`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC,
`Petitioner,
`
`v.
`
`MULTIMEDIA TECHNOLOGIES PTE. LTD.
`Patent Owner
`
`__________________
`
`Case No. IPR2024-00351
`U.S. Patent No. 9,510,040
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
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`

`

`C.
`
`D.
`
`E.
`
`F.
`
`I.
`II.
`
`B.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`THIS PETITION UNDER § 314(a) ................................................................ 2
`A.
`Factor 1: Petitioner has Not Requested a Stay, and would have No
`Authority to Request a Stay in the Vizio Litigation .............................. 5
`Factor 2: The Board’s Final Written Decision Deadline Would
`Likely be After a Trial in the LG Litigation and/or Vizio
`Litigation ............................................................................................... 6
`Factor 3: There Has Been Substantial Investment by the Parties
`and District Court in the LG Litigation and the Vizio Litigation ......... 8
`Factor 4: Petitioner’s Claims Directly Overlap with both Parallel
`Litigations, Despite Petitioner’s Efforts to Obscure this with an
`Ineffective Stipulation ......................................................................... 11
`Factor 5: Petitioner is the Defendant in the LG Litigation, and the
`Vizio Litigation Involves Substantially Similar Issues ....................... 17
`Factor 6: Petitioner Has Not Established Grounds for Review
`under The Statutory Standard, Let Alone the Far Stricter
`“Compelling Merits” Standard ............................................................ 18
`III. OVERVIEW OF THE ’040 PATENT .......................................................... 20
`IV. SUMMARY OF THE REFERENCES ASSERTED IN THE PETITION ... 26
`A. Kim ...................................................................................................... 26
`B.
`Choi ..................................................................................................... 28
`C.
`Lee-1 .................................................................................................... 29
`D.
`Lee-2 .................................................................................................... 29
`LEVEL OF ORDINARY SKILL IN THE ART ........................................... 30
`V.
`VI. CLAIM CONSTRUCTION .......................................................................... 30
`
`
`
`
`
`i
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`
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`

`

`VII. PETITIONER FAILS TO SHOW A REASONABLE LIKELIHOOD OF
`PREVAILING ON ANY CHALLENGED CLAIM ..................................... 30
`A. Ground 1: Kim in view of Lee-1 and Choi Does Not Render
`Obvious Claims 1-5, 11-15, and 21 of the ‘040 Patent ....................... 31
`1.
`Kim in view of Lee-1 and Choi Does Not Disclose a “First
`Content Information” That is Associated with a
`“Highlighted Source” ................................................................ 31
`Combining Kim with Lee-1 or Choi Does Not Render
`Obvious the Claims 1-5, 11-15, and 21 of the ‘040 Patent....... 36
`B. Ground 2: Kim in view of Lee-1, Choi, and Lee-2 Does Not
`Render Obvious Claims 2-3, 6, 12-13, 16, and 22 of the ‘040
`Patent ................................................................................................... 37
`VIII. CONCLUSION .............................................................................................. 37
`
`
`2.
`
`
`
`
`
`ii
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`
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`

`

`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`10X Genomics v. President and Fellows of Harvard College,
`IPR2023-01299, Paper 15 (PTAB Mar. 7, 2024) ..................................... 8, 10, 11
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) ......................................passim
`AviaGames, Inc. v. Skillz Platform, Inc.,
`IPR2022-00530, Paper 14 (PTAB Mar. 2, 2023) ........................................... 4, 19
`BOE Technology Group Co. v. Element Capital Commercial Co.,
`IPR2023-00808, Paper 9 (PTAB Nov. 15, 2023) ............................................... 16
`Boehringer Ingelheim International GMBH v. Biogen Inc.,
`IPR2015-00418, Paper 14 (PTAB July 13, 2015) .............................................. 33
`CommScope Technologies LLC v. Dali Wireless, Inc.,
`IPR2022-01242, Paper 23 (PTAB Feb. 27, 2023) ................................ 3, 4, 18, 19
`Ericsson Inc. and Nokia of America Corp. v. Collision
`Communications, Inc.,
`IPR2022-01233, Paper 12 (PTAB Jan 19, 2023) ............................................... 11
`Mylan Laboratories Ltd. v. Janssen Pharmaceutica NV,
`IPR2020-00440, Paper 17 (PTAB Sept. 16, 2020)................................... 9, 16, 17
`NHK Spring Co. v. Intri-Plex Technologies, Inc.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) ......................................... 2, 5, 7
`NXP USA, Inc. v. IMPINJ, Inc.,
`IPR2021-01556, Paper 13 (PTAB, Sept. 7, 2022) .............................................. 13
`Samsung Elecs. Co. v. Cardware Inc.,
`IPR2023-00314, Paper 11 (PTAB July 18, 2023) ................................................ 7
`Samsung Electronics Co. v. California Institute of Technology,
`IPR2023-00130, Paper 10 (PTAB May 4, 2023) ................................................. 8
`
`
`
`
`
`iii
`
`
`
`

`

`Samsung Electronics Co. v. Mojo Mobility Inc.,
`IPR2023-01098, Paper 11 (PTAB Feb. 9, 2024) ................................................ 10
`Sand Revolution II, LLC v. Continental Intermodal Group - Trucking
`LLC,
`IPR 2019-01393, Paper 24 (PTAB June 16, 2020) ............................................ 15
`Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) ........................................passim
`Village Green Technologies, LLC v. Samsung Electronics, Co.,
`No. 2:22-CV-00099-JRG, 2023 WL 416419 (E.D. Tex. Jan. 25,
`2023) ..................................................................................................................... 6
`Wasica Finance GmbH v. Schrader International, Inc.,
`432 F. Supp. 3d 448 (D. Del. 2020).................................................................... 14
`Wirtgen America, Inc. v. Caterpillar, Inc.,
`No. 1:17-CV-00770-JDW-MPT, 2024 WL 51010 (D. Del. Jan. 4.
`2024) ................................................................................................................... 14
`Statutes
`35 U.S.C. § 314(a) ............................................................................................passim
`Other Authorities
`C.F.R. § 42.104(b)(2) ............................................................................................... 33
`Memorandum, Interim Procedure for Discretionary Denials in AIA
`Post-Grant Proceedings with Parallel District Court Litigation
`(USPTO June 21, 2022) ........................................................................ 3, 7, 13, 16
`
`
`
`
`
`
`
`iv
`
`
`
`

`

`Exhibit No.
`Ex.1001
`
`Petitioner’s Exhibit List
`U.S. Patent No. 9,510,040 to Selim et al.
`
`Ex.1002
`
`Ex.1003
`
`Ex.1004
`
`Ex.1005
`
`Ex.1006
`
`Ex.1007
`
`Ex.1008
`
`Ex.1009
`
`Ex.1010
`
`Ex.1011
`
`Ex.1012
`
`Ex.1013
`
`
`Prosecution History of U.S. 9,510,040
`
`Declaration of Dr. Andrew Lippman under 37 C.F.R. § 1.68
`
`Curriculum Vitae of Dr. Lippman
`
`U.S. Patent Pub. No. 2012/0054794 to Kim et al. (“Kim”)
`
`U.S. Patent No. 9,008,190 to Lee et al. (“Lee-1”)
`
`U.S. Patent Pub. No. 2013/0057764 to Choi et al. (“Choi”)
`
`Infringement Contentions, Appx E_US 9510040
`
`PCMAG Encyclopedia
`
`U.S. Patent No. 9,398,339 to Lee et al. (“Lee-2”)
`
`U.S. Patent Pub. No. 2013/0176415
`
`Microcomputer
`
`Chapter 1, Overview of Microprocessors
`
`Exhibit No.
`2001
`
`Patent Owner’s Exhibits
`Third Amended Docket Control Order, Multimedia Techs. Pte.
`Ltd. v. LG Elecs. Inc. et al., No. 2:22-cv-00494 (E.D. Tex. Jan.
`3, 2024), ECF No. 54
`
`2002
`
`Petition for Inter Partes Review Under 35 U.S.C. § 312 and 37
`C.F.R. § 42.104, Vizio, Inc. v. Multimedia Techs. Pte. Ltd.,
`IPR2024-00696 (PTAB) (filed Mar. 14, 2024)
`
`
`
`
`
`1
`
`
`
`

`

`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`Westlaw Litigation Analytics Report for Hon. Rodney Gilstrap,
`for 3/27/2023 to 3/27/2024
`
`Docket Control Order, Multimedia Techs. Pte. Ltd. v. Vizio,
`Inc., No. 2:23-cv-00124 (E.D. Tex. Aug. 4, 2023), ECF No. 46
`
`Report and Recommendation re: Motion to Dismiss ,
`Multimedia Techs. Pte. Ltd. v. LG Elecs. Inc. et al., No. 2:22-
`cv-00494 (E.D. Tex. Mar. 1, 2024), ECF No. 61
`
`Defendants’ Invalidity Contentions, Multimedia Techs. Pte.
`Ltd. v. LG Elecs. Inc. et al., No. 2:22-cv-00494 (E.D. Tex.)
`(filed Sept. 28, 2023)
`
`Petition for Inter Partes Review Under 35 U.S.C. § 312 and 37
`C.F.R. § 42.104, Vizio, Inc. v. Multimedia Techs. Pte. Ltd.,
`IPR2024-00694 (PTAB) (filed Mar. 14, 2024)
`
`Defendant’s Invalidity Contentions, Multimedia Techs. Pte.
`Ltd. v. Vizio, Inc., No. 2:23-cv-00124 (E.D. Tex. Sept. 28,
`2023)
`
`Order Adopting Report and Recommendations, Multimedia
`Techs. Pte. Ltd. v. LG Elecs. Inc. et al., No. 2:22-cv-00494
`(E.D. Tex. Mar. 28, 2024), ECF No. 65
`
`2
`
`
`
`
`
`
`
`
`
`

`

`INTRODUCTION
`The Board should deny the Petition for Inter Partes Review of U.S. Patent
`
`IPR2024-00351
`U.S. Patent No. 9,510,040
`
`
`I.
`
`No. 9,510,040 (“’040 Patent”) because Petitioners LG Electronics Inc., LG
`
`Electronics U.S.A., Inc. (“Petitioners”) fail to demonstrate a reasonable likelihood
`
`that any challenged claim is not patentable.
`
`As an initial matter, the Board should exercise its discretion to deny the
`
`Petition under § 314(a). Two district court litigations involving the ’040 Patent are
`
`in their late stages and will result in jury trials long before the Board issues any Final
`
`Written Decision. Moreover, the Fintiv factors weigh against institution, and the
`
`Petition falls far short of presenting a “compelling unpatentability challenge” that
`
`would warrant institution despite this inefficiency.
`
`Even if the merits are considered, the Petition still fails. At a minimum,
`
`Petitioner fails to show that its cited art has any teaching or suggestion of the recited
`
`limitation “wherein at least one of the sources is highlighted as being associated
`
`with the first content information.” The cited art, however, only discloses at most
`
`the potential to highlight panels without indicating association with a first content
`
`information as claimed in the ’040 Patent. As a result, Petitioner is unable to point
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`to any disclosed grounds that render obvious the claims of the ’040 Patent, and the
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`Board should deny institution.
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`
`
`
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`1
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`

`

`IPR2024-00352
`U.S. Patent No. 9,247,040
`
`
`II. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`THIS PETITION UNDER § 314(a)
`The Board should exercise its discretion to deny institution under § 314(a)
`
`because institution would be an “inefficient use of Board resources.” NHK Spring
`
`Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 19-20 (PTAB Sept. 12,
`
`2018). As explained in further detail below, two district court litigations involving
`
`the ’040 Patent are at advanced stages and will conclude long before a PTAB
`
`proceeding would.
`
`In NHK Spring Co., the Board denied institution of an inter partes review
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`under § 314(a) where a parallel district court proceeding was nearing its final stages,
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`and a PTAB proceeding would not conclude until about six months after the district
`
`court trial was scheduled. NHK Spring Co., IPR2018-00752, Paper 8 at 19-21. In so
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`reasoning, the Board set the precedent that parallel court proceedings must be
`
`considered when determining whether the institution of an inter partes review is
`
`consistent with the objective of the America Invents Act (“AIA”) to “provide an
`
`effective and efficient alternative to district court litigation.” Id.
`
`Building on NHK Spring Co., in Apple Inc. v. Fintiv, Inc., the Board identified
`
`specific factors relating 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
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`
`
`
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`2
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`

`

`IPR2024-00352
`U.S. Patent No. 9,247,040
`
`proceeding.” IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential).
`
`The Fintiv 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
`6. other circumstances that impact the Board’s exercise of discretion,
`including the merits.
`
`Id.
`
`The Director provided further guidance on the application of the Fintiv
`
`precedent in a June 21, 2022 Memorandum1 (“Guidance Memo”) and CommScope
`
`Technologies LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 (PTAB Feb. 27,
`
`
`1 Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant
`
`Proceedings with Parallel District Court Litigation (USPTO June 21, 2022)
`
`(“Guidance Memo”)
`
`available
`
`at
`
`https://www.uspto.gov/sites/default/files/
`
`documents/interim_proc_discretionary_denials_aia_parallel_district_court_litigati
`
`on_memo_20220621_.pdf
`
`
`
`
`
`3
`
`
`
`

`

`IPR2024-00352
`U.S. Patent No. 9,247,040
`
`2023) (precedential). The Director set forth a “compelling merits test” under which
`
`the Board—if it has found that Fintiv factors 1-5 favor discretionary denial—must
`
`assess whether a petition presents a “compelling unpatentability challenge” before
`
`discretionarily denying institution. CommScope, IPR2022-01242, Paper 23 at 3-5.
`
`As the Director explained, “the compelling merits standard is a higher standard than
`
`the standard for institution set by statute.”2 Id. at 3. A reasonable likelihood that the
`
`petitioner would prevail with respect to at least one challenged claim does not suffice
`
`to demonstrate that a challenge is “compelling.” Rather, a “compelling” challenge is
`
`one “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” such
`
`that “it is highly likely that the petitioner would prevail with respect to at least one
`
`challenged claim.” Id. at 3-4 (emphasis added). This is a “high standard” (see
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`AviaGames, Inc. v. Skillz Platform, Inc., IPR2022-00530, Paper 14 at 3, 5 (PTAB
`
`Mar. 2, 2023)) and the Board must explain its reasoning in determining whether the
`
`merits are compelling. CommScope, IPR2022-01242, Paper 23 at 4-6.
`
`
`2 Institution of an IPR is authorized only 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); CommScope, IPR2022-01242, Paper 23 at 3 n.3.
`
`
`
`
`
`4
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`
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`

`

`IPR2024-00352
`U.S. Patent No. 9,247,040
`
`All of the Fintiv factors weigh in favor of discretionary denial, in light of the
`
`Guidance Memo. The validity of the ’040 Patent is being challenged in two pending
`
`litigations:
`
`• Multimedia Technologies Pte. Ltd. v. LG Electronics Inc. et al., No.
`
`2:22-cv-00494 (E.D. Tex.) (Filed Dec 23, 2022) (the “LG Litigation”)
`
`• Multimedia Technologies Pte. Ltd. v. Vizio, Inc., No. 2:23-cv-00124
`
`(E.D. Tex.) (Filed Mar. 24, 2023) (the “Vizio Litigation”)
`
`Both of these litigations have progressed significantly, and while either one
`
`would independently merit a discretionary denial, together the two parallel district
`
`court litigations tip the scales heavily in favor of it.
`
`A.
`
`Factor 1: Petitioner has Not Requested a Stay, and would have No
`Authority to Request a Stay in the Vizio Litigation
`“A district court stay of the litigation pending resolution of the PTAB trial
`
`allays concerns about inefficiency and duplication of efforts,” and thus “weigh[s]
`
`against exercising the authority to deny institution under NHK.” Fintiv, IPR2020-
`
`00019, Paper 11 at 6. Petitioner has not filed any motion to stay the parallel district
`
`court proceeding in view of the Petition, has provided no indication that they intend
`
`to do so, and has presented no evidence suggesting a stay is likely if they did
`
`(particularly in light of the pending trial date). Judge Gilstrap of the United States
`
`District Court for the Eastern District of Texas—before whom the LG Litigation is
`
`
`
`
`
`5
`
`
`
`

`

`IPR2024-00352
`U.S. Patent No. 9,247,040
`
`pending—has identified criteria he examines before granting a stay motion pending
`
`inter partes review, and a final written decision must not be “expected in the ordinary
`
`course before trial in [the] case would otherwise take place,” Village Green Techs.,
`
`LLC v. Samsung Elecs., Co., No. 2:22-CV-00099-JRG, 2023 WL 416419 at * 3
`
`(E.D. Tex. Jan. 25, 2023). Judge Gilstrap further identified as relevant to this
`
`consideration whether, as here, petitioner was dilatory in seeking review and
`
`whether, as here, the review would not cover all contested patents in the litigation.
`
`Id. Here, the pending LG Litigation covers seven patents for which Petitioner has
`
`chosen not to seek review (and for which Petitioner has now exceeded the one-year
`
`deadline for challenging). Moreover, as will be discussed in greater length below,
`
`Petitioner’s final decision would not only come months after both trials have
`
`concluded, but this delay is the direct result of Petitioner’s delay in filing until almost
`
`a year after the LG Litigation began.
`
`Moreover even if Petitioner were to request (and be granted) a stay, this would
`
`have no impact on the parallel Vizio Litigation.
`
`This factor weighs strongly in favor of denying institution.
`
`B.
`
`Factor 2: The Board’s Final Written Decision Deadline Would
`Likely be After a Trial in the LG Litigation and/or Vizio
`Litigation
`“If the court’s trial date is earlier than the projected statutory deadline, the
`
`Board generally has weighed this fact in favor of exercising authority to deny
`
`
`
`
`
`6
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`
`
`

`

`IPR2024-00352
`U.S. Patent No. 9,247,040
`
`institution under NHK.” Fintiv, IPR2020-00019, Paper 11 at 9. In addition to
`
`whether a trial date has been set by the court, the Guidance Memo instructs the Board
`
`to look to “the most recent statistics on median time-to-trial for civil actions in the
`
`district court in which the parallel litigation resides” as well as statistical information
`
`for the specific judge involved in the litigation. Guidance Memo at 8-9. While such
`
`evidence is probative, the Board “generally take[s] courts’ trial schedules at face
`
`value absent sufficient evidence to the contrary.” Samsung Elecs. Co. v. Cardware
`
`Inc., IPR2023-00314, Paper 11 at 11 (PTAB July 18, 2023) (internal quotes
`
`omitted). Here, whatever metric is chosen, it is clear that both the LG Litigation and
`
`Vizio Litigation are expected to proceed to trial long before the Board will issue its
`
`ruling were it to initiate review. Petitioner does not dispute this fact. Pet. at 98-99.
`
`The LG Litigation has already been set for trial in November, 2024—with
`
`Jury Selection set to begin at 9:00 a.m. on November 18. Ex. 2001 at 1. Moreover,
`
`the most recent statistics for the Eastern District of Texas provide a median time-to-
`
`trial of 20.7 months, which, given the LG matter’s filing date of December 23, 2022,
`
`would yield an expected trial even earlier—in mid-September 2024. Ex. 2002 at 2.
`
`Likewise, individual statistics over the past 12 months for Judge Gilstrap show a
`
`median time-to-verdict of 639 days, which would yield a trial date of September
`
`2024. Ex. 2003 at 1.
`
`
`
`
`
`7
`
`
`
`

`

`IPR2024-00352
`U.S. Patent No. 9,247,040
`
`The Vizio Matter was commenced on March 24, 2023, and is also pending
`
`before Judge Gilstrap. It has been set for trial in early January of 2024, with Jury
`
`Selection set to begin on January 6th. Ex. 2004 at 1. Time to trial statistics (whether
`
`measured by the average time-to-trial statistics for the Eastern District of Texas, or
`
`those for Judge Gilstrap individually) yield an even earlier expected trial in
`
`December of 2024. (Ex. 2002, 2003.)
`
`As a result, whether the Board considers “the scheduled trial date or the trial
`
`date expected based on time-to-trial statistics,” it is clear that the trials for both
`
`parallel litigations will almost certainly “commence several months before the
`
`expected date of [the Board’s] final written decision.” Samsung Elecs. Co. v. Cal.
`
`Inst. of Tech., IPR2023-00130, Paper 10 at 16 (PTAB May 4, 2023); see also, 10X
`
`Genomics v. President and Fellows of Harvard Coll., IPR2023-01299, Paper 15 at
`
`17 (PTAB Mar. 7, 2024).
`
`This factor weighs strongly in favor of denying institution.
`
`C.
`
`Factor 3: There Has Been Substantial Investment by the Parties
`and District Court in the LG Litigation and the Vizio Litigation
`In considering whether or not to institute review, the Board weighs “the
`
`amount and type of work already completed in the parallel litigation[s] by the court
`
`and the parties at the time of the institution decision.” Fintiv, IPR2020-00019, Paper
`
`11 at 9. In determining how much weight to give these investments, the Board also
`
`
`
`
`
`8
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`
`
`

`

`IPR2024-00352
`U.S. Patent No. 9,247,040
`
`considers whether “the petitioner filed the petition expeditiously, such as promptly
`
`after becoming aware of the claims being asserted,” or whether they instead waited
`
`“until the district court trial has progressed significantly before filing a petition at
`
`the Office.” Id. at 11. Where a Petitioner has chosen to sit on their hands the Board
`
`has recognized that “notwithstanding that a defendant has one year to file a petition”
`
`initiating review risks “impos[ing] unfair costs to [the] patent owner.” Id.
`
`The substantial investment in time and resources by the parties and district
`
`court in both the LG Litigation and the Vizio Litigation, particularly when coupled
`
`with LG’s dilatory tactics in filing this Petition, strongly supports denial.3 See, e.g.,
`
`Mylan Labs. Ltd. v. Janssen Pharm. NV, IPR2020-00440, Paper 17 at 17-19 (PTAB
`
`Sept. 16, 2020).
`
`
`
`The parties in the LG Litigation have already exchanged extensive
`
`discovery—including document and source-code discovery. Indeed, contrary to
`
`Petitioner’s assertion that “the co-pending litigations are in relatively early stages,”
`
`Pet. at 98, the deadline for substantial completion of all document discovery was on
`
`March 26, 2024, (Ex. 2001 at 4), the parties have already submitted joint filings, and
`
`
`3 Vizio also filed a copycat petition for inter partes review of the ’040 Patent as time
`
`ran out on its March 27, 2024 statutory deadline. See Ex. 2007, IPR2024-00694
`
`(filed March 14, 2024).
`
`
`
`
`
`9
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`
`
`

`

`IPR2024-00352
`U.S. Patent No. 9,247,040
`
`Multimedia has filed its opening brief for the upcoming Markman hearing on May
`
`10, 2024, and the case will continue to progress before the Board is expected make
`
`an institution decision.4 Ex. 2001 at 4. See Samsung Elecs. Co. v. Mojo Mobility Inc.,
`
`IPR2023-01098, Paper 11 at 9 (PTAB Feb. 9, 2024) (noting that significant
`
`investments in fact discovery weigh against institution). Moreover, the court has also
`
`already invested considerable resources into the Litigation, including a substantive
`
`Report and Recommendation by Magistrate Judge Payne, (Ex. 2005), that was
`
`adopted by Judge Gilstrap (Ex. 2009), denying LG’s motion to dismiss. See
`
`Genomics, IPR2023-01299, Paper 15 at 18 (finding that district court investment in
`
`resolving motions to dismiss the parallel litigation weighed against institution).
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`Likewise, the parties in the Vizio Litigation have exchanged extensive discovery,
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`including extensive document and source-code discovery, and are beginning
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`Markman exchanges.
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`These expenditures of resources are even more significant in light of LG’s
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`decision, despite being served with notice of this complaint on December 23, 2022,
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`4 On the March 25, 2024 call addressing Vizio’s improper pre-institution motion for
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`joinder of IPR2024-00696 and the instant Petition, see VIZIO Inc. v. Multimedia
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`Technologies Pte. Ltd, IPR2024-00696, Paper 3, the Board indicated an institution
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`decision regarding this Petition was unlikely to be reached before June.
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`U.S. Patent No. 9,247,040
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`to wait until December 20, 2023—just before the expiration of the statutory
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`deadline—before filing its petition.5 LG has provided no justification for this
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`decision to wait out the entire statutory period before seeking review, while actively
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`causing the litigants in the parallel litigations to accrue needless expenses in time
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`and effort. The Board has repeatedly recognized that waiting until the cusp of the
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`one-year deadline wastes the time and resources of parties and the courts, and held
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`that such gamesmanship weighs strongly against institution. See, e.g., Genomics,
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`IPR2023-01299, Paper 15 at 19; Ericsson Inc. and Nokia of Am. Corp. v. Collision
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`Commc’ns, Inc., IPR2022-01233, Paper 12 at 15 (PTAB Jan 19, 2023).
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`This factor weighs strongly against review.
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`D.
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`Factor 4: Petitioner’s Claims Directly Overlap with both Parallel
`Litigations, Despite Petitioner’s Efforts to Obscure this with an
`Ineffective Stipulation
`Where a “petition includes the same or substantially the same claims, grounds,
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`arguments, and evidence as presented in the parallel proceeding” thus creating
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`“concerns of inefficiency and the possibility of conflicting decisions” this provides
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`a strong reason for not granting review. Fintiv, IPR2020-00019, Paper 11 at 11-12.
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`5 As discussed above, Vizio also waited until nearly reaching its statutory deadline
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`(March 27, 2024) to file a verbatim copy of the instant Petition. See IPR2024-00694
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`(filed March 14, 2024).
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`IPR2024-00352
`U.S. Patent No. 9,247,040
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`Petitioners do not challenge that the ’040 patent is the subject of both parallel
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`litigations, nor that their arguments in this Petition are substantially the same as those
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`being litigated (as discussed at length above). Instead, Petitioners argue that the
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`stipulation they have provided adequately addresses any concerns of reduplication.
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`Pet. at 98. This claim however, misconstrues the authority on which it purports to
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`rely.
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`In Sotera Wireless, Inc. v. Masimo Corp., the Board recognized that a
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`Petitioner can “mitigate[] any concerns of duplicative efforts between the district
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`court and the Board, as well as concerns of potentially conflicting decisions” by
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`filing a binding stipulation in the parallel district court proceeding that ensures that
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`the two proceedings will not deal with the same grounds. IPR2020-01019, Paper 12
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`at 18-19 (PTAB Dec. 1, 2020). In Sotera, the Petitioner filed a stipulation with the
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`district court not to subsequently raise in litigation any ground “that was raised or
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`could have been reasonably raised in an IPR.” Id. at 18. Finding that this stipulation
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`was not “unclear” and was sufficiently potent to “ensure[] that an inter partes review
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`is a ‘true alternative’ to the district court proceeding” the Sotera court declined to
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`deny institution. Id. at 20-21.
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`The Guidance Memo accepted the reasoning of Sotera, and indicated that,
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`where a Petitioner has submitted a valid stipulation which “mitigates concerns of
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`potentially conflicting decisions and duplicative efforts between the district court
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`and the PTAB,” by ensuring that “the grounds the PTAB resolves will differ from
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`those present in the parallel district court litigation,” this suffices to minimize
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`concerns of inefficiency (and will generally be grounds for not discretionarily
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`denying review). Guidance Memo at 7; but see, NXP USA, Inc. v. IMPINJ, Inc.,
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`IPR2021-01556, Paper 13 at 4 (PTAB, Sept. 7, 2022) (noting that a purported Sotera
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`stipulation which in actuality serves to “frustrate[] these goals” and to “open the door
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`to gamesmanship” will not receive deference under the Guidance Memo).
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`Claiming to rely on this authority, Petitioner asserts that, if the Board institutes
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`review, they will not pursue “the specific grounds asserted here, or on any other
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`ground that was raised or could have been reasonably raised in this IPR” as part of
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`the LG Litigation. Pet. at 98. Petitioner has failed however to file a proper Sotera
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`stipulation. While Petitioner’s stipulation uses similar wording to the one approved
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`by the Director, it fundamentally departs from the Director’s guidance (and the
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`Board’s holding in Sotera) in two key respects.
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`First, unlike the stipulation which the Board and Director approved of in
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`Sotera, Petitioner has not actually filed this stipulation in the District Court in the
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`parallel proceedings. Sotera’s emphasis on such a filing is not a mere formality—by
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`filing in District Court, the Petitioner in Sotera provided the court with an
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`opportunity to review the stipulation, and ensure that those grounds which “could
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`reasonably be raised” in an inter partes review were sufficiently clear and distinct
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`IPR2024-00352
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`to be later judicially enforceable. This concern is particularly acute in cases where,
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`as here, a petitioner indicates it will rely upon published descriptions of system art
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`such as product manuals and user guides in challenging validity at the District Court,
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`see Wasica Finance GmbH v. Schrader International, Inc., 432 F. Supp. 3d 448, 454
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`n.6 (D. Del. 2020) (surveying entrenched disagreements at the district court level
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`regarding the proper method for categorizing such manuals as system vs. paper art),
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`or, as here, intends to rely on unspecified combinations of paper and system art in
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`the underlying litigation, see Wirtgen America, Inc. v. Caterpillar, Inc., No. 1:17-
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`CV-00770-JDW-MPT, 2024 WL 51010 at *9 (D. Del. Jan. 4. 2024) (noting
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`unresolved, and frequently litigated ambiguity regarding which combinations
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`constitute a “ground that the petitioner raised or reasonably could have raised during
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`the inter partes review.”).
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`Here, Petitioner’s invalidity contentions for the ’040 Patent rely heavily on
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`“thousands of [purportedly] invalidating combinations,” (Ex. 2006 at 39), of prior
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`art, including paper art, systems art, and “Non-Patent Prior Art Publications” such
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`as users guides and users manuals and other materials describing TV systems, which
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`are duplicative of the system art. Id. at 15-17. Petitioner makes clear in its
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`contentions that believes it can rely on “any of a number” of and any “invaliding
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`combinations” of identified art (including system art and user guides), and notes that
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`the sheer volume of purported invaliding combinations are so numerous—
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`“thousands” by Petitioner’s own estimation—as to be “unduly burdensome” for
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`Petitioner to identify in its contentions. Id. at 39-40. Were the Board to institute
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`review without clarity as to which (if any) of these combinations and publications
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`are covered by Petitioner’s stipulation, the all-but-certain result would be the
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`duplicate litigation of nearly all of Petitioner’s claims at the District Court level via
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`attempts to exclude certain art and combinations from the bounds of Petitioner’s
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`stipulation.
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`This is not a challenge to the proper role of Sotera stipulations in making
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`institution decision. But here, Petitioner attempts to circumvent the process Sotera
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`laid out for providing the requisite clarity to all parties and institutions involved. By
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`declining to follow the procedure endorsed by Sotera and Director Vidal—i.e.,
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`requesting the District Court accept the stipulation in the first instance—and
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`declining to identify the art it believes it can and cannot rely on in the District Court,
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`Petitioner has feinted at an agreement not to raise certain anticipation and/or
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`obviousness challenges in the parallel litigation, but left the contours of that
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`stipulation so vague as to be meaningless.
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`Where a Petitioner has offered a stipulation that does not meaningfully
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`prevent them from later efforts to relitigate the subject matter of the inter partes
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`review, the Board has been consistent in findin