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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`ROKU INC.,
`Petitioner,
`
`v.
`
`VIDEOLABS, INC.,
`Patent Owner.
`_____________
`
`Case No. IPR2024-01025
`Patent No. 8,291,236
`_____________
`
`PETITIONER’S NOTICE RANKING PETITIONS AND EXPLAINING
`MATERIAL DIFFERENCES
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`
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`
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`Petitioner is filing three parallel petitions for inter partes review against U.S.
`
`Patent No. 8,291,236 (“the ’236 patent”). Pursuant to the Board’s Consolidated
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`Trial Practice Guide (November 2019) (“TPG”) at 59-60, Petitioner submits this
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`notice to (1) identify a ranking of the petitions and (2) provide a succinct
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`explanation of the differences between the petitions, why issues addressed by the
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`differences are material, and why the Board should use its discretion to institute all
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`petitions.
`
`I.
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`RANKING OF PETITIONS
`Petitioner does not believe a ranking of petitions to be appropriate here, as
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`there is no duplicative overlap of the same claims across petitions and the three
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`petitions are pursued solely for word count purposes that preclude all claims from
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`being challenged in single petition. For example, the petition in IPR2024-01023 is
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`challenging claims 32-36, 38-41, 43, 66-70, 72-75, 77, and 130-137 and has a word
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`count of 13,912 words, while the petition in IPR2024-01024 is directed to claims
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`48-50, 57, 82-84, 91, 116-118, 125, and 140-142 and has a word count of 11,225
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`words, and the petition in IPR2024-01025 is directed to claims 100-109 and 111
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`and has a word count of 13,990 words. Due to word count constraints, the different
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`limitations found in the independent claims of the ’236 requiring the application of
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`different arguments, and the need to set forth constructions for claim language
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`invoking §112, ¶6, different subsets of claims have been presented separately in
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`1
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`
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`the separate petitions. See PTAB Consolidated Trial Practice Guide, November
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`2019,1 59-61 (permitting parallel petitions in certain circumstances, such as a large
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`number of claims). The multiple petitions are not unnecessarily duplicative
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`because they challenge different independent and dependent claims of the ’236,
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`and the multiple petitions will not substantially burden the Board or the parties
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`because they use overlapping prior art references in the grounds of unpatentability
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`(i.e., “Russ” is common to all three petitions; “Robert” and “Eskicioglu” are also
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`common to two of the petitions), and the different claims, while directed to
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`different components of an overall system, include overlapping limitations that
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`have overlapping unpatentability arguments. Petitioner only submits three petitions
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`out of necessity. The Board should not exercise discretion to deny any of the
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`petitions directed to the ’394. See, e.g., Samsung Elecs. Co. Ltd. v. Mojo Mobility
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`Inc., IPR2023-01090, Paper 11 at 25-26 (PTAB Jan. 11, 2024) (granting institution
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`and declining to deny a parallel petition where, “in effect, the two petitions were
`
`filed instead of one merely because [PTAB] Rules have page limit restrictions”).
`
`
`
` https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL=
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` 1
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`2
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`
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`Nevertheless, to the extent ranking is necessary, Petitioner ranks the
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`petitions as follows:
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`IPR No.
`IPR2024-01023
`IPR2024-01024
`IPR2024-01025
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`Rank
`1
`2
`3
`
`
`Petitioner respectfully requests that the Board institute all petitions.
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`
`
`
`Date: June 14, 2024
`
`
`
`Respectfully submitted,
`Roku, Inc.
`
`/Scott A. McKeown/
`Scott A. McKeown, Reg. No. 42,866
`WOLF, GREENFIELD & SACKS, P.C.
`601 Massachusetts Avenue NW
`Washington, DC 20001
`
`3
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`
`
`
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (E)(4)
`I certify that on June 14, 2024, I will cause a copy of the foregoing
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`document, including any exhibits or appendices filed therewith, to be served via
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`Overnight FedEx at the following correspondence address of record for the patent:
`
`Workman Nydegger
`60 East South Temple
`Suite 1000
`Salt Lake City, UT 84111
`
`
`Courtesy copies of the same documents were also served at the following
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`email addresses of record for Patent Owner’s litigation counsel:
`
`eday@bdiplaw.com
`mbelloli@bdiplaw.com
`jtice@bdiplaw.com
`ahand@bidplaw.com
`hbunsow@bdiplaw.com
`
`
`
`
`
`
`/MacAulay Rush/
`MacAulay Rush
`Paralegal
`WOLF, GREENFIELD & SACKS, P.C.
`
`
`
`
`
`
`
`
`
`M. Elizabeth Day
`Marc Belloli
`
`Jerry D. Tice II
`
`Aaron R. Hand
`
`Hillary Bunsow
`
`
`Date: June 14, 2024
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`
