Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Date: July 23, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
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`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`v.
`RFCYBER CORP.,
`Patent Owner.
`
`PGR2021-00028
`Patent 10,600,046 B2
`
`
`Before PATRICK R. SCANLON, KEVIN W. CHERRY, and
`JAMES A. WORTH, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`
`
`
`
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`

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`PGR2021-00028
`Patent 10,600,046 B2
`
`INTRODUCTION
`I.
`Google LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`post-grant review of claims 1‒17 of U.S. Patent No. 10,600,046 B2 (Ex.
`1001, “the ’046 patent”). RFCyber Corp. (“Patent Owner”) filed a
`Preliminary Response (Paper 7, “Prelim. Resp.”). With our authorization,
`Petitioner filed a Reply to Patent Owner’s Preliminary Response (Paper 8,
`“Prelim. Reply”), and Patent Owner filed a Sur-reply (Paper 9, “Prelim. Sur-
`reply”). Patent Owner also filed a statutory disclaimer of claims 6–11, 15,
`16, 19, and 20 of the ’046 patent. Ex. 2002.
`Under 35 U.S.C. § 324(a), a post-grant review may not be instituted
`“unless . . . the information presented in the petition . . . , if such information
`is not rebutted, would demonstrate that it is more likely than not that at
`least 1 of the claims challenged in the petition is unpatentable.” After
`considering the Petition, Patent Owner’s Preliminary Response, Petitioner’s
`Reply, and Patent Owner’s Sur-reply, as well as all supporting evidence, we
`determine that Petitioner has satisfied the burden under 35 U.S.C. § 324(a)
`to show that it is more likely than not that at least one of the challenged
`claims is unpatentable.
`
`II. BACKGROUND
`A. Related Matters
`The parties identify the following proceedings as related matters
`involving the ’046 patent: RFCyber Corp. v. Google LLC, Case No. 2:20-cv-
`00274 (E.D. Tex.); RFCyber Corp. v. Samsung Electronics Co. Ltd., Case
`No. 2:20-cv-00335 (E.D. Tex.); and RFCyber Corp. v. LG Electronics, Inc.,
`Case No. 2:20-cv-00336 (E.D. Tex.). Pet. 2–3; Paper 5, 1. In addition,
`Petitioner indicates it has filed another petition for post-grant review
`challenging the ’046 patent (i.e., PGR2021-00029). Pet. 3.
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`PGR2021-00028
`Patent 10,600,046 B2
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`B. Real Parties in Interest
`Petitioner identifies itself and Google Payment Corp. as the real
`parties in interest. Pet. 2. Petitioner indicates that Google LLC is a
`subsidiary of XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.,
`but states that XXVI Holdings Inc. and Alphabet Inc. are not real parties in
`interest to this proceeding. Id. n.1. Patent Owner identifies itself as the real
`party in interest. Paper 5, 1.
`C. The ’046 Patent
`The ’046 patent relates to electronic commerce and, more particularly,
`to settling payments “using a mobile device reading electronic bills or
`invoices off from another mobile device in a near field communication
`range.” Ex. 1001, 1:16‒21. In general, the invention includes a first mobile
`device that generates an electronic invoice and can be part of a point of sale
`(“POS”) machine. Id. at 1:56–58, 2:1–3. The first mobile device is
`embedded with a secure element and executes a software module. Id. at
`1:57–58, 2:55–59. When the first mobile device is brought to a consumer
`using a second mobile device, the electronic invoice is read wirelessly into
`the second mobile device. Id. at 1:59–63. The second mobile device is a
`near field communication (“NFC”) device “configured to execute an
`application that communicates with the software module in the first mobile
`device to read the data off from the first mobile device.” Id. at 2:28–30,
`2:65–3:1.
`The user is then able to verify the amount charged and authorize
`payment, after which the second mobile device “communicates with a
`payment gateway or network for payment that is configured to proceed with
`the payment in accordance with a chosen payment method.” Id. at 1:63–67,
`2:61–64. That is, the gateway receives the payment request from the second
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`PGR2021-00028
`Patent 10,600,046 B2
`mobile device, verifies the payment request, and sends a payment response
`to the user of the first mobile device after the payment request is processed.
`Id. at 3:17–31.
`Figure 1A of the ’046 patent is reproduced below.
`
`
`Fig. 1A shows system configuration 100, which is one embodiment of
`the invention. Ex. 1001, 5:29‒30. System configuration 100 includes
`network 102, which provides services by a financial institution to
`electronically transfer money or settle payments. Id. at 5:30–34. Payment
`gateway 104 comprises one or more servers configured to provide an
`application that may be installed on a user’s mobile device. Id. at 5:52–56.
`The application allows a user to authorize payment of an electronic invoice.
`Id. at 5:60–62.
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`Patent 10,600,046 B2
`System configuration 100 also includes POS device 106 at a point of
`sale. Id. at 6:6–7. POS device 106 generates an electronic bill or invoice
`that is loaded onto portable device 108, such as a contactless card or an NFC
`device, which contacts a user’s NFC device. Id. at 6:10–14. In one
`embodiment, “the POS device is a single device embedded with a secure
`element. The single device may be an NFC device that is used to enter
`information to generate an invoice.” Id. at 6:15–18. This device is brought
`to the customer for authorization and payment. Id. at 6:22–23.
`Alternatively, “the POS device includes a stationary device corresponding to
`106 of FIG. 1A and one or more contactless cards corresponding to 108 of
`FIG. 1A.” Id. at 6:23–26. In this case, “[t]he stationary device is used by
`the casher to enter charging information to generate an invoice. A
`contactless card is loaded with the electronic invoice and brought to the
`customer for authorization and payment.” Id. at 6:26–30.
`Device 110 is a personal NFC device with wallet software. Id. at
`Fig. 1A. Specifically, device 110 “is configured to function as an electronic
`purse or e-purse that may be used to directly settle a charge being displayed
`on a display screen thereof.” Id. at 8:25–28.
`To settle a payment, the merchant, such as a waiter or cashier at a
`restaurant, causes POS device 106 to generate an electronic bill that is
`transported to a contactless card. Id. at 7:19–22. The contactless card is
`then presented to the customer who uses his or her mobile device to read the
`contactless card. Id. at 7:24–26. Upon detecting the contactless card in the
`near field, the application on the user’s mobile device reads data pertaining
`to the electronic bill from the contactless card and subsequently displays the
`electronic bill on a screen of the mobile device for the customer to verify.
`Id. at 7:28–33. The customer then chooses a method for settling the bill,
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`PGR2021-00028
`Patent 10,600,046 B2
`such as an e-purse already created in the mobile device, cash, traditional
`credit or debit card, and electronic transfer. Id. at 7:46–53.
`When selecting to pay the bill via the e-purse, the customer enters the
`amount to be paid against the bill; the customer may enter more than what is
`being charged in the bill as a tip or gratuity. Id. at 7:57–61. Once the
`customer has entered the total amount to be paid, the application on the
`user’s mobile device sends a payment request to gateway or server 104 for
`processing. Id. at 7:57–61. “[T]he server 104 receives the payment request
`authorized by the consumer and proceeds with the payment request in
`conjunction with the payment network 102,” and “[o]nce the transaction is
`complete or denied, the server 104 sends a notice to the merchant.” Id.
`at 8:17–24.
`Figure 6A of the ’046 patent is reproduced below.
`
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`PGR2021-00028
`Patent 10,600,046 B2
`Fig. 6A “is a diagram showing an exemplary architecture, in which a
`portable device is enabled as a mobile POS conducting e-commerce and m-
`commerce.” Ex. 1001, 4:32‒35. Specifically, exemplary architecture 600
`includes portable device 630 that includes baseband 624 and secured
`element 629. Id. at 18:65–19:3. POS manager 623 is installed in baseband
`623, and POS SAM1 628 is installed in secured element 629 to enable
`portable device 630 to act as a mobile POS. Id. at 19:3–6. This
`configuration allows real time transaction 639 to be conducted between
`portable device 630 and e-token enabled device 636, which can be a single
`functional card or a portable device enabled with an e-purse. Id. at 19:7–10.
`Real time transaction 639 can be conducted without the portable
`device connecting to POS transaction server 613, in which case records of
`accumulated offline transactions are uploaded via secured channel 618 to
`POS transaction server 613 for settlement. Id. at 19:14–16, 9:23–27.
`However, portable device 630 may connect to POS transaction servers 613
`over cellular network 520 in certain instances. Id. at 19:16–18.
`D. Challenged Claims
`Petitioner challenges claims 1‒17, of which claims 1 and 12 are
`independent. Claim 1, reproduced below, is illustrative.
`1.
`A method for mobile payment, the method comprising:
`causing a mobile device to capture data directly from a tag
`physically presented thereto, wherein the tag receives the data
`directly from a POS device and allows the mobile device to
`capture the data, the data embedded in the tag includes an
`electronic invoice and settlement information with a merchant
`associated with the POS device;
`
`1 A “POS SAM” refers to a mobile POS application applet. Ex. 1001,
`18:13–14. Although the acronym “SAM” is not defined in the ’046 patent, it
`appears to refer to a Security Authentication Module. See Ex. 1030, 16.
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`PGR2021-00028
`Patent 10,600,046 B2
`extracting the electronic invoice from the captured data in
`the mobile device; displaying the electronic invoice on a display
`of the mobile device to show an amount to be paid by a user of
`the mobile device, wherein the mobile device is configured to
`execute an installed application therein to capture the data from
`the tag;
`receiving an entry by the mobile device, the entry
`including the amount for the invoice and optionally an additional
`amount from the user;
`calculating a total amount by adding the additional amount
`to the amount in the electronic invoice;
`generating a payment request in the mobile device in
`response to the electronic invoice after the user has chosen an
`electronic purse (e-purse) maintained locally in the mobile
`device;
`displaying the electronic invoice on the display of the
`mobile device for the user to verify the payment request
`verifying the total amount with a balance in the e-purse,
`wherein said verifying the total amount with a balance in the e-
`purse is performed within the mobile device without sending the
`payment request to a payment gateway;
`displaying a denial of the payment request when the
`balance is less than the total amount;
`sending the payment request from the mobile device to the
`payment gateway, wherein the balance is sufficient to honor the
`payment request, the payment gateway sends a message directly
`to the POS device that a monetary transaction per the payment
`request sent from the mobile device has been successfully
`completed; and
`displaying a confirmation in the mobile device that the
`balance in the e-purse has been reduced by the total amount.
`Ex. 1001, 25:20–63.
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`PGR2021-00028
`Patent 10,600,046 B2
`
`E. Asserted Grounds
`Petitioner contends that the challenged claims are unpatentable based
`on the following grounds:
`Reference/Basis
`35 U.S.C. §
`Claims Challenged
`Lack of Written Description
`112(a)
`1‒17
`Patent Ineligible Subject Matter
`101
`1‒17
`Pet. 27. Petitioner relies on the Declaration of Stephen Gray (Ex. 1003) to
`support its challenges.
`Following Patent Owner’s statutory disclaimer, claims 1–5, 12–14,
`and 17 are the only remaining claims in the ’046 patent. Accordingly, we
`limit our consideration of the challenges to whether Petitioner has satisfied
`its burden to show that it is more likely than not that at least one of claims 1–
`5, 12–14, and 17 is unpatentable.
`III. ANALYSIS
`A. Eligibility for Post-Grant Review
`As a threshold matter, we must determine whether the ’046 patent is
`eligible for post-grant review. The post-grant review provisions set forth in
`section 6(d) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (September 16, 2011) (“AIA”), apply only to patents subject to
`the first-inventor-to-file provisions of the AIA. See AIA § 6(f)(2)(A)
`(stating that the provisions of Section 6(d) “shall apply only to patents
`described in section 3(n)(1)”). Patents subject to the first-inventor-to-file
`provisions are those that issue from applications “that contain[] or contained
`at any time . . . a claim to a claimed invention that has an effective filing
`date as defined in section 100(i) of title 35, United States Code, that is on or
`after” March 16, 2013. AIA § 3(n)(1).
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`Patent 10,600,046 B2
`Our rules require that each petitioner for post-grant review certify that
`the challenged patent is available for post-grant review. 37 C.F.R.
`§ 42.204(a) (2019) (“The petitioner must certify that the patent for which
`review is sought is available for post-grant review . . . .”). In addition, “[a]
`petition for a post-grant review may only be filed not later than the date that
`is 9 months after the date of the grant of the patent or of the issuance of a
`reissue patent (as the case may be).” 35 U.S.C. § 321(c). Petitioner has the
`burden of demonstrating eligibility for post-grant review. See Mylan
`Pharms. Inc. v. Yeda Res. & Dev. Co., PGR2016-00010, Paper 9 at 10
`(PTAB Aug. 15, 2016).
`The ’046 patent issued from U.S. Application No. 14/728,349, filed
`on June 2, 2015 (“the ’349 application”). Ex. 1001, codes (21), (22).
`The ’349 application was filed as a continuation of U.S. Application No.
`13/853,937, filed on March 29, 2013 (“the ’937 application”) and now U.S.
`Patent No. 9,047,601 B2. Id. code (63). The ’937 application was a
`continuation-in-part of U.S. Application No. 13/350,832, filed on January
`16, 2012 (“the ’832 application”) and now abandoned. Id. The ’832
`application was a continuation-in-part of U.S. Application No. 11/534,653,
`filed on September 24, 2006 (“the ’653 application”) and now U.S. Patent
`No. 8,118,218 B2. Id. The ’046 patent also lists U.S. Provisional
`Application No. 61/618,802, filed on April 1, 2012 (“the ’802 provisional
`application”).2,3 Id. code (60).
`
`
`2 The specification of the ’046 patent does not appear to contain a specific
`reference to the ’802 provisional application pursuant to 35 U.S.C.
`§ 119(e)(1). Ex. 1001.
`3 Petitioner refers to the ’832 application, the ’653 application, and the ’802
`provisional application collectively as “the pre-AIA applications.” Pet. 14.
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`Patent 10,600,046 B2
`Petitioner contends that the ’046 patent is eligible for post-grant
`review because it contains at least one claim with an effective filing date
`after March 16, 2013. Pet. 13. According to Petitioner, the challenged
`claims “contain limitations that were either (i) not disclosed in the pre-AIA
`patent applications due to a broken priority chain or (ii) not disclosed in any
`application due to unsupported amendments made during prosecution of the
`’046 Patent.” Id. at 13–14. In particular, Petitioner argues that the
`limitations “displaying a denial” in claim 1 and the “account and bank
`information of the registered merchant” of claims 6 and 15 are supported
`only by description first filed with the ’937 application after March 16,
`2013.4 Id. at 16–17.
`We first address the “displaying a denial” step. The full limitation is
`“displaying a denial of the payment request when the balance [in the e-
`purse] is less than the total amount.” Ex. 1001, 25:52–53. Petitioner argues
`that the ’653 application lacks any disclosure of a display step. Pet. 17
`(citing Ex. 1028; Ex. 1003 ¶¶ 55–56). Petitioner also argues that the ’832
`application “generally describes comparing the balance of an e-token with a
`purchase amount in association with Figures 6C and 6D, but it fails to
`describe displaying a denial within the mobile device when the balance is
`insufficient.” Id. at 17–18 (citing Ex. 1029 ¶¶ 173–177, Figs. 6C, 6D;
`Ex. 1003 ¶ 56). More specifically, Petitioner argues that “in the
`embodiment of Figure 6C, . . . when the balance is insufficient at step 656,
`the process displays an option to ‘top-up’ the balance, but does not display a
`
`
`4 Petitioner also argues that certain limitations added to claims 1 and 12
`during prosecution of the ’046 patent lack written description support in any
`of the applications, pre-AIA or otherwise and, thus, create PGR eligibility.
`Pet. 25. We address these arguments in Section III.D below.
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`Patent 10,600,046 B2
`denial.” Id. at 18 (citing Ex. 1029 ¶ 174, Fig. 6C). Petitioner also argues
`that the process of Figure 6D “simply ends after a ‘return message’ denying
`the purchase is received by POS manager 623,” and “[n]o denial is displayed
`in the mobile device.” Id. at 18–19 (citing Ex. 1029 ¶ 177, Fig. 6D).
`In response, Patent Owner argues that Figures 6C and 6D from
`the ’802 provisional application (which was filed prior to March 13, 2013)
`support the “displaying a denial” step of claim 1.5 Prelim. Resp. 12–17
`(citing Ex. 1030 ¶¶ 136, 139, 174, 177, Figs. 6C, 6D). First, Patent Owner
`contends that Figure 6C illustrates a process that verifies whether there is
`enough balance in an e-token to cover the amount to be paid at step 656. Id.
`at 13 (citing Ex. 1030 ¶ 136, Fig. 6C). Patent Owner adds that if there is an
`insufficient balance, the process offers the holder6 the option to “top-up” the
`e-token at step 657. Id. (citing Ex. 1030 ¶ 136, Fig. 6C).
`According to Patent Owner, one of ordinary skill in the art would
`recognize that offering a top-up option is “displaying a denial” because “the
`process only offers the top-up option if the balance is too low to cover the
`amount and will not proceed absent the top-up,” and “[o]ne of skill in the art
`would understand that the top-up option is thus a denial, because the
`transaction will not proceed without the top-up.” Id. at 14. Patent Owner
`also argues that “the option must necessarily be displayed because the holder
`must provide a selection (yes or no)” and Petitioner admits that the option is
`displayed. Id. (citing Pet. 18).
`
`
`5 Patent Owner asserts that these disclosures from the ’802 provisional
`application are also found in the’832 application and the ’046 patent.
`Prelim. Resp. 14 (citing Ex. 1029 ¶ 174, Fig. 6C; Ex. 1001, 20:4–51, Fig.
`6C), 16 (citing Ex. 1029 ¶ 177, Fig. 6D; Ex. 1001, 21:15–22:2, Fig. 6D).
`6 The “holder” refers to the holder of an e-token enabled device, i.e., a
`person desiring to make a purchase. Ex. 1030 ¶ 136.
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`Second, Patent Owner contends that, although Figure 6D does not
`depict the top-up offer, the written description of the process of Figure 6D
`states that a top-up operation may be performed when there is not enough
`balance in the e-token enables device. Id. at 15–16 (citing Ex. 1030 ¶ 139,
`Fig. 6D).
`We are not persuaded by Patent Owner’s arguments. Both the ’802
`provisional application and the ’832 application disclose process 650 in
`which, at step 656 of Figure 6C, “it is determined whether there is enough
`balance in the retrieved e-token to cover the cost of the current transaction.”
`Ex. 1030 ¶ 136; Ex. 1029 ¶ 174. If the balance is insufficient, the process
`“may optionally offer the holder to top-up (i.e., load, fund, finance) the
`e-token at [step] 657.” Ex. 1030 ¶ 136; Ex. 1029 ¶ 174. The process ends
`only if the top-up option is not taken; if the top-up option is taken, then the
`process proceeds with the transaction. Ex. 1030 ¶ 136; Ex. 1029 ¶ 174.
`Process 670, which is depicted in Figure 6D in both the ’802 provisional
`application and the’832 application, describes that “when there is not enough
`balance in the e-token enabled device, a top-up or funding operation may be
`performed.” Ex. 1030 ¶ 139; Ex. 1029 ¶ 177.
`Based on these disclosures, the top-up option is not equivalent to “a
`denial of the payment request” because the payment request is not denied at
`that point in the process. Instead, the payment request is accepted and the
`transaction is completed if the customer elects to top-up the e-token. The
`purpose of the top-up option is to provide the customer with an opportunity
`to go forward with the payment request despite an insufficient balance.
`Thus, even assuming that Patent Owner is correct that the top-up option
`must be displayed, we are not persuaded that “a denial of the payment
`request” is displayed when the balance is insufficient. The payment request
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`Patent 10,600,046 B2
`is effectively denied (i.e., the process is terminated) only if the customer
`does not elect to top-up the e-token, which necessarily occurs after the top-
`up option is displayed. Displaying the top-up option cannot be equivalent to
`displaying a denial because any denial results from an event that occurs after
`the top-up option is displayed.
`For the above reasons, we are not persuaded that the “displaying a
`denial” limitation of claim 1 finds written description support in any of the
`pre-AIA applications. Although contending that the limitation is supported
`by the ’802 provisional application, Patent Owner does not dispute explicitly
`Petitioner’s assertion that the “displaying a denial” step of claim 1 is
`supported by description that was first filed with the ’937 application after
`March 16, 2013. See Pet. 16–17, 20–21. Thus, we agree with Petitioner that
`claim 1 has an effective filing date after March 16, 2013. Accordingly,
`claim 1 renders the ’046 patent eligible for post-grant review under AIA
`§ 6(f)(2)(A).
`Regarding Petitioner’s argument that the limitation “account and bank
`information of the registered merchant” of claims 6 and 15 have an effective
`filing date after March 16, 2013, Patent Owner argues that claims 6 and 15
`have been disclaimed, and disclaimed claims cannot be used to confer PGR
`eligibility. Prelim. Resp. 18–22; Prelim. Sur-reply 6–7. Patent Owner also
`argues that this limitation is supported in the ’802 provisional application.
`Prelim. Resp. 22–23. Petitioner argues that disclaimed claims can be used to
`confer PGR eligibility. Prelim. Reply 5–7. We decline to reach this issue in
`view of our determination that claim 1 has an effective filing date after
`March 16, 2013 and thus renders the ’046 patent eligible for post-grant
`review. See AIA § 3(n)(1) (the first-inventor-to-file provisions apply to any
`patent that issues from an application that contains or contained at any time
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`a claim to a claimed invention that has an effective filing date on or after
`March 16, 2013).
`We further determine that Petitioner filed the Petition within the
`9-month statutory period for requesting post-grant review in accordance with
`35 U.S.C. § 321(c). The ’046 patent issued on March 24, 2020 (see
`Ex. 1001, code (45)), and the Petition in this proceeding was accorded a
`filing date of December 23, 2020 (see Paper 6). Thus, the Petition was filed
`less than 9 months after the date of issuance of the ’046 patent.
`Accordingly, we determine that the ’046 patent is eligible for
`post-grant review.
`B. Discretion under 35 U.S.C. § 324(a)
`Patent Owner urges the Board to exercise discretion to deny
`institution of post-grant review under 35 U.S.C. § 324(a) “because
`institution of this proceeding would not be consistent with the objective of
`the AIA to ‘provide an effective and efficient alternative to District Court
`litigation,’” in view of the ongoing parallel proceeding between the parties
`in the U.S. District Court for the Eastern District of Texas. Prelim. Resp.
`56–57 (citing NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752,
`Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential)); see also id. at 58–63;
`Prelim. Sur-reply 1–6. Petitioner disagrees. Prelim. Reply 1–6.
`Section 324(a) of 35 U.S.C. states that
`[t]he Director may not authorize a post-grant review to be
`instituted unless the Director determines that the information
`presented in the petition filed under section 321, if such
`information is not rebutted, would demonstrate that it is more
`likely than not that at least 1 of the claims challenged in the
`petition is unpatentable.
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`The portion of the statute reading “[t]he Director may not authorize . . .
`unless” mirrors the language of 35 U.S.C. § 314(a), which concerns inter
`partes review. This language of sections 314(a) and 324(a) provides the
`Director with discretion to deny institution of a petition. See Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision
`to deny a petition is a matter committed to the Patent Office’s discretion.”);
`Consolidated Trial Practice Guide November 2019 (“TPG”)7 at 55.
`In exercising the Director’s discretion under 35 U.S.C. §§ 314(a) and
`324(a), the Board may consider “events in other proceedings related to the
`same patent, either at the Office, in district courts, or the ITC.” TPG at 58.
`The Board’s precedential NHK Spring decision explains that the Board may
`consider the advanced state of a related district court proceeding, among
`other considerations, as a “factor that weighs in favor of denying the Petition
`under § 314(a).” NHK Spring, Paper 8 at 20.
`Additionally, the Board’s precedential Fintiv Order identifies several
`factors to be considered when analyzing issues related to the Director’s
`discretion to deny institution, with the goal of balancing efficiency, fairness,
`and patent quality. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11
`at 5‒6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv Order”). These factors
`include: 1) whether a stay exists or is likely to be granted if a proceeding is
`instituted; 2) proximity of the court’s trial date to the Board’s projected
`statutory deadline; 3) investment in the parallel proceeding by the court and
`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 and
`
`
`7 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`considerations that impact the Board’s exercise of discretion, including the
`merits. Id.
`We recognize that NHK Spring and the Fintiv Order apply the
`Director’s discretion pursuant to 35 U.S.C. § 314(a), and do not specifically
`extend their application to 35 U.S.C. § 324(a), which is the relevant statute
`that applies to this PGR proceeding. As noted above, however, the pertinent
`statutory language is the same in both section 314(a) and section 324(a).
`Moreover, the overall policy justifications associated with the exercise of
`discretion—inefficiency, duplication of effort, and the risk of inconsistent
`results—apply to post-grant review proceedings under 35 U.S.C. § 324(a).
`Accordingly, we weigh the factors set forth in the Fintiv Order to the facts
`here. See, e.g., Teva Pharms. USA, Inc. v. Corcept Therapeutics, Inc.,
`PGR2019-00048, Paper 19 at 11 (Nov. 20, 2019) (analyzing NHK Spring
`and instituting trial); Supercell Oy v. GREE, Inc., PGR2020-00034, Paper 13
`(Sept. 3, 2020) (analyzing the Fintiv Order and denying institution).
`We, however, recognize that there are differences between inter
`partes review and post-grant review that, when relevant to specific Fintiv
`factors, must be considered. Those differences include the fact that the
`window for filing a petition for post-grant review is open only for nine
`months from the date of issuance. See 35 U.S.C. § 321(c). Furthermore,
`“[t]he intent of the post-grant review process is to enable early challenges to
`patents, while still protecting the rights of inventors and patent owners
`against new patent challenges unbounded in time and scope.” H.R. Rep.
`No. 112-98, pt. 1, 47–48 (2011).
`In determining whether to exercise discretion to deny institution under
`35 U.S.C. § 324(a), we consider each of the factors set forth in the
`precedential Fintiv Order.
`
`17
`
`

`

`PGR2021-00028
`Patent 10,600,046 B2
`Factor 1: whether the court granted a stay or evidence exists that one
`may be granted if this proceeding is instituted
`Patent Owner asserts that there is no stay in the parallel district court
`proceeding, nor has Petitioner sought a stay. Prelim. Resp. 62. Patent
`Owner also asserts that “the long-standing practice in the Eastern District of
`Texas is not to stay unless all asserted claims in the case are subject to
`instituted proceedings in the PTAB.” Id. (citing AGIS Software Dev. LLC v.
`Google LLC, No. 2:2019-cv-00361-JRG, 2021 WL 465424, at *2 (E.D. Tex.
`Feb. 9, 2021)); see also Prelim. Sur-reply 2. According to Patent Owner, a
`stay is unlikely to issue because there is no instituted reviews on any of the
`other patents asserted in the parallel district court proceeding. Prelim. Resp.
`62; Prelim. Sur-reply 2.
`Petitioner argues that a stay would be appropriate in view of the early
`stage of the parallel district court proceeding. Pet. 29. Petitioner also argues
`that, because a motion to stay has not yet been filed in the parallel district
`court proceeding, the Board should not infer the outcome of a motion to
`stay. Id. (citing Intel Corp. v. VLSI Tech. LLC, IPR2020-00158, Paper 16 at
`7 (PTAB May 20, 2020); Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper
`15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv”); Prelim. Reply 1
`(citing DISH Network L.L.C. v. Broadband iTV, Inc., IPR2020-01359, Paper
`15 at 11 (PTAB Feb. 12, 2021)).
`In view of the above, we decline to speculate as to the likelihood of a
`stay of the district court proceeding. Accordingly, this factor is neutral.
`Factor 2: proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision
`Patent Owner states that a jury trial is scheduled to begin in the
`parallel proceeding on March 21, 2022, which is approximately four months
`
`18
`
`

`

`PGR2021-00028
`Patent 10,600,046 B2
`before a final written decision would issue in this proceeding. Prelim.
`Sur-reply 1. Thus, according to Patent Owner, this factor weighs strongly in
`favor of denial. Id.
`Petitioner argues that “the short time period between the trial and the
`issuance of the final written decision does not warrant a discretionary
`denial.” Prelim. Reply 2. Petitioner cites Hulu, LLC v. SITO Mobile R&D
`IP, IPR2021-00206, Paper 11 at 10–11 (PTAB May 10, 2021) for
`determining that a trial date three months before final written decision
`weighs only “marginally in favor of” discretionary denial. Id. In Hulu,
`however, the Board determined that the district court trial was scheduled to
`begin less than three months before the projected deadline for a final written
`decision. Hulu, Paper 11 at 11. Here, the approximately four months
`between the scheduled trial date and the projected deadline for a final
`written decision is a slightly more significant period.
`Overall, we determine that this factor weighs in favor of invoking our
`discretion to deny institution.
`Factor 3: investment in the parallel proceeding by the court and the
`parties
`Factor 3 relates to “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 Order, Paper 11 at 9. Petitioner argues that the parallel
`proceeding is in its early stages, and the investment in the proceeding has
`been relatively minimal. Pet. 30. More specifically, Petitioner argues that
`claim construction, Petitioner’s final invalidity contentions, Petition