Case 5:19-cv-00036-RWS Document 646-1 Filed 03/08/21 Page 1 of 52 PageID #: 32960
`Case 5:19-cv-00036—RWS Document 646-1 Filed 03/08/21 Page 1 of 52 PageID #: 32960
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`EXHIBIT 1
`EXHIBIT 1
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`Case 5:19-cv-00036—RWS Document 646-1 Filed 03/08/21 Page 1 of 52 PageID #: 32960
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`EXHIBIT 1
`EXHIBIT 1
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`Case 5:19-cv-00036-RWS Document 646-1 Filed 03/08/21 Page 2 of 52 PageID #: 32961
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`Trials@uspto.gov
`571-272-7822
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`Paper 11
`Entered: June 19, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MAXELL, LTD.,
`Patent Owner.
`____________
`
`IPR2020-00199
`Patent 6,329,794 B1
`____________
`
`
`
`Before MINN CHUNG, 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
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`Apple Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
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`an inter partes review (“IPR”) of claims 1–3 and 5–14 (the “challenged
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`claims”) of U.S. Patent No. 6,329,794 B1 (Ex. 1001, “the ’794 patent”).
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`Petitioner filed a Declaration of Louis Hruska (Ex. 1003) with its Petition.
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`Patent Owner, Maxell, Ltd. (“Patent Owner”), filed a Preliminary Response
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`(Paper 6, “Prelim. Resp.”).
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`With our authorization (Paper 7), Petitioner also filed a Reply
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`(Paper 8, “Pet. Reply”) and Patent Owner filed a Sur-Reply (Paper 10, “PO
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`Sur-reply”) addressing whether we should exercise our discretion to deny
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`institution under 35 U.S.C. § 314(a).
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`We have authority to determine whether to institute an inter partes
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`review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C.
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`§ 314(a), we may not authorize an inter partes review unless the information
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`in the petition and the preliminary response “shows that there is a reasonable
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`likelihood that the petitioner would prevail with respect to at least 1 of the
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`claims challenged in the petition.” For the reasons that follow, we institute
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`an inter partes review as to claims 1–3 and 5–14 of the ’794 patent on all
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`grounds of unpatentability presented.
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`
`
`A.
`
`Real Parties-in-Interest
`
`I. BACKGROUND
`
`Petitioner identifies Apple Inc. as the real party-in-interest. Pet. 71.
`
`Patent Owner identifies Maxell, Ltd. as the real party-in-interest. Paper 5, 1.
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`
`
`B.
`
`Related Proceedings
`
`The parties identify the following proceedings related to the
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`’794 patent (Pet. 71; Paper 5, 1):
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`Maxell, Ltd. v. Apple Inc., No. 5:19-cv-00036 (E.D. Tex. Mar. 15,
`
`2019) (“the underlying litigation”);
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`Maxell, Ltd. v. ZTE Corp., No. 5:18-cv-00034 (E.D. Tex. Mar. 2,
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`2018); and
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`2
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`ZTE Corp. v. Maxell, Ltd., IPR2018-00241 (institution denied) (“the
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`’241 IPR”).
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`We further note that Petitioner’s arguments reference two other cases
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`involving the ’794 patent (Pet. 6; see also Ex. 1010):
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`Maxell, Ltd. v. Huawei Device USA, Inc., No. 5:16-cv-00178 (E.D.
`
`Tex. Nov. 18, 2016) (“the Huawei litigation”); and
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`Maxell, Ltd. v. ZTE Corp., No. 5:16-cv-00179 (E.D. Tex. Nov. 18,
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`2016).
`
`
`
`C.
`
`The ’794 patent
`
`The ’794 patent is directed to controlling power consumption in a
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`battery-operable information processing device. Ex. 1001, 1:6–11. Figure 1
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`of the ’794 patent is reproduced below.
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`Figure 1 depicts power supply section 101, which supplies power to various
`
`functions in an information processing device. Id. at 3:23–25. Power supply
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`
`
`3
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`section 101 includes battery 102 and power stabilizer/charging
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`controller 103. Id. at 3:25–28. Capacity detector 107 detects the remaining
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`capacity of battery 102. Id. at 3:34–35. Power supply section 101 is
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`connected to function device 1 110 and function device 2 111, each of which
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`implements functions of the information processing device. Id. at 3:42–44.
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`As examples of such functions, the ’794 patent mentions a modem function,
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`an audio communication function, and a videophone function. Id. at 1:18–
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`21, 1:31–35.
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`Changeover controller A 104 switches between activation and
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`stopping of power to function device 1 and function device 2, whereas
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`changeover controller B 105 switches between activation and stopping of
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`power to function device 1. Id. at 3:29–34. Controller 108 controls
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`changeover controllers A, B and sends power consumption reduction
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`instructions to function devices 1, 2. Id. at 3:35–38.
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`Priority levels are set for individual function devices and battery time
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`can be maintained in a prioritized manner for function devices with higher
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`priorities. Id. at 2:21–26. Power consumption reduction instructions are
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`sent to function devices with lower usage priorities when battery capacity
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`decreases below certain thresholds levels. Id. at 1:55–59. As a result,
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`lower-priority function devices will be powered down before higher-priority
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`function devices. Id. at 1:59–62. This power management method allows a
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`user to continue using higher-priority functions for a longer period of time
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`by reducing power to lower-priority functions as the battery capacity is
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`depleted. Id. at 1:62–67.
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`The ’794 patent issued from an application that was filed
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`September 7, 2000, which claims priority to a Japanese patent application
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`4
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`filed on May 22, 2000. Id., codes (22), (30). As discussed below, Petitioner
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`attempts to establish that, at a minimum, its asserted references qualify as
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`prior art relative to either the May 22, 2000, filing date of the Japanese
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`application (i.e., the earliest possible effective filing date) or the
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`September 7, 2000, filing date of the U.S. application.
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`
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`D.
`
`Illustrative Claim
`
`Of the challenged claims, claims 1 and 9 are independent. Claims 2,
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`3, and 5–8 depend directly or indirectly from claim 1, and claims 10–14
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`depend directly or indirectly from claim 9. Claim 1 is illustrative of the
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`challenged claims and recites:
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`1.
`
`An information processing device comprising:
`
`at least two function devices equipped with independent
`functions; and
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`a power supply circuit for supplying power to each of
`said function devices, said power supply circuit including a
`battery, a capacity detector for detecting a remaining capacity
`of said battery, and a controller for controlling operation of said
`function devices based on said remaining capacity;
`
`wherein when said capacity detector detects remaining
`battery capacities NA and NB (where NA>NB), said controller
`sends a power consumption reduction instruction to each
`function device included in a set GA if NA is detected, each
`function device of the set GA having a lower usage priority,
`and to each function device of a set GB if NB is detected, each
`function device of set GB is not included in said set GA.
`
`Ex. 1001, 8:29–46.
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`
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`5
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`E.
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`Prior Art
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`Petitioner relies on the following prior art:
`
`Japanese Patent Application Publication No. H10-289038,
`published Oct. 27, 1998 (Ex. 1004, “Hikishima”);1
`
`Japanese Utility Model Application Publication No.
`U3064314, published Sept. 16, 1999 (Ex. 1005, “Tagoshi”);2
`
`Japanese Patent Application Publication No. H7-281798,
`published Oct. 27, 1995 (Ex. 1006, “Tanaka”);3
`
`U.S. Patent No. 4,933,785, filed Mar. 1, 1988, issued
`June 12, 1990 (Ex. 1007, “Morehouse”);
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`U.S. Patent No. 6,314,308 B1, filed July 2, 1998, issued
`Nov. 6, 2001 (Ex. 1008, “Sheynblat”); and
`
`U.S. Patent No. 5,870,685, filed Sept. 4, 1996, issued
`Feb. 9, 1999 (Ex. 1009, “Flynn”).
`
`
`
`F.
`
`The Asserted Grounds
`
`Petitioner challenges claims 1–3 and 5–14 of the ’794 patent on the
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`following grounds (Pet. 5):
`
`
`1 Hikishima is a Japanese-language publication (Ex. 1004, 10–16) that was
`filed with an English-language translation (id. at 2–8) and a declaration
`attesting to the accuracy of the translation (id. at 1). Our citations to
`Hikishima herein refer to the translation.
`
`2 Tagoshi is a Japanese-language publication (Ex. 1005, 15–26) that was
`filed with an English-language translation (id. at 2–13) and a declaration
`attesting to the accuracy of the translation (id. at 1). Our citations to Tagoshi
`herein refer to the translation.
`
`3 Tanaka is a Japanese-language publication (Ex. 1006, 12–20) that was filed
`with an English-language translation (id. at 2–10) and a declaration attesting
`to the accuracy of the translation (id. at 1). Our citations to Tanaka herein
`refer to the translation.
`
`6
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`Claims Challenged
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`35 U.S.C. §
`
`References
`
`1–3, 8–10, 14
`
`5, 6, 11, 12
`
`6, 12
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`7, 13
`
`1–3, 8–10, 14
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`5, 6, 11, 12
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`6, 12
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`7, 13
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`
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`103(a)4
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`103(a)
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`103(a)
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`103(a)
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`103(a)
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`103(a)
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`103(a)
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`103(a)
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`Hikishima, Tagoshi
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`Hikishima, Tagoshi, Tanaka
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`Hikishima, Tagoshi, Tanaka,
`Morehouse
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`Hikishima, Tagoshi, Sheynblat
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`Hikishima, Tagoshi, Flynn
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`Hikishima, Tagoshi, Flynn,
`Tanaka
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`Hikishima, Tagoshi, Flynn,
`Tanaka, Morehouse
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`Hikishima, Tagoshi, Flynn,
`Sheynblat
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`II. ANALYSIS
`
`We now consider Petitioner’s asserted grounds and Patent Owner’s
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`arguments in the Preliminary Response to determine whether Petitioner has
`
`met the “reasonable likelihood” standard for institution under 35 U.S.C.
`
`§ 314(a).
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`
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`A.
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`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
`
`
`4 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 ’794 patent was filed before March 16, 2013 (the effective date
`of the relevant amendments), the pre-AIA versions of §§ 102, 103, and 112
`apply.
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`7
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`matter, as a whole, would have been obvious at the time the invention was
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`made to a person having ordinary skill in the art to which said subject matter
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`pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`
`The question of obviousness is resolved on the basis of underlying factual
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`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).
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`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
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`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d
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`559, 562 (CCPA 1978)).
`
`
`
`B.
`
`Level of Ordinary Skill in the Art
`
`Citing testimony from Mr. Hruska, Petitioner contends a person
`
`having ordinary skill in the art would have had
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`a Bachelor of Science degree in an Engineering discipline
`relevant to the technology area of the ’794 Patent that involves
`coursework relating to power supply, control systems, or
`related technologies (e.g., Electrical Engineering, Computer
`Engineering, Computer Science, Chemical Engineering, or
`equivalent) with at least two years of experience in power
`supply, control systems, or related technologies.
`
`Pet. 3 (citing Ex. 1003 ¶ 26). Patent Owner does not dispute Petitioner’s
`
`definition of the level of ordinary skill in the art. Prelim. Resp. 22. For
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`purposes of this Decision, we adopt Petitioner’s definition. On the present
`
`record, we are satisfied that this definition comports with the level of skill
`
`8
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`necessary to understand and implement the teachings of the ’794 patent and
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`the asserted prior art.
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`
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`C.
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`Claim Interpretation
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`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.”
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`37 C.F.R. § 42.100(b) (2019). Accordingly, our claim construction standard
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`is the same as that of a district court. See id. Under the standard applied by
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`district courts, claim terms are generally given their plain and ordinary
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`meaning as would have been understood by a person of ordinary skill in the
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`art at the time of the invention and in the context of the entire patent
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`disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)
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`(en banc). “There are only two exceptions to this general rule: 1) when a
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`patentee sets out a definition and acts as his own lexicographer, or 2) when
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`the patentee disavows the full scope of a claim term either in the
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`specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am.
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`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
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`Construing a claim term under 35 U.S.C. § 112 ¶ 6 involves two steps:
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`identifying the claimed function and then determining what structure, if any,
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`disclosed in the specification corresponds to the claimed function.
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`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015). To
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`determine whether § 112 ¶ 6 applies to a claim limitation, the essential
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`inquiry is “whether the words of the claim are understood by persons of
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`ordinary skill in the art to have a sufficiently definite meaning as the name
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`for structure.” Id. at 1348. If the limitation uses the word “means,” “there is
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`9
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`a rebuttable presumption that § 112, para. 6 applies; if not, there is a
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`rebuttable presumption that the provision does not apply.” Diebold Nixdorf,
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`Inc. v. Int’l Trade Comm’n, 899 F.3d 1291, 1298 (Fed. Cir. 2018).
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`
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`1.
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`“Function Device” and “Component Device” (Claims 1 and 9)
`
`Petitioner proposes constructions of the limitations “function devices
`
`equipped with independent functions” (claim 1) and “component devices for
`
`performing different functions” (claim 9) based on a previous construction
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`by a district court in a case between Patent Owner and other parties. Pet. 6–
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`7; see also Ex. 1010, 98–103 (construction of these limitations by district
`
`court in the Huawei litigation). The constructions, which apply 35 U.S.C.
`
`§ 112 ¶ 6, are set forth below (Pet. 6–7; Ex. 1010, 98–103):
`
`“function devices equipped
`with independent functions”
`(claim 1)
`
`
`“component devices for
`performing different
`functions” (claim 9)
`
`
`Function: equipped with independent
`functions
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`Structure: modem devices, audio
`communication devices and videophone
`devices, or equivalents thereof.
`
`Function: performing different functions
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`Structure: modem devices, audio
`communication devices and videophone
`devices, or equivalents thereof.
`
`Petitioner notes that the parties have agreed to apply these
`
`constructions in the underlying litigation. Pet. 6; Ex. 1011, 3. Indeed, the
`
`court in the underlying litigation ultimately adopted these constructions in its
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`Claim Construction Memorandum and Order. See Ex. 1048, 6–8. Patent
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`Owner does not dispute these constructions at this juncture. Prelim. Resp.
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`22.
`
`10
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`Petitioner’s constructions under 35 U.S.C. § 112 ¶ 6 appear to be
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`premised on the idea that the terms “function device” and “component
`
`device” have no recognizable structural connotation to an ordinarily skilled
`
`artisan. Indeed, the specification of the ’794 patent provides a vague
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`description that ties these terms to their function. See Ex. 1001, 6:15–18
`
`(“The devices specific to the functions 1, 2 are provided through the function
`
`devices 1, 2.”). In addition, Patent Owner acknowledged in the Huawei
`
`litigation that “both terms are means-plus-function terms having the same
`
`construction.” Ex. 1010, 98. As such, we find that treatment under § 112
`
`¶ 6 is appropriate.
`
`Petitioner contends the claimed functions are “equipped with
`
`independent functions” and “performing different functions” based on the
`
`language of the claims themselves (Pet. 7); we see no reason to depart from
`
`those constructions. For corresponding structure, Petitioner proposes
`
`“modem devices, audio communication devices and videophone devices, or
`
`equivalents thereof.” Id. These structures are supported in the specification
`
`of the ’794 patent. See Ex. 1001, 1:18–21, 1:31–35; see also Ex. 1010, 101–
`
`02 (analysis of the corresponding structure by the court in the Huawei
`
`litigation). Accordingly, we adopt Petitioner’s proposed constructions for
`
`“function device” and “component device” as set forth above.
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`
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`2.
`
`“Capacity Detector” (Claims 1 and 9)
`
`Petitioner contends the limitation “capacity detector [for] detecting a
`
`remaining capacity of said battery” in claims 1 and 9 should be construed
`
`under 35 U.S.C. § 112 ¶ 6 because “capacity detector” is a nonce word.
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`Pet. 7–8. Patent Owner does not contest Petitioner’s construction here, but
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`11
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`in the underlying litigation Patent Owner contended that the term should be
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`given its plain and ordinary meaning. Ex. 1011, 27–29; Ex. 1048, 19–20.
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`As noted by Petitioner in its Reply (Pet. Reply 10), the court in the
`
`underlying litigation ultimately found that § 112 ¶ 6 did not apply and,
`
`rather, applied the plain and ordinary meaning of “capacity detector.”
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`Ex. 1048, 23.
`
`The lack of the words “means for” in this limitation creates a
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`rebuttable presumption that § 112 ¶ 6 does not apply. See Diebold, 899 F.3d
`
`at 1298. Furthermore, the specification of the ’794 patent describes capacity
`
`detector circuit 107 as a part of power supply circuitry 101. See, e.g.,
`
`Ex. 1001, 3:25–38, 4:48, Fig. 1. On the present record, we are satisfied that
`
`is evidence of sufficiently definite structure for the term “capacity detector.”
`
`See Williamson, 792 F.3d at 1348. Thus, we do not apply § 112 ¶ 6, and we
`
`instead apply the plain and ordinary meaning to this limitation.
`
`
`
`3. Whether Sending a Power Consumption Reduction Instruction
`to a Function Device Includes Cutting Off Power to the
`Function Device
`
`Claims 1 and 9 both recite a controller sending a “power consumption
`
`reduction instruction” to a function device. See Ex. 1001, 7:39–45, 9:17–24.
`
`Petitioner’s arguments require us to consider whether cutting off power to a
`
`function device is within the scope of sending power consumption reduction
`
`instructions to a function device. See Pet. 35–36, 42 (both mapping “said
`
`controller sends a power consumption reduction instruction to each function
`
`device” to the control of a power switch feeding power to a function device).
`
`Patent Owner argues that a controller opening a switch and stopping power
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`12
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`to a function device is not the same as sending a power consumption
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`reduction instruction to the function device. See Prelim. Resp. 34.
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`The specification of the ’794 patent expressly states that, in one of its
`
`embodiments, “a power consumption reduction instruction is assumed to
`
`mean cutoff from the power supply. Thus, in the following description the
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`power consumption reduction instruction will be referred to as a power
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`supply cutoff warning.” Ex. 1001, 4:52–56 (emphasis added). In this way,
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`the specification equates the act of cutting off power to a “power
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`consumption reduction instruction.” This is also reflected in the
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`specification’s treatment discussion of changeover controller A 104 and
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`changeover controller B 105:
`
`The power supply section 101 includes: . . . a changeover
`controller A 104 capable of switching between activation and
`stopping of power to a function device 1 and a function
`device 2; a changeover controller B 105 capable of switching
`between activation and stopping of power to the function
`device 1; . . . and a controller 108 controlling the changeover
`controllers A, B and sending power consumption reduction
`instructions to the function devices 1, 2.
`
`Id. at 3:25–38 (emphases added). As such, changeover controllers A, B may
`
`stop power to the function devices, which is associated with the sending of a
`
`“power consumption reduction instruction” to the function devices.
`
`Accordingly, for purposes of this decision, we determine that cutting off
`
`power to a function device is within the scope of sending a “power
`
`consumption reduction instruction” to a function device.
`
`
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`4.
`
`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
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`13
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`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only
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`construe terms ‘that are in controversy, and only to the extent necessary to
`
`resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci. &
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`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
`
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`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. 2–19; PO
`
`Sur-reply 1–10. Petitioner contends it filed its Petition timely and that there
`
`is little overlap with the underlying litigation. Pet. 8–11; Pet. Reply 1–10.
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`Institution of inter partes review is discretionary. Harmonic Inc. v.
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`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]
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`proceeding.”); 35 U.S.C. § 314(a) (“The Director may not authorize an inter
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`partes review to be instituted unless the Director determines that the
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`information presented in the petition filed under section 311 and any
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`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
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`challenged in the petition.” (emphasis added)). In Apple Inc. v. Fintiv, Inc.,
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`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)
`
`(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,
`
`14
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`parallel district court action and whether such action provides any basis for
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`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
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`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
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`and Sur-reply. Paper 7.
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`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 system are best served by denying or instituting review.
`
`Fintiv at 6.
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`
`
`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
`
`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
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`15
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`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 eight months before a
`
`Final Written Decision issues” here and that a delay in the trial date is
`
`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 3 (quoting Ex. 2020). And, according to Patent Owner,
`
`16
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`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 (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,
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`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, 2013–2015). Patent Owner also notes that
`
`fact discovery has closed and that expert discovery is underway and closes
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`June 25, 2020. Id. (citing, inter alia, Ex. 2016).
`
`17
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`At least some of the work underway or already completed in the
`
`underlying litigation may have relevance to issues in the Petition, including
`
`claim construction and expert discovery. Nevertheless, the potential
`
`relevance of such work is diminished by the fact that Petitioner’s
`
`unpatentability challenges here do not overlap significantly with Petitioner’s
`
`invalidity contentions in the underlying litigation. See infra § II.D.4
`
`(analyzing the lack of overlap). In addition, 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 at
`
`least some of the investment by the court and the parties in the underlying
`
`litigation may be relevant to this case, we find this factor moderately 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. Petitioner
`
`emphasizes that the primary reference in this case, Hikishima, is not asserted
`
`in the underlying litigation. Id. at 9 (citing Ex. 1047, 3). Petitioner also
`
`notes that Tagoshi, which is asserted in the underlying litigation, is used
`
`“only as an alternative teaching” here. Id. Petitioner additionally notes that
`
`Flynn, a secondary reference in the underlying litigation, was used here “in
`
`the event [Patent Owner] took a position that it ended up not taking in the
`
`preliminary response.” Id. Petitioner further notes that Nonogaki, a primary
`
`reference in the underlying litigation, is not asserted here. Id. Finally,
`
`Petitioner notes that only claims 1 and 14 are challenged in the underlying
`
`litigation, which is a subset of the 13 claims challenged here. Id. at 9–10.
`
`18
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`Patent Owner argues “[t]he issues in this proceeding are substantially
`
`the same as in the District Court Action.” PO Sur-reply 7, 9–10. Patent
`
`Owner notes that there was substantial overlap between the two proceedings
`
`prior to Patent Owner’s Final Election of Asserted Claims and Petitioner’s
`
`Final Election of Prior Art in the underlying litigation. Id. at 7 (citing
`
`Exs. 1047, 2018). Patent Owner argues that Petitioner’s “Tagoshi chart
`
`from the District Court Action reveals [Petitioner] relies on many of the
`
`same citations in the Petition.” Id. Patent Owner also notes that Nonogaki
`
`is part of the record here and is cited by Mr. Hruska in his declaration. Id. at
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`7 (citing Ex. 1003 ¶ 46; Ex. 1022). 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. at 8.
`
`We agree with Petitioner that there is very little overlap in the prior art
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`and claims asserted in the underlying litigation and in this proce
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