 15 (informa
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