Case 5:19-cv-00036-RWS Document 485-6 Filed 08/05/20 Page 1 of 35 PageID #: 26494
`Case 5:19-cv-00036—RWS Document 485-6 Filed 08/05/20 Page 1 of 35 PageID #: 26494
`
`
`
`
`
`
`
`EXHIBIT E
`
`EXHIBIT E
`
`
`
`
`Case 5:19-cv-00036—RWS Document 485-6 Filed 08/05/20 Page 1 of 35 PageID #: 26494
`
`
`
`
`
`
`
`EXHIBIT E
`
`EXHIBIT E
`
`
`
`
`
`Case 5:19-cv-00036-RWS Document 485-6 Filed 08/05/20 Page 2 of 35 PageID #: 26495
`
`Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Entered: June 19, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MAXELL, LTD.,
`Patent Owner.
`____________
`
`IPR2020-00204
`Patent 6,928,306 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, KEVIN C. TROCK, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`Apple Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`
`an inter partes review (“IPR”) of claims 2, 5, 6, and 12–15 (“the challenged
`
`claims”) of U.S. Patent No. 6,928,306 B2 (Ex. 1001, “the ’306 patent”).
`
`Petitioner filed a Declaration of Michael Kotzin, Ph.D. (Ex. 1006) with its
`
`Petition. Patent Owner, Maxell, Ltd. (“Patent Owner”), filed a Preliminary
`
`Response (Paper 6, “Prelim. Resp.”).
`
`
`
`Case 5:19-cv-00036-RWS Document 485-6 Filed 08/05/20 Page 3 of 35 PageID #: 26496
`
`IPR2020-00204
`Patent 6,928,306 B2
`
`With our authorization (Paper 7), Petitioner also filed a Reply
`
`(Paper 8, “Pet. Reply”) and Patent Owner filed a Sur-Reply (Paper 10, “PO
`
`Sur-reply”) addressing whether we should exercise our discretion to deny
`
`institution under 35 U.S.C. § 314(a).
`
`We have authority to determine whether to institute an inter partes
`
`review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C.
`
`§ 314(a), we may not authorize an inter partes review unless the information
`
`in the petition and the preliminary 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.” For the reasons that follow, we institute
`
`an inter partes review as to claims 2, 5, 6, and 12–15 of the ’306 patent on
`
`all grounds of unpatentability presented.
`
`
`
`
`
`I. BACKGROUND
`
`A.
`
`Real Parties-in-Interest
`
`Petitioner identifies Apple Inc. as the real party-in-interest. Pet. 48.
`
`Patent Owner identifies Maxell, Ltd. as the real party-in-interest. Paper 4, 1.
`
`
`
`B.
`
`Related Proceedings
`
`The parties identify the following proceedings related to the
`
`’306 patent (Pet. 43, 48; Paper 4, 1):
`
`Maxell, Ltd. v. Apple Inc., No. 5:19-cv-00036 (E.D. Tex. Mar. 15,
`
`2019) (“the underlying litigation”); and
`
`Huawei Techs. Co. v. Maxell, Ltd., IPR2019-00640 (settled prior to
`
`institution decision) (“the ’640 IPR”).
`
`2
`
`
`
`Case 5:19-cv-00036-RWS Document 485-6 Filed 08/05/20 Page 4 of 35 PageID #: 26497
`
`IPR2020-00204
`Patent 6,928,306 B2
`
`In the ’640 IPR, Patent Owner identified two other proceedings
`
`related to the ’306 patent (IPR2019-00640, Paper 4, 1):
`
`Maxell, Ltd. v. Huawei Device USA, Inc., No. 5:18-cv-00033 (E.D.
`
`Tex. Mar. 2, 2018); and
`
`Maxell, Ltd. v. ZTE Corp., No. 5:18-cv-00034 (E.D. Tex. Mar. 2,
`
`2018).
`
`
`
`C.
`
`The ’306 patent
`
`The ’306 patent is directed to a portable mobile unit that alerts a user
`
`of an incoming call using a ringing sound. Ex. 1001, 1:6–10. Figure 1 of
`
`the ’306 patent is reproduced below.
`
`Figure 1 depicts a communication controller and ringing sound generator of
`
`a cellular phone. Id. at 2:59–61, 4:34–36. The ringing sound generator
`
`includes frequency modulation (FM) sound data memory 3a, pulse-code
`
`modulation (PCM) sound data memory 3b of a sound source, and Musical
`
`
`
`3
`
`
`
`Case 5:19-cv-00036-RWS Document 485-6 Filed 08/05/20 Page 5 of 35 PageID #: 26498
`
`IPR2020-00204
`Patent 6,928,306 B2
`
`Instrument Digital Interface (MIDI) method sound data memory 3c. Id. at
`
`4:41–44. Each of these memories has corresponding sound data
`
`reproduction portions 4a, 4b, and 4c, respectively, connected to controller 2.
`
`Id. at 4:44–53. Controller 2 determines the timing for reproducing selected
`
`sound data based on data in reproduction timing memory 1. Id. at 4:53–59.
`
`Outputs of the respective sound reproduction portions 4a, 4b, and 4c are
`
`connected to a mixer 5, which outputs ringing sounds to speaker 6. Id. at
`
`4:59–65.
`
`The pattern of a ringing sound may be changed based on a range of
`
`time1 (e.g., from “midnight to the early morning,” a day of the week, or
`
`holidays) during which a call is received. Id. at 9:62–10:64, Figs. 5, 6.
`
`The ’306 patent issued from an application that was filed January 4,
`
`2001, which claims priority to a Japanese patent application filed on
`
`January 7, 2000. Id., codes (22), (30). As discussed below, Petitioner
`
`attempts to establish that, at a minimum, its asserted references qualify as
`
`prior art relative to either the January 7, 2000, filing date of the Japanese
`
`application (i.e., the earliest possible effective filing date) or the January 4,
`
`2001, filing date of the U.S. application.
`
`
`
`
`1 The ’306 patent refers to ranges of time as “time zones.” See, e.g.,
`Ex. 1001, 10:24–28. Petitioner asks us to make a “clarifying construction”
`that “‘time zone’ . . . indicate[s] a duration of time or range of hours, rather
`than one of 24 zones on the earth.” Pet. 7 (citing Ex. 1001, 10:35–40).
`Although we agree with Petitioner’s interpretation, we need not
`affirmatively construe “time zone” given that the asserted prior art (Miura)
`uses the same term in the same manner. See, e.g., Ex. 1005, 7:37–46.
`
`4
`
`
`
`Case 5:19-cv-00036-RWS Document 485-6 Filed 08/05/20 Page 6 of 35 PageID #: 26499
`
`IPR2020-00204
`Patent 6,928,306 B2
`
`D.
`
`Illustrative Claim
`
`Of the challenged claims, claims 2, 12, and 13 are independent.
`
`Claims 5 and 6 depend from claim 2, and claims 14 and 15 depend from
`
`claim 13. Claim 2 is illustrative of the challenged claims and recites:
`
`A portable mobile unit capable of alerting on incoming of
`2.
`a signal by a ringing sound, comprising:
`
`a ringing sound generator having a plurality of sound
`sources therewith; and
`
`a controller for controlling operations of said portable
`mobile unit, wherein
`
`said controller controls said ringing sound generator so as
`to generate the ringing sound using at least two of said sound
`sources when the signal comes in.
`
`Ex. 1001, 17:38–46.
`
`
`
`E.
`
`Prior Art
`
`Petitioner relies on the following prior art:
`
`Patent Cooperation Treaty (PCT) Patent Application
`Publication No. WO 96/27974, published Sept. 12, 1996
`(Ex. 1003, “Van der Salm”);
`
`Chinese Patent Publication No. CN 1190303A, published
`Aug. 12, 1998 (Ex. 1004, “Huang”);2 and
`
`U.S. Patent No. 6,763,105 B1, filed Nov. 13, 1998, issued
`July 13, 2004 (Ex. 1005, “Miura”).
`
`
`
`
`2 Huang is a Chinese-language publication (Ex. 1004, 13–22) that was filed
`with an English-language translation (id. at 1–11) and a declaration attesting
`to the accuracy of the translation (id. at 12). Our citations to Huang herein
`refer to the translation. We follow Petitioner’s convention of referencing the
`page numbers added to the footer of Huang.
`
`5
`
`
`
`Case 5:19-cv-00036-RWS Document 485-6 Filed 08/05/20 Page 7 of 35 PageID #: 26500
`Case 5:19-cv-00036-RWS Document 485-6 Filed 08/05/20 Page 7 of 35 PageID #: 26500
`
`IPR2020-00204
`
`Patent 6,928,306 B2
`
`F.
`
`The Asserted Grounds
`
`Petitioner challenges claims 2, 5, 6, and 12—15 of the ’306 patent
`
`based on the following grounds (Pet. 5):
`
`Claims Challenged
`
`35 U.S.C. §
`
`References
`
`Van der Salm, Huang 5, 6, 12, 14, 15
`
`103(a)3
`
`103(a)
`
`Van der Sahn, Huang, Miura
`
`
`
`103(a)2, 5, 6, 13—15 Van der Salm, Huang, Miura4
`
`
`
`II. ANALYSIS
`
`We now consider Petitioner’s asserted grounds and Patent Owner’s
`
`arguments in the Preliminary Response to determine whether Petitioner has
`
`met the “reasonable likelihood” standard for institution under 35 U.S.C-
`
`§ 314(a).
`
`A.
`
`Legal Standards
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`
`between the claimed subject matter and the prior art are such that the subject
`
`matter, as a whole, would have been obvious at the time the invention was
`
`made to a person having ordinary skill in the art to which said subject matter
`
`pertains- See KSR Int’l Co. v. Teleflex Inc_, 550 US. 398, 406 (2007).
`
`3 The Leahy—Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287—88 (2011), amended 35 U.S-C. §§ 102, 103, and 112.
`Because the ’306 patent was filed before March 16, 2013 (the effective date
`of the relevant amendments), the pre-AIA versions of §§ 102, 103, and 112
`apply.
`
`4 Petitioner asserts this ground under an alternative construction for the term
`“ringing sound generator.” Pet. 5, 39; see infra note 5.
`
`
`
`Case 5:19-cv-00036-RWS Document 485-6 Filed 08/05/20 Page 8 of 35 PageID #: 26501
`
`IPR2020-00204
`Patent 6,928,306 B2
`
`The question of obviousness is resolved on the basis of underlying factual
`
`determinations, including (1) the scope and content of the prior art; (2) any
`
`differences between the claimed subject matter and the prior art; (3) the level
`
`of skill in the art; and (4) where in evidence, so-called secondary
`
`considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`We also recognize that prior art references must be “considered together
`
`with the knowledge of one of ordinary skill in the pertinent art.” In re
`
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d
`
`559, 562 (CCPA 1978)).
`
`
`
`B.
`
`Level of Ordinary Skill in the Art
`
`Citing testimony from Dr. Kotzin, Petitioner contends a person having
`
`ordinary skill in the art would have had “a Bachelor’s degree in Electrical
`
`Engineering, Computer Engineering, or Computer Science, or an equivalent
`
`degree with at least 2 years of experience in consumer telephony products,
`
`human-computer interaction, or related technologies.” Pet. 4 (citing
`
`Ex. 1006 ¶¶ 31–33). Patent Owner contends an ordinarily skilled artisan
`
`would have had “a Bachelor of Science Degree in Electrical/Computer
`
`Engineering or Computer Science or an equivalent degree, and at least two
`
`years of experience working in the field of audio signal processing.” Prelim.
`
`Resp. 21. Patent Owner does not cite any evidence in support of its
`
`contention. See id.
`
`Both parties agree on the type of formal schooling and the number of
`
`years’ experience an ordinarily skilled artisan would have had, but they
`
`differ on how they characterize the field of the experience. We adopt
`
`Petitioner’s characterization that an ordinarily skilled artisan would have had
`
`7
`
`
`
`Case 5:19-cv-00036-RWS Document 485-6 Filed 08/05/20 Page 9 of 35 PageID #: 26502
`
`IPR2020-00204
`Patent 6,928,306 B2
`
`experience in “consumer telephony products, human-computer interaction,
`
`or related technologies” because it is backed by Dr. Kotzin’s testimony (see
`
`Ex. 1006 ¶ 32), whereas Patent Owner’s contention is not backed by any
`
`evidence. Accordingly, for purposes of this Decision, we adopt Petitioner’s
`
`definition of the level of ordinary skill in the art. On the present record, we
`
`are satisfied that this definition comports with the level of skill necessary to
`
`understand and implement the teachings of the ’306 patent and the asserted
`
`prior art. Notwithstanding, our findings and conclusions would be the same
`
`under either party’s definition of the level of ordinary skill in the art.
`
`
`
`C.
`
`Claim Interpretation
`
`In an inter partes review, we construe each claim “in accordance with
`
`the ordinary and customary meaning of such claim as understood by one of
`
`ordinary skill in the art and the prosecution history pertaining to the patent.”
`
`37 C.F.R. § 42.100(b) (2019). Accordingly, our claim construction standard
`
`is the same as that of a district court. See id. Under the standard applied by
`
`district courts, claim terms are generally given their plain and ordinary
`
`meaning as would have been understood by a person of ordinary skill in the
`
`art at the time of the invention and in the context of the entire patent
`
`disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)
`
`(en banc). “There are only two exceptions to this general rule: 1) when a
`
`patentee sets out a definition and acts as his own lexicographer, or 2) when
`
`the patentee disavows the full scope of a claim term either in the
`
`specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am.
`
`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
`
`8
`
`
`
`Case 5:19-cv-00036-RWS Document 485-6 Filed 08/05/20 Page 10 of 35 PageID #: 26503
`
`IPR2020-00204
`Patent 6,928,306 B2
`
`Construing a claim term under 35 U.S.C. § 112 ¶ 6 involves two steps:
`
`identifying the claimed function and then determining what structure, if any,
`
`disclosed in the specification corresponds to the claimed function.
`
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015). To
`
`determine whether § 112 ¶ 6 applies to a claim limitation, the essential
`
`inquiry is “whether the words of the claim are understood by persons of
`
`ordinary skill in the art to have a sufficiently definite meaning as the name
`
`for structure.” Id. at 1348. If the limitation uses the word “means,” “there is
`
`a rebuttable presumption that § 112, para. 6 applies; if not, there is a
`
`rebuttable presumption that the provision does not apply.” Diebold Nixdorf,
`
`Inc. v. Int’l Trade Comm’n, 899 F.3d 1291, 1298 (Fed. Cir. 2018).
`
`
`
`1.
`
`“Ringing Sound Generator” (Claims 2, 5, 6, and 12–15)
`
`Petitioner contends the term “ringing sound generator” recited in
`
`claims 2, 5, 6, and 12–15 should be construed under § 112 ¶ 6. Pet. 6–11.
`
`Petitioner contends the claimed function differs based on differences in the
`
`language of these claims. See id. at 7. For example, Petitioner contends the
`
`claimed function for claim 2 is “generat[ing] the ringing sound ‘using at
`
`least two of said sound sources.’” Id. Petitioner further contends the
`
`corresponding structure is ringing sound generator 1519 comprising “sound
`
`data of sound sources 3a-3c, sound data reproduction portion of sound
`
`sources 4a-4c, and reproduction timing memory 1.” Id. at 9.
`
`Patent Owner argues, inter alia, that “the term ‘ringing sound
`
`generator’ does not use ‘means for’ or ‘step for’ language, and therefore it is
`
`presumed that §112 ¶ 6 does not apply.” Prelim. Resp. 24 (citing
`
`Williamson, 792 F.3d at 1348; Masco Corp. v. United States, 303 F.3d 1316,
`
`9
`
`
`
`Case 5:19-cv-00036-RWS Document 485-6 Filed 08/05/20 Page 11 of 35 PageID #: 26504
`
`IPR2020-00204
`Patent 6,928,306 B2
`
`1326 (Fed. Cir. 2002)). Patent Owner also notes that Petitioner does not
`
`argue that “‘generator’ or any other term in the phrase ‘ringing sound
`
`generator’ is a ‘nonce’ word requiring §112 ¶ 6 treatment.” Id. Patent
`
`Owner additionally notes that the court in the underlying litigation did not
`
`treat “ringing sound generator” under § 112 ¶ 6. Id. at 24 (citing Ex. 2008,
`
`25–28).
`
`We agree with Patent Owner that Petitioner does not explain why the
`
`term “ringing sound generator” should be governed by § 112 ¶ 6. As noted
`
`by Patent Owner, the lack of the word “means” creates a rebuttable
`
`presumption that § 112 ¶ 6 does not apply. See Diebold, 899 F.3d at 1298.
`
`Petitioner presents no arguments or evidence to rebut that presumption. We
`
`further note that the court in the underlying litigation construed the term
`
`“ringing sound generator” to have its plain and ordinary meaning. Ex. 2008,
`
`28. The court reasoned that a “ringing sound generator” connotes structure
`
`in the specification of the ’306 patent. Id. at 26. In particular, the court
`
`found that “Figure 15 depicts the ringing sound generator as a component in
`
`the ‘circuit constructions of the cellular phone’ where it is connected to a
`
`communication controller and a speaker.” Id. (citing Ex. 1001, 15:50–51,
`
`Fig. 15). We agree with the court’s analysis, and, for purposes of this
`
`Decision, we apply the plain and ordinary meaning.5
`
`
`
`
`5 Petitioner puts forth an alternate construction for “ringing sound generator”
`under § 112 ¶ 6 that forms the basis of its alternative obviousness ground
`based on Van der Salm, Huang, and Miura. See Pet. 11, 39–41. We are not
`persuaded by Petitioner’s alternative construction for the same reasons
`discussed above.
`
`10
`
`
`
`Case 5:19-cv-00036-RWS Document 485-6 Filed 08/05/20 Page 12 of 35 PageID #: 26505
`
`IPR2020-00204
`Patent 6,928,306 B2
`
`2.
`
`Other Terms
`
`Based on the current record, we determine that no other terms require
`
`explicit construction. See, e.g., Nidec Motor Corp. v. Zhongshan Broad
`
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only
`
`construe terms ‘that are in controversy, and only to the extent necessary to
`
`resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci. &
`
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
`
`
`D.
`
`Patent Owner’s Arguments Regarding Discretionary Denial
`
`Patent Owner contends we should exercise our discretion to deny
`
`institution under 35 U.S.C. § 314(a) based on the duplicative nature and
`
`advanced stage of the underlying litigation. Prelim. Resp. 2–20; PO
`
`Sur-reply 1–10. Petitioner contends it filed its Petition timely and that there
`
`is little overlap with the underlying litigation. Pet. 43–47; Pet. Reply 1–10.
`
`Institution of inter partes review is discretionary. Harmonic Inc. v.
`
`Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he [Office] is
`
`permitted, but never compelled, to institute an [inter partes review]
`
`proceeding.”); 35 U.S.C. § 314(a) (“The Director may not authorize an inter
`
`partes review to be instituted unless the Director determines that 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.” (emphasis added)). In Apple Inc. v. Fintiv, Inc.,
`
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”),
`
`the Board discussed potential applications of NHK Spring Co., Ltd. v. Intri-
`
`Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018)
`
`11
`
`
`
`Case 5:19-cv-00036-RWS Document 485-6 Filed 08/05/20 Page 13 of 35 PageID #: 26506
`
`IPR2020-00204
`Patent 6,928,306 B2
`
`(precedential) (“NHK”), as well as a number of other cases dealing with
`
`discretionary denial under § 314(a). Fintiv identifies a non-exclusive list of
`
`factors parties may consider addressing, particularly where there is a related,
`
`parallel district court action and whether such action provides any basis for
`
`discretionary denial. Fintiv at 5–16. Those factors include:
`
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`
`3. investment in the parallel proceeding by the court and the
`parties;
`
`4. overlap between issues raised in the petition and in the parallel
`proceeding;
`
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`
`Id. at 5–6. We authorized the parties to address these factors in the Reply
`
`and Sur-reply. Paper 7.
`
`We now consider these factors to determine whether we should
`
`exercise discretion to deny institution under 35 U.S.C. § 314(a). In
`
`evaluating the factors, we take a holistic view of whether efficiency and
`
`integrity of the patent system are best served by denying or instituting
`
`review. Fintiv at 6.
`
`
`
`1.
`
`Stay in the Underlying Litigation
`
`Although Petitioner moved for a stay in the underlying litigation (see
`
`Pet. Reply 6; Ex. 1045), the court recently denied Petitioner’s motion.
`
`PO Sur-reply 2–3. We have entered the court’s order denying Petitioner’s
`
`12
`
`
`
`Case 5:19-cv-00036-RWS Document 485-6 Filed 08/05/20 Page 14 of 35 PageID #: 26507
`
`IPR2020-00204
`Patent 6,928,306 B2
`
`motion into the record as Exhibit 3001. Notably, the court denied the
`
`motion without prejudice and stated that it could not say, in the event that we
`
`instituted this IPR, whether “the late stage [of proceedings] would
`
`necessarily outweigh the potential simplification of issues following
`
`institution decisions” in this and other inter partes review cases. Ex. 3001, 6
`
`(citing a prior case by the court in which a stay was granted three weeks
`
`before trial upon the institution of IPRs). In other words, the court signaled
`
`its willingness to entertain a renewed motion for stay from Petitioner if we
`
`were to issue decisions granting institution. Notwithstanding, the court
`
`stated that, were a renewed motion for stay requested, the late stage of
`
`proceedings “will certainly weigh against granting a stay.” Id. Given the
`
`court’s inclination to reconsider a motion for stay for the potential
`
`simplification of issues, but also considering the court’s comment about how
`
`the late stage of proceedings would affect its consideration of any such
`
`renewed motion, we view this factor as neutral.
`
`
`
`2.
`
`The Trial Date in the Underlying Litigation
`
`Trial in the underlying litigation is currently set for October 26, 2020.
`
`Pet. Reply 7; PO Sur-reply 1; Ex. 3001, 4. Nevertheless, Petitioner contends
`
`“[l]itigation will continue” after any Final Written Decision here. Pet.
`
`Reply 7. Petitioner notes that it filed a petition for writ of mandamus related
`
`to the court’s denial of Petitioner’s motion to transfer the underlying
`
`litigation. Id. Petitioner also notes the COVID-19 pandemic may affect the
`
`trial schedule. Id.
`
`Patent Owner argues that trial “will be complete nine months before a
`
`Final Written Decision issues” here and that a delay in the trial date is
`
`13
`
`
`
`Case 5:19-cv-00036-RWS Document 485-6 Filed 08/05/20 Page 15 of 35 PageID #: 26508
`
`IPR2020-00204
`Patent 6,928,306 B2
`
`unlikely. PO Sur-reply 3. Patent Owner cites a standing order in the court
`
`of the underlying litigation “to keep cases moving” despite the COVID-19
`
`pandemic. Id. at 4 (quoting Ex. 2018). And, according to Patent Owner,
`
`even if the trial date were delayed by three months, the trial would still
`
`precede the Final Written Decision by five months. Id. at 4. Patent Owner
`
`additionally notes the U.S. Court of Appeals for the Federal Circuit recently
`
`denied Petitioner’s petition for writ of mandamus. Id. at 3–4 (citing In re
`
`Apple Inc., No. 2020-115, 2020 WL 2125340 (Fed. Cir. Apr. 22, 2020)).
`
`The trial in the underlying litigation is currently set to occur months
`
`before any Final Written Decision in this case will issue. Although we
`
`consider delays due to the COVID-19 pandemic to be a real possibility
`
`despite the court’s standing order, we agree with Patent Owner that even a
`
`delayed trial might precede a Final Written Decision. This factor favors the
`
`exercise of discretionary denial.
`
`
`
`3.
`
`Investment by the Court and the Parties in the Underlying
`Litigation
`
`Petitioner contends that, aside from claim construction proceedings,
`
`“the district court has not invested other substantive efforts and the litigation
`
`is not ‘advanced.’” Pet. Reply 8. Petitioner notes that summary judgment is
`
`still months away and fact discovery and depositions are ongoing. Id.
`
`According to Petitioner, the court is not likely to analyze invalidity until
`
`trial. Id.
`
`As evidence of the court’s investment in the underlying litigation,
`
`Patent Owner highlights the court’s claim construction hearing and order
`
`and its rulings on Petitioner’s motion to dismiss and motion to transfer. PO
`
`Sur-reply 5 (citing Exs. 1048, 2012–2014). Patent Owner also notes that
`
`14
`
`
`
`Case 5:19-cv-00036-RWS Document 485-6 Filed 08/05/20 Page 16 of 35 PageID #: 26509
`
`IPR2020-00204
`Patent 6,928,306 B2
`
`fact discovery has closed and that expert discovery is underway and closes
`
`June 25, 2020. Id. at 6 (citing, inter alia, Ex. 2015).
`
`At least some of the work underway or already completed in the
`
`underlying litigation likely has relevance to issues in the Petition, including
`
`claim construction and expert discovery. Nevertheless, the present record
`
`does not show how the court’s rulings on the motion to dismiss or the
`
`motion to transfer bear on the patentability issues presented here.
`
`Considering that some of the investment by the court and the parties in the
`
`underlying litigation may be relevant to issues in this case, we find this
`
`factor favors the exercise of discretionary denial.
`
`
`
`4.
`
`Overlap of the Issues
`
`Petitioner contends there is little overlap between the issues in this
`
`case and those in the underlying litigation. Pet. Reply 9–10. Although
`
`Petitioner acknowledges that the primary reference in this case,
`
`Van der Salm, is also asserted as a primary reference in the underlying
`
`litigation, Petitioner emphasizes that it has stipulated to withdraw
`
`Van der Salm from the underlying litigation if we were to institute inter
`
`partes review in this case. Pet. Reply 9 (citing Ex. 1047, 3 n.4). Petitioner
`
`contends that its approach “ensures that overlapping resources are not
`
`expended in the district court and in the IPR.” Id. Petitioner further notes
`
`that “Borland ’347,” a primary reference in the underlying litigation, is not
`
`asserted here. Id. at 10. Finally, Petitioner notes that only claims 12 and 15
`
`are challenged in the underlying litigation, which is a subset of the seven
`
`claims challenged here. Id. at 10.
`
`15
`
`
`
`Case 5:19-cv-00036-RWS Document 485-6 Filed 08/05/20 Page 17 of 35 PageID #: 26510
`
`IPR2020-00204
`Patent 6,928,306 B2
`
`Patent Owner argues “[t]he issues in this proceeding are substantially
`
`the same as in the District Court Action.” PO Sur-reply 7. Patent Owner
`
`disputes that Petitioner’s contingent offer to withdraw Van der Salm from
`
`the underlying litigation is a tenable solution to the problem of overlap
`
`between the two cases. Id. Patent Owner argues that both parties “are
`
`expending resources in the District Court Action on expert reports
`
`addressing invalidity issues and will have to continue to do so even if the
`
`Board institutes.” Id. Patent Owner also notes the common application of
`
`Miura in both cases. Id. at 8. Patent Owner additionally notes it was
`
`required to narrow the set of asserted claims in the underlying litigation, so
`
`Patent Owner argues Petitioner cannot “avoid denial simply by challenging
`
`extraneous unasserted claims that that raise the same invalidity issues as the
`
`asserted ones.” Id.
`
`Although Van der Salm is currently a primary reference both here and
`
`in the underlying litigation, Petitioner has proposed to withdraw
`
`Van der Salm in the underlying litigation if we were to institute inter partes
`
`review. See Ex. 1047, 3 n.4. Petitioner’s proposal to withdraw
`
`Van der Salm alleviates, to some degree, concerns of duplicative efforts
`
`between the district court and the Board, and further minimizes the potential
`
`for conflicting decisions. See Sand Revolution II, LLC v. Cont’l Intermodel
`
`Grp.–Trucking LLC, IPR2019-01393, Paper 24 at 11–12 (PTAB June 16,
`
`2020); see also Fintiv at 12 (analyzing NHK to determine there were
`
`“concerns of inefficiency and the possibility of conflicting decisions.”).
`
`This withdrawal would also streamline the court’s consideration of invalidity
`
`issues in the underlying litigation and create a significant distinction
`
`between this case and the underlying litigation. Nevertheless, the lack of
`
`16
`
`
`
`Case 5:19-cv-00036-RWS Document 485-6 Filed 08/05/20 Page 18 of 35 PageID #: 26511
`
`IPR2020-00204
`Patent 6,928,306 B2
`
`overlap is diminished somewhat by the fact that Van der Salm has been a
`
`subject of expert discovery in the underlying litigation. See PO Sur-reply 7;
`
`see also supra § II.D.3 (noting the court and parties’ investment in the
`
`underlying litigation). We also have considered Miura’s overlapping role as
`
`a secondary reference in both cases, but determine that Petitioner’s
`
`challenges here based on Van der Salm and Huang are necessarily different
`
`than those based on Borland ’347 in the underlying litigation. Finally,
`
`claims 2, 5, 7, 13, and 14 are being challenged here, but not in the
`
`underlying litigation, which favors institution. On balance, we view this
`
`factor as weighing against exercising discretion to deny.
`
`
`
`5. Whether Petitioner is Unrelated to the Defendant in the
`Underlying Litigation
`
`“If a petitioner is unrelated to a defendant in an earlier court
`
`proceeding, the Board has weighed this fact against exercising discretion.”
`
`Fintiv at 13–14. Both parties acknowledge that Petitioner here is the
`
`defendant in the underlying litigation. Pet. Reply 10; PO Sur-reply 10.
`
`Thus, this factor does not weigh against exercising discretionary denial.
`
`
`
`6.
`
`Other Considerations
`
`The final Fintiv factor is a catch-all that takes into account any other
`
`relevant circumstances. The decision whether to exercise discretion to deny
`
`institution under § 314(a) is based on “a balanced assessment of all relevant
`
`circumstances in the case, including the merits.” Patent Trial and Appeal
`
`Board Consolidated Trial Practice Guide at 58 (Nov. 2019) (“Consolidated
`
`Trial Practice Guide”), available at https://www.uspto.gov/sites/default/
`
`files/documents/tpgnov.pdf. Considering the merits of the unpatentability
`
`17
`
`
`
`Case 5:19-cv-00036-RWS Document 485-6 Filed 08/05/20 Page 19 of 35 PageID #: 26512
`
`IPR2020-00204
`Patent 6,928,306 B2
`
`arguments in the Petition and Patent Owner’s arguments in the Preliminary
`
`Response, as discussed below, we determine Petitioner has established a
`
`reasonable likelihood that Petitioner would prevail with respect to the
`
`challenged claims. As discussed below, Petitioner cites the primary
`
`reference, Van der Salm, for teaching a telecommunications terminal with
`
`ring generator means that can form a ring signal with a calling party identity
`
`sound, a sound associated with a group identity representation, and/or a call
`
`representation sound. See infra § II.E.3. Based on the present record,
`
`Van der Salm alone appears to teach most, if not all, limitations of the
`
`challenged independent claims. Accordingly, the particularly strong merits
`
`of the challenges presented in the Petition favor institution.
`
`Patent Owner argues that Petitioner unreasonably delayed in filing the
`
`Petition. PO Sur-reply 1–2, 8–10. The district court in the underlying
`
`litigation also stated that Petitioner “has not sufficiently explained its delay
`
`in filing the petitions . . . nine months after [Patent Owner] filed suit and six
`
`months after [Patent Owner] served its initial infringement contentions.”
`
`Ex. 3001, 4–5.
`
`Petitioner notes that the underlying litigation initially involved
`
`10 different patents and “132 possibly-asserted claims”; Petitioner argues
`
`that it needed time to locate relevant prior art and prepare petitions for inter
`
`partes review. Pet. Reply 7–8. Petitioner’s explanation is consistent with
`
`the AIA’s legislative history as to the one-year statutory bar under § 315(b).
`
`See 157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011) (statement of Senator
`
`Kyl) (“High-technology companies, in particular, have noted that they are
`
`often sued by defendants asserting multiple patents with large numbers of
`
`vague claims, making it difficult to determine in the first few months of the
`
`18
`
`
`
`Case 5:19-cv-00036-RWS Document 485-6 Filed 08/05/20 Page 20 of 35 PageID #: 26513
`
`IPR2020-00204
`Patent 6,928,306 B2
`
`litigation which claims will be relevant and how those claims are alleged to
`
`read on the defendant’s products. . . . [I]t is important that the section 315(b)
`
`deadline afford defendants a reasonable opportunity to identify and
`
`understand the patent claims that are relevant to the litigation.”). We also
`
`note that Patent Owner made its Preliminary Election of Asserted Claims in
`
`the underlying litigation on No
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
