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`IPR2020-00409
`U.S. Patent 6,580,999 B2
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`Filed on behalf of Apple Inc.
`By: Adam P. Seitz, Reg. No. 52,206
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`Jennifer C. Bailey, Reg. No. 52,583
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`ERISE IP, P.A.
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`7015 College Blvd., Suite700
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`Overland Park, KS 66211
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`Tel: (913) 777-5600
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`Email:
`adam.seitz@eriseip.com
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`jennifer.bailey@eriseip.com
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`Paul R. Hart, Reg. No. 59,646
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`ERISE IP, P.A.
`5299 DTC Blvd., Suite 1340
`Greenwood Village, CO 80111
`Tel: (913) 777-5600
`Email:
`paul.hart@eriseip.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________________
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`APPLE INC.,
`Petitioner,
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`v.
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`MAXELL, LTD.,
`Patent Owner.
`_________________________________________________
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`Case IPR2020-00409
`U.S. Patent No. 6,580,999 B2
`____________________________________________________
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`PETITIONER’S NOTICE OF APPEAL
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`PUBLIC VERSION
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`Case 5:19-cv-00036-RWS Document 530-5 Filed 09/04/20 Page 2 of 21 PageID #: 28057
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`Pursuant to 35 U.S.C. §§ 141-142 and 319, 5 U.S.C. §§ 701-706, 28 U.S.C.
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`IPR2020-00409
`U.S. Patent 6,580,999 B2
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`§ 1295(a)(4)(A), and 28 U.S.C. § 1651, and in accordance with 37 C.F.R. §§ 90.2-
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`90.3, and Federal Circuit Rule 15(a)(1), notice is hereby given that Petitioner
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`Apple Inc. appeals to the U.S. Court of Appeals for the Federal Circuit from the
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`Decision Denying Institution of Inter Partes Review entered on August 11, 2020
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`(Paper 12) in IPR2020-00409, attached as Exhibit A, and all prior and
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`interlocutory rulings related thereto or subsumed therein.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Petitioner states that the issues
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`for appeal include, but are not limited to:
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`(1) whether the U.S. Patent and Trademark Office (PTO) exceeded its
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`statutory authority and violated the text, structure, and purpose of the Leahy-Smith
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`America Invents Act, 35 U.S.C. §§ 311-319 (AIA), and Administrative Procedure
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`Act, 5 U.S.C. §§ 701-706 (APA), by adopting a rule—and applying that rule to
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`deny institution here—that purports to authorize the Patent Trial and Appeal Board
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`(Board) to deny institution of inter partes review (IPR) based on non-statutory,
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`discretionary factors related to the pendency of parallel patent-infringement
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`litigation;
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`(2) whether the PTO exceeded its statutory authority and violated the APA
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`by adopting a rule governing institution decisions—and applying the rule to deny
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`Case 5:19-cv-00036-RWS Document 530-5 Filed 09/04/20 Page 3 of 21 PageID #: 28058
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`institution here—that incorporates non-statutory, discretionary factors that are
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`IPR2020-00409
`U.S. Patent 6,580,999 B2
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`arbitrary and capricious;
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`(3) whether the PTO exceeded its statutory authority and violated the AIA
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`and the APA by adopting a rule to govern all institution decisions—and applying
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`that rule to deny institution here—without following the procedures for notice-and-
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`comment rulemaking; and
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`(4) whether the court of appeals has jurisdiction over this appeal,
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`notwithstanding 35 U.S.C. § 314(d), because the PTO acted in excess of its
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`statutory authority and outside its statutory limits or because the grounds for
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`attacking the decision to deny institution depend on statutes, including the APA,
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`that are less closely tied to the application and interpretation of statutes related to
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`the decision to initiate IPR.
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`This Notice of Appeal is timely, having been duly filed 16 days after the
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`date of the Decision Denying Institution of Inter Partes Review.
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`A copy of this Notice of Appeal is being filed simultaneously with the
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`Board, the Clerk’s Office for the United States Court of Appeals for the Federal
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`Circuit, and the Director of the PTO.
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`Dated: August 27, 2020
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`Respectfully submitted,
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`ERISE IP, P.A.
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`Case 5:19-cv-00036-RWS Document 530-5 Filed 09/04/20 Page 4 of 21 PageID #: 28059
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`IPR2020-00409
`U.S. Patent 6,580,999 B2
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`BY: /s/Adam P. Seitz
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`Adam P. Seitz, Reg. No. 52,206
`Jennifer C. Bailey, Reg. No. 52,583
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`jennifer.bailey@eriseip.com
`adam.seitz@eriseip.com
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`Paul R. Hart, Reg. No. 59,646
`5299 DTC Blvd., Suite 1340
`Greenwood Village, CO 80111
`P: (913) 777-5600
`F: (913) 777-5601
`paul.hart@eriseip.com
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`ATTORNEYS FOR PETITIONER
`APPLE INC.
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`Case 5:19-cv-00036-RWS Document 530-5 Filed 09/04/20 Page 5 of 21 PageID #: 28060
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`IPR2020-00409
`U.S. Patent 6,580,999 B2
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 90.2(a)(1) and 104.2(a), I hereby certify that, in
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`addition to being filed electronically through the Patent Trial and Appeal Board’s
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`End to End (PTAB E2E) system, a true and correct original version of the
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`foregoing Petitioner’s Notice of Appeal is being filed by Priority Express Mail
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`on this 27th day of August, 2020, with the Director of the U.S. Patent and
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`Trademark Office, at the following address:
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`Director of the U.S. Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Pursuant to 37 C.F.R. 90.2(a)(2) and Federal Circuit Rule 15(a)(1), and
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`Rule 52(a), (e), I hereby certify that a true and correct copy of the foregoing
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`Petitioner’s Notice of Appeal is being filed in the United States Court of Appeals
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`for the Federal Circuit using the Court’s CM/ECF filing system on this 27th day
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`of August, 2020, and the filing fee is being paid electronically using pay.gov.
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` hereby certify that on August 27, 2020, I caused a true and correct copy
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`of the foregoing Petitioner’s Notice of Appeal to be served via email on the
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`following counsel for Patent Owner:
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`Robert G. Pluta (rpluta@mayerbrown.com)
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`Case 5:19-cv-00036-RWS Document 530-5 Filed 09/04/20 Page 6 of 21 PageID #: 28061
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`Maxell-Apple-Service@mayerbrown.com
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`IPR2020-00409
`U.S. Patent 6,580,999 B2
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`Dated: August 27, 2020
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`Respectfully submitted,
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`BY: /s/ Adam P. Seitz
`Adam P. Seitz, Reg. No. 52,206
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`COUNSEL FOR PETITIONERS
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`Case 5:19-cv-00036-RWS Document 530-5 Filed 09/04/20 Page 7 of 21 PageID #: 28062
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`Trials@uspto.gov
`571-272-7822
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`Paper 12
`Entered: August 11, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`MAXELL, LTD.,
`Patent Owner.
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`IPR2020-00409
`Patent 6,580,999 B2
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`Before LYNNE E. PETTIGREW, MINN CHUNG, and
`JOHN A. HUDALLA, Administrative Patent Judges.
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`CHUNG, Administrative Patent Judge.
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`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
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`PUBLIC VERSION
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`Case 5:19-cv-00036-RWS Document 530-5 Filed 09/04/20 Page 8 of 21 PageID #: 28063
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`IPR2020-00409
`Patent 6,580,999 B2
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`I. INTRODUCTION
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`Petitioner, Apple Inc., filed a Petition for inter partes review of
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`claims 1–6 (the “challenged claims”) of U.S. Patent No. 6,580,999 B2
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`(Ex. 1001, “the ’999 patent”). Paper 1 (“Pet.”). Patent Owner, Maxell, Ltd.,
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`filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). Pursuant to our
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`authorization for supplemental briefing, Petitioner filed a Reply to Patent
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`Owner’s Preliminary Response, and Patent Owner filed a Sur-reply. Paper 8
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`(“Pet. Reply”); Paper 10 (“PO Sur-reply”); see Paper 7, 4 (authorizing reply
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`and sur-reply).
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`Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to
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`institute an inter partes review if “the information presented in the
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`petition . . . and any response . . . shows that there is a reasonable likelihood
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`that the petitioner would prevail with respect to at least 1 of the claims
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`challenged in the petition.” 35 U.S.C. § 314(a). The Board, however, has
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`discretion to deny a petition even when a petitioner meets that threshold.
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`Id.; see, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016)
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`(“[T]he agency’s decision to deny a petition is a matter committed to the
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`Patent Office’s discretion.”); NHK Spring Co. v. Intri-Plex Techs., Inc.,
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`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential, designated
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`May 7, 2019) (“NHK”).
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`Having considered the parties’ submissions, and for the reasons
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`explained below, we exercise our discretion under 35 U.S.C. § 314(a) to
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`deny institution of inter partes review.
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`Case 5:19-cv-00036-RWS Document 530-5 Filed 09/04/20 Page 9 of 21 PageID #: 28064
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`IPR2020-00409
`Patent 6,580,999 B2
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`II. BACKGROUND
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`A. Related Matters
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`The parties identify the following pending district court proceeding
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`related to the ’999 patent: Maxell, Ltd. v. Apple Inc., No. 5:19-cv-00036
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`(E.D. Tex., filed Mar. 15, 2019) (“the underlying litigation”). Pet. 7;
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`Paper 4, 1 (Patent Owner’s Mandatory Notices).
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`Petitioner also has filed petitions in IPR2020-00407 and IPR2020-
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`00408 respectively challenging claims of U.S. Patent No. 6,748,317 B2,
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`which is a continuation of the ’999 patent, and U.S. Patent No. 6,430,498
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`B1, which is the parent of the ’999 patent. See Ex. 1001, code (63).
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`B. Overview of the ’999 Patent
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`The ’999 patent describes “a portable terminal provided with the
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`function of walking navigation, which can supply location-related
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`information to the walking user.” Ex. 1001, 1:13–16. According to the
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`’999 patent, conventional navigation systems at the time of the invention
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`were unsuitable for walking navigation because they were too large to be
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`carried by a walking user. Id. at 1:28–32. At the same time, maps provided
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`by conventional map information services could not be displayed clearly on
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`the small screens of portable telephones. Id. at 1:44–47. The invention of
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`the ’999 patent purportedly addressed these problems by providing a
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`portable terminal that can “supply location information easier for the user to
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`understand during walking.” Id. at 2:49–50.
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`The portable terminal described in the ’999 patent obtains location
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`information and direction information of the terminal (i.e., the direction of
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`the tip of the terminal). Id. at code (57), 2:62–67. Based on this terminal
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`information, the portable terminal obtains and displays information such as
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`Case 5:19-cv-00036-RWS Document 530-5 Filed 09/04/20 Page 10 of 21 PageID #: 28065
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`IPR2020-00409
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`route guidance for reaching a destination or neighborhood guidance relating
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`to entertainment, businesses, and restaurants. Id. at code (57), 3:1–37. In
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`addition, the portable terminal displays the direction of a destination with an
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`indicating arrow that always points in the direction of the destination. Id. at
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`code (57), Fig. 1.
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`C. Illustrative Claim
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`Challenged claims 1, 5, and 6 are independent. Challenged claims 2–
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`4 depend directly from claim 1. Claim 1 is illustrative of the claimed subject
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`matter:
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`1. A portable terminal with the function of walking
`navigation, comprising:
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`a device for getting location information denoting a present
`place of said portable terminal;
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`a device for getting direction information denoting an
`orientation of said portable terminal; and
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`a device for getting the location information of another
`portable terminal, wherein
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`a direction from said present place to the location of said
`another portable terminal is displayed with the distance
`information between said locations to supply route
`guidance
`information as said walking navigation
`information.
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`Ex. 1001, 10:38–50.
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`D. Prior Art and Declaration Evidence
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`Petitioner cites the following references in its challenge to
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`patentability:
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`U.S. Patent No. 6,067,502, issued May 23, 2000 (Ex. 1004,
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`“Hayashida”); and
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`Case 5:19-cv-00036-RWS Document 530-5 Filed 09/04/20 Page 11 of 21 PageID #: 28066
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`IPR2020-00409
`Patent 6,580,999 B2
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`Gregory D. Abowd et al., Cyberguide: A mobile context-aware tour
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`guide, Wireless Networks 3 (1997) 421–433 (Ex. 1005, “Abowd”).
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`Petitioner supports its challenge with a declaration from Dr. Michael
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`D. Kotzin (Ex. 1003).
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`E. Asserted Ground of Unpatentability
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`Petitioner asserts that the challenged claims are unpatentable based on
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`the following ground (Pet. 5):
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`Claims Challenged
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`35 U.S.C. §
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`References
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`1–6
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`103(a)1
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`Hayashida, Abowd
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`III. ANALYSIS
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`Patent Owner contends we should exercise our discretion under
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`35 U.S.C. § 314(a) to deny institution of inter partes review due to the
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`advanced stage of the underlying litigation in the United States District
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`Court for the Eastern District of Texas. Prelim. Resp. 2–18; PO
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`Sur-reply 1–10. According to Patent Owner, instituting an inter partes
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`review “would needlessly duplicate” the district court action and
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`“unnecessarily waste the Board’s resources.” Prelim. Resp. 4–5 (citing
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`NHK, Paper 8 at 20 (denying institution)).
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`After Patent Owner filed its Preliminary Response, we authorized the
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`parties to submit supplemental briefing on the issue of discretionary denial
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`under 35 U.S.C. § 314(a). Paper 7, 4. We specifically authorized the parties
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`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011), amended 35 U.S.C. §103 effective March 16, 2013. Because the
`’999 patent has an effective filing date prior to the effective date of the
`applicable AIA amendment, we refer to the pre-AIA version of § 103.
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`Case 5:19-cv-00036-RWS Document 530-5 Filed 09/04/20 Page 12 of 21 PageID #: 28067
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`IPR2020-00409
`Patent 6,580,999 B2
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`to address the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019,
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`Paper 11 (PTAB Mar. 20, 2020) (precedential, designated May 5, 2020)
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`(“Fintiv”). Id. Fintiv provides several factors that balance considerations of
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`system efficiency, fairness, and patent quality when a patent owner raises an
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`argument for discretionary denial due to the advanced state of a parallel
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`proceeding. Fintiv, Paper 11 at 5–6. These factors are:
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`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
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`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
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`3. investment in the parallel proceeding by the court and the
`parties;
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`4. overlap between issues raised in the petition and in the
`parallel proceeding;
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`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
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`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
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`Id.
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`We now consider these factors to determine whether we should
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`exercise discretion to deny institution under 35 U.S.C. § 314(a). “[I]n
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`evaluating the factors, the Board takes a holistic view of whether efficiency
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`and integrity of the system are best served by denying or instituting review.”
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`Id. at 6.
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`A. Fintiv Factor 1: Stay in the Underlying Litigation
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`Petitioner moved for a stay in the underlying litigation, but the district
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`court denied the motion. See Pet. Reply 7; PO Sur-reply 2; Exs. 1045, 1052,
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`2018. Among other reasons, the court stated “[t]he case is not in its infancy
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`and is far enough along that a stay would interfere with ongoing
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`Case 5:19-cv-00036-RWS Document 530-5 Filed 09/04/20 Page 13 of 21 PageID #: 28068
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`IPR2020-00409
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`proceedings.” Ex. 1052, 4. Notably, the court denied the motion without
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`prejudice. Id. at 6. Although the court stated that “[t]he late stage of the
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`proceedings will certainly weigh against granting a stay” if Petitioner were
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`to file a renewed motion for a stay, the court also stated it could not “say
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`now that the late stage would necessarily outweigh the potential
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`simplification of issues following institution decisions” in this and other
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`inter partes review proceedings. Id. Given the court’s apparent willingness
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`to reconsider a motion to stay if an institution decision simplified issues for
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`trial, but also considering the late stage of the district court proceeding, with
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`trial scheduled to begin in about four months, we view the first Fintiv factor
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`as neutral in determining whether to exercise discretion to deny institution.
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`B. Fintiv Factor 2: Trial Date in the Underlying Litigation
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`The district court trial date, previously set for October 26, 2020, has
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`been reset for December 7, 2020. Ex. 3001 (August 10, 2020 Order
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`resetting trial date); see Pet. Reply 7; PO Sur-reply 2; Ex. 2003. A trial
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`beginning this December would be completed about eight months before a
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`final written decision would be due in this proceeding.
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`Petitioner notes that the COVID-19 pandemic may affect the trial
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`schedule, and indeed the trial has been delayed by six weeks due to the
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`effects of COVID-19. Pet. Reply 7 n.4; Ex. 3001, 1. Patent Owner cites a
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`standing order in the court where the underlying litigation is pending “to
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`keep cases moving” despite COVID-19. PO Sur-reply 4 (quoting Ex. 2026,
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`1). In any event, Patent Owner argues, even if the trial date were delayed by
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`three months, the trial still would precede a final written decision by several
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`months. Id. at 3. Although we consider further delays due to the COVID-19
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`pandemic to be a real possibility despite the trial court’s standing order and
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`Case 5:19-cv-00036-RWS Document 530-5 Filed 09/04/20 Page 14 of 21 PageID #: 28069
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`IPR2020-00409
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`the recent order resetting the trial date for December 7, 2020, a delayed trial
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`still may precede a final written decision in this proceeding, which would be
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`due in August 2021. This factor, therefore, favors the exercise of
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`discretionary denial.
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`C. Fintiv Factor 3: Investment by the Court and the Parties in
`the Underlying Litigation
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`Petitioner asserts that briefing on dispositive issues and other pre-trial
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`efforts have not yet begun, and the district court has not made any rulings on
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`the merits. Pet. Reply 8–9. According to Petitioner, these facts outweigh
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`the amount of work the court has invested in claim construction. Id. at 9.
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`As evidence of the court’s investment of time and resources, Patent
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`Owner highlights the court’s claim construction hearing and order and its
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`rulings on various motions. PO Sur-reply 5. As for the parties’ investment
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`in the underlying litigation, Patent Owner notes that fact discovery closed on
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`March 31, 2020, except for some depositions postponed due to COVID-19
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`that are now complete, and expert discovery was scheduled to close on
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`June 25, 2020. Id. at 5–6.
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`At least some of the court’s and the parties’ work related to invalidity
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`has been completed in preparation for the upcoming trial. Because some of
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`this invested effort, including claim construction and expert discovery, likely
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`has relevance to issues in the Petition, this factor favors the exercise of
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`discretionary denial in this case to prevent duplication of work on similar
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`issues by the Board and the district court.
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`D. Fintiv Factor 4: Overlap Between Issues Raised in the
`Petition and Underlying Litigation
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`Petitioner contends there is little overlap between the issues in this
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`case and those in the underlying litigation. Pet. Reply 9–10. First, Petitioner
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`Case 5:19-cv-00036-RWS Document 530-5 Filed 09/04/20 Page 15 of 21 PageID #: 28070
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`IPR2020-00409
`Patent 6,580,999 B2
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`asserts that the Petition challenges claims 1–6, whereas only claim 3 is at
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`issue in the underlying litigation. Id. Second, Petitioner argues that the
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`Petition and the underlying litigation present different grounds of
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`unpatentability and invalidity. Id. at 10. In particular, Petitioner contends
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`that the only unpatentability ground asserted here—obviousness over
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`Hayashida in view of Abowd—is not at issue in the underlying litigation.
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`Id. Rather, Petitioner points out that two of the four obviousness grounds in
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`the district court rely on NavTalk as a base reference, a third ground
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`combines Hayashida with Maruyama, which is not asserted here, and the
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`final ground relies on the Cyberguide system in combination with
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`Hayashida. Id. (citing Ex. 1047, 2). Although Abowd describes the
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`Cyberguide system, which is asserted as system prior art in the underlying
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`litigation, Petitioner argues that the Cyberguide/Hayashida obviousness
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`ground is materially different from the Hayashida/Abowd obviousness
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`ground asserted in the Petition. Id. According to Petitioner, only some
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`pertinent details of the Cyberguide system are described in Abowd, and the
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`proposed modified systems and motivations to combine will be significantly
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`different. Id.
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`Patent Owner contends that the district court ordered it to elect a
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`narrower set of claims in the underlying litigation and this narrowing should
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`have no impact on the Board’s decision whether to exercise discretion to
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`deny institution. PO Sur-reply 8. Patent Owner also contends that although
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`there are non-overlapping claims no longer at issue in the underlying
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`litigation, Petitioner itself acknowledges the substantial overlap between
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`independent claims 1, 5, and 6 by substantially relying on its claim 1
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`analysis for claims 5 and 6. Id. (citing Pet. 50–57). As for the asserted
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`grounds, Patent Owner argues that the combination of Hayashida and
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`Abowd in the Petition is substantially similar to the combination of
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`Cyberguide and Hayashida asserted in the underlying litigation because
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`Cyberguide is system prior art described in Abowd and developed by its
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`authors and Petitioner is relying on Abowd as part of its Cyberguide set of
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`references. Id. (citing Exs. 2012, 2015).
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`After considering the parties’ arguments and the record before us, we
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`determine that the asserted ground in the Petition is substantially the same as
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`the ground asserted in the underlying litigation. We agree with Patent
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`Owner that obviousness over the combination of Hayashida and Abowd is
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`substantially similar to obviousness over Cyberguide and Hayashida as
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`asserted in the underlying litigation. Cyberguide is system prior art, but in
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`the district court Petitioner relies on Abowd and two other publications as
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`evidence of “the features and functionalities” of Cyberguide. Ex. 2012, 1
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`(expert report explaining that the features and functionalities of the
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`Cyberguide system are described in various printed publications, including
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`Abowd2); Ex. 2015, 2 n.1 (Final Election of Prior Art indicating that the
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`Cyberguide system and its associated references are considered “one
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`reference” consistent with a court order). Importantly, the expert report’s
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`claim chart in the district court primarily quotes Abowd to show that
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`Cyberguide teaches limitations of claims 1 and 3. Ex. 2012, 1–27. Thus,
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`2 The district court expert report uses “Abowd” to refer to an article with the
`same author and title as the Abowd reference before us, but with an earlier
`date. Ex. 2012, 1. The numerous quotations from “Abowd” in the expert
`report suggest that its content is substantially the same as, if not identical to,
`that of the Abowd reference cited in the Petition. Compare Ex. 2012, 1–27,
`with Ex. 1005, 421–432. Neither party addresses the difference in the dates
`of Abowd, and we do not view the difference as materially impacting our
`analysis.
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`Petitioner appears to rely primarily on the same or similar teachings from
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`Abowd in the underlying litigation, albeit under the guise of Cyberguide
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`system prior art. Moreover, even though Petitioner argues that “only some
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`pertinent details . . . are described in the Abowd publication” (Pet. Reply 10),
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`Petitioner does not purport to show any material differences between its
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`unpatentability analysis based on Hayashida and Abowd here and its
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`invalidity analysis based on Hayashida and Cyberguide in the underlying
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`litigation. For these reasons, we find that the assertion of Hayashida and
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`Abowd in both proceedings likely will result in duplication of work and
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`create the potential for inconsistent decisions.
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`As for the challenged claims, independent claim 1 and dependent
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`claim 3 are at issue in both proceedings because claim 3 depends from
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`claim 1. See Ex. 2012, 1–27 (showing claim charts for claims 1 and 3 from
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`Petitioner’s expert report in the district court). In addition, as Patent Owner
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`points out, Petitioner acknowledges the substantial overlap between
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`independent claims 1, 5, and 6 by substantially relying on its claim 1
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`analysis for claims 5 and 6. PO Sur-reply 8 (citing Pet. 50–57). As for the
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`remaining dependent claims challenged here, claims 2 and 4, they do not add
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`limitations that are materially different from those of the claims at issue in
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`the underlying litigation. Indeed, for claims 2 and 4, Petitioner relies on the
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`same or similar teachings from Hayashida as it does for claim 1. For
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`claim 2, Petitioner relies on substantially the same disclosures in Hayashida
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`as its analysis of limitations of claim 1, identified by Petitioner as claim
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`elements 1(d)(i) and 1(d)(ii). Compare Pet. 31–36 (analysis of element
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`1(d)(i) citing Ex. 1004, Figs. 16, 17, 26, 32, 33, 46), with id. at 40–44
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`(analysis of claim 2 citing id. § IV(A)(i) (analysis of claim element 1(d)(i));
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`id. § IV(A)(ii) (analysis of claim element 1(d)(ii)); Ex. 1004, Figs. 17, 20,
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`32, 33). For claim 4, Petitioner relies on substantially the same disclosures
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`in Hayashida as its analysis of claim element 1(d)(i). Compare id. at 31–36
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`(analysis of element 1(d)(i) citing Ex. 1004, Figs. 16, 17, 26, 32, 33, 46),
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`with id. at 47–50 (analysis of claim 4 citing id. § IV(A)(i) (analysis of claim
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`element 1(d)(i)); Ex. 1004, Figs. 16, 17, 46).
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`This fourth Fintiv factor involves consideration of inefficiency
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`concerns and the possibility of conflicting decisions. Fintiv, Paper 11 at 12.
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`Therefore, “if the petition includes the same or substantially the same
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`claims, grounds, arguments, and evidence as presented in the parallel
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`proceeding, this fact has favored denial.” Id. As discussed, there is
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`substantial overlap between the grounds asserted in the underlying litigation
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`and those asserted in the Petition, so that institution of an inter partes review
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`likely will result in duplicative efforts by the Board and the trial court as to
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`how the references teach limitations of the challenged claims. Further, both
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`tribunals would address the material issues with respect to whether the
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`asserted prior art teaches the limitations of claims 1, 3, 5, and 6. Finally, the
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`remaining dependent claims challenged here raise similar issues as those
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`asserted in the underlying litigation. For these reasons, we determine that
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`this factor on balance favors the exercise of discretionary denial.
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`E. Fintiv Factor 5: Whether Petitioner is the Defendant in the
`Underlying Litigation
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`Both parties acknowledge that Petitioner here is the defendant in the
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`underlying litigation. Pet. Reply 10; PO Sur-reply 10. Because the trial
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`court may reach the overlapping issues before the Board would in a final
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`written decision, this factor favors the exercise of discretionary denial in this
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`case. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15, 15 (PTAB
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`May 13, 2020) (informative, designated July 13, 2020) (determining factor 5
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`weighs in favor of discretionary denial when the parallel proceeding
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`involves the same parties and the trial court may reach overlapping issues
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`before the Board would in a final written decision).
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`F. Fintiv Factor 6: Other Considerations
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`Under the sixth Fintiv factor, which takes into account any other
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`relevant circumstances, Patent Owner argues that Petitioner unreasonably
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`delayed in filing the Petition. Prelim. Resp. 15–18; PO Sur-reply 10.
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`Petitioner explains that the underlying litigation initially involved ten
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`different patents and “132 possibly-asserted claims,” and that it needed time
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`to locate relevant prior art and prepare petitions for inter partes review. Pet.
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`Reply 8. Having considered the particular factual circumstances of this case,
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`we do not consider Petitioner’s filing untimely.
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`Petitioner also presents extensive policy arguments against the
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`Board’s application of Fintiv and NHK in determining whether to exercise
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`discretion to deny institution under 35 U.S.C. § 314(a). Pet. Reply 1–7. We
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`need not address these arguments, as the Under Secretary of Commerce for
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`Intellectual Property and Director of the U.S. Patent and Trademark Office
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`has designated Fintiv and NHK precedential decisions of the Board.
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`As noted in Fintiv, a balanced assessment of factors may include
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`consideration of the merits. Fintiv, Paper 11 at 14–15. Although we do not
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`undertake here a full analysis of the merits, our initial inspection of the
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`record and the parties’ arguments suggests a potential deficiency in
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`Petitioner’s evidence supporting its contention that Abowd was publicly
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`accessible before the effective filing date of the ’999 patent. See Pet. 16;
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`Prelim. Resp. 24–35; Ex. 1009. This issue is also the subject of a pending
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`motion for partial summary judgment filed by Patent Owner in the
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`underlying litigation. See Paper 11, 2–3 (summarizing conference call with
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`the parties in which the summary judgment motion was discussed); Ex. 1057
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`(transcript of conference call). In a balanced assessment of the relevant
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`circumstances, and in view of the possible weakness in Petitioner’s showing
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`with regard to Abowd on the present record, this factor is neutral or weighs
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`slightly in favor of discretionary denial.
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`Based on the particular circumstances of this case, we determine that
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`G. Conclusion
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`instituting an inter partes review would be an inefficient use of Board
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`resources. As discussed above, the trial in the underlying litigation is
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`currently scheduled to begin in approximately four months and may
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`conclude several months before we would reach a final decision in this
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`proceeding. The district court and the parties have expended effort in
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`preparing for the upcoming trial that will address issues that substantially
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`overlap with those raised in the Petition. Further, based on our preliminary
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`assessment of the merits, we have identified a potential deficiency in
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`Petitioner’s evidence regarding the prior art status of Abowd. All of the
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`Fintiv factors discussed above either weigh in favor of exercising discretion
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`to deny institution or are neutral. On balance, after a holistic consideration
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`of the relevant facts, we conclude that efficiency and integrity of the system
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`are best served by denying institution. Thus, we exercise our discretion
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`under § 314(a) to deny institution of inter partes review
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`IV. ORDER
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`Accordingly, it is
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`ORDERED that the Petition is denied; and
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`FURTHER ORDERED that no inter partes review is instituted.
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`PETITIONER:
`
`Adam P. Seitz
`Paul R. Hart
`Jennifer C. Bailey
`ERISE IP, P.A.
`adam.seitz@eris