Trials@uspto.gov
`571-272-7822
`
`Paper13
`Date: July 28, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`Vv,
`
`SEVEN NET WORKS, LLC,
`Patent Owner.
`
`IPR2020-00255
`Patent 9,516,127 B2
`
`Before THU A. DANG, KARL D. EASTHOM,and JONI Y. CHANG,
`Administrative Patent Judges.
`
`CHANG,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. $314
`
`
`571-272-7822
`
`Paper13
`Date: July 28, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`Vv,
`
`SEVEN NET WORKS, LLC,
`Patent Owner.
`
`IPR2020-00255
`Patent 9,516,127 B2
`
`Before THU A. DANG, KARL D. EASTHOM,and JONI Y. CHANG,
`Administrative Patent Judges.
`
`CHANG,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. $314
`
`
`
`IPR2020-00255
`Patent 9,516,127 B2
`
`I.
`
`INTRODUCTION
`
`Apple Inc.(“Petitioner”)filed a Petition requesting an interpartes
`
`review (“IPR”) of claims 1—50 (“the challenged claims”) of U.S. Patent No.
`
`9,516,127 B2 (Ex. 1001, “the ’127 patent”). Paper 3 (“Pet.”), 1. Seven
`
`Networks, LLC (“Patent Owner”? filed a Preliminary Response (Paper9,
`
`“Prelim. Resp.”).
`
`Under 35 U.S.C. § 314(a), an interpartes review may notbeinstituted
`
`unless the information presentedin the petition “showsthat there is a
`
`reasonablelikelihood that the petitioner would prevail with respect to at
`
`least 1 of the claims challenged in the petition.” For the reasonsstated
`
`below, we determinethat Petitioner has established a reasonablelikelihood
`
`that it would prevail with respect to at least one claim. We herebyinstitute
`
`an interpartes reviewasto all of the challenged claims of the ’127 patent
`
`and all ofthe grounds of unpatentability presented in the Petition.
`
`A. Related Matter
`
`Theparties indicate that the ’127 patent is involved in Seven
`
`Networks, LLC v. Apple Inc., Case No. 2:19-cv-115 (E.D. Tex.), Pet. 74-75;
`
`Paper 6,1. The’127 patent also was involvedin the following IPR
`
`proceedings:
`
`Google LLC v. SEVENNetworks, LLC, IPR2018-01051,
`Paper 33 (PTAB Feb. 14, 2019) (terminatedafter institution);
`Google LLC v. SEVENNetworks, LLC, IPR2018-01052, Paper
`33 (PTAB Feb. 14, 2019) (terminatedafter institution);
`
`Samsung Elecs. Co., Ltd. v. SEVENNetworks, LLC,
`IPR2018-01106, Paper 29 (PTAB Jan. 11, 2019) (terminated
`after institution);
`
`2
`
`
`
`IPR2020-00255
`Patent 9,516,127 B2
`
`Samsung Elecs. Co., Ltd. v. SEVENNetworks, LLC, IPR2018-
`01108, Paper 30 (PTAB Jan. 11, 2019) (terminated after
`institution);
`ZTE USA, Inc. v. SEVENNetworks, LLC, IPR2019-00460,
`Paper 18 (PTAB June6, 2019) (terminated before institution);
`Samsung Elecs. Co., Ltd. v. SEVENNetworks, LLC, IPR2019-
`00457, Paper 11 (PTAB Jan. 29, 2019) (terminated before
`institution);
`Samsung Elecs. Co., Ltd. v. SEVENNetworks, LLC, IPR2019-
`00458, Paper 9 (PTAB Jan.29, 2019) (terminated before
`institution). Paper 6, 1—2.
`Petitioner also filed anotherparallel Petition (“the ’254 IPR Petition”),
`
`challenging the same claims of the same patent. IPR2020-00254, Paper3.
`
`Petitioner filed a Notice rankingits Petitions in the orderthat Petitioner
`
`wishes the Board to consider the merits—namely, ranking the instant
`
`Petition first and the ’254 Petition second. Paper 2 (“Notice”). We
`
`concurrently enter a Decision denyinginstitution in IPR2020-00254.
`
`B. The ’127patent
`
`The ’127 patentclaimspriority to U.S. Provisional Application No.
`
`61/805,070 (the “’070 application”), which wasfiled on March 25, 2013.
`
`Ex. 1001, codes (54), (60). The ’127 patent discloses a system and method
`
`“for tracking resources used bytriggers such as alarmsand timersthat are
`used by mobile applications to schedule tasks and intelligently manipulating
`
`the timing of the triggers to optimize usage of resources.” Jd. at code (57).
`
`
`
`IPR2020-00255
`Patent 9,516,127 B2
`
`Figure 1A-1 of the ’127 patent is reproduced below.
`
`
`Set A1 for
`
`(T + 8) saconds
`
`
`Set Actuai
`Time
`
`
` C+ 15)
`seconds
`Intelligent
`
`
`
`
`
`Use Resource
`
`Fes rariZ
`Alarm_Manager [aren itesa
`
`15) seconds
`Execute At, A2, AZ at
`GetintelligentTimeFor:
`
`At, A2, A3
`
` Resources
`
`
`
`
`
`Resource
`Utilization
`
`FIG. 1A-1
`
`Figure 1A-1 of the ’127 patentillustrates an example resource
`
`utilization tracking andintelligent alarm managementoftriggers across
`
`multiple applications on a mobile device. Jd. at 5:15—20. In particular,
`
`Figure 1A-1 showsintelligent alarm manipulator and resource tracker
`
`module 114 havingintelligent alarm manger 115 and resourceutilization
`
`tracker 116. Jd. Applications 101, 105, and 107 are exemplary applications
`
`of a mobile device, which canset alarmsfor different times to perform
`
`different tasks. Id. at 5:24—26. Alarms Al, A2, and A3 are intercepted
`
`and/or tracked by intelligent alarm manger 115, and they use resources 102,
`
`including battery 109, network 111, and CPU 113. Jd. at 5:29-33. Resource
`
`utilization tracker 116 tracks or monitors the usage of various resources by
`
`alarms Al, A2, and A3, or taskstriggered by the alarms. /d. at 5:33-36.
`
`For example, assuming that alarm Al wakes up the mobile device from the
`
`4
`
`
`
`IPR2020-00255
`Patent 9,516,127 B2
`
`sleep mode, whenalarm A1is triggered, the mobile device’s battery/power
`
`resource and CPU resource can beutilized. Jd. at 5:36—39.
`
`C. Illustrative Claim
`
`Ofthe challenged claims, claims 1, 10, 17, 24, 33 and 42 are
`
`independent. Claims 2-9 depend from claim 1; claims 11—16 depend from
`claim 10; claims 18-23 depend from claim 17; claims 25-32 depend from
`
`claim 24; claims 34—41 depend from claim 33; and claims 43-50 depend
`
`from claim 42. Claim 1 is illustrative:
`
`1. A method for managing resources on a mobile device,
`comprising:
`entering a power save mode based on a backlight status and
`sensed motion of a mobile device;
`
`delaying a timing of one or more triggers
`applications on the mobile device,
`wherein the timing is delayed such that the triggers execute
`within a window oftime,
`
`for multiple
`
`wherein at least a subset of the triggers are associated with
`wakelocks; and
`
`exiting the power save mode whenthe backlight of the mobile
`device turns on or motion of the mobile device is sensed.
`
`Ex. 1001, 23:60—24:5.
`
`
`
`IPR2020-00255
`Patent 9,516,127 B2
`
`D. Prior Art Relied Upon
`
`Petitioner relies upon the referenceslisted below (Pet. 2):
`
`
`
`
`
`
`
`
`Aleksic, US 2008/0057894 Al
`
`Hackborn, US 8,280,456 B2
`
`Kim, US 2012/0315960 Al
`
`
`Mar. 6, 2008
`
`Oct. 2, 2012
`
`Dec. 13, 2012
`
`1007
`
`1008
`
`1016
`
`
`
`
`
`
`
`
`
`E. Asserted Grounds ofUnpatentability
`
`Petitioner asserts the following groundsof unpatentability (Pet.1):
`
`cis|Bass|Retrnces
`
`
`
`
`
`
`
`
`
`24-26, 28, 29, 32-34,36,
`.
`
`37, 40-44, 46, 47, 50 § 103|Chueh, Jiang, Kim
`
`
`
`27, 35, 45 § 103|Chueh, Jiang, Kim, Hackborn
`
`30, 31, 38, 39, 48, 49 § 103|Chueh, Jiang, Kim, Backholm
`
`
`
`
`03
`
`
`
`IPR2020-00255
`Patent 9,516,127 B2
`
`II. ANALYSIS
`
`A. Discretionary Denial Under 35 U.S.C. § 314(a)
`
`Institution of an interpartes review is discretionary. Section 314(a)
`
`of title 35 of the United States Code providesthat “[t]he Director may not
`
`authorize an inter partes review to beinstituted unless the Director
`
`determinesthat the information presented in the petition .. . and any
`
`response... . showsthat there is a reasonablelikelihood that the petitioner
`
`would prevail with respectto at least 1 of the claims challenged in the
`petition.” The Supreme Court ofthe United States (“the Supreme Court”)
`
`has explained that, because § 314 includes no mandate to institute review,
`
`“the agency’s decision to denyapetition is a matter committed to the Patent
`
`Office’s discretion.” Cuozzo Speed Techs., LLC v. Lee, 1368.Ct. 2131,
`
`2140 (2016); see also Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356,
`
`1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is
`
`permitted, but never compelled, to institute an IPR proceeding”). The
`
`Director has delegated his authority under § 314(a) to the Board. 37 C.F.R.
`
`§ 42.4(a) (“The Board institutes the trial on behalf of the Director.”).
`
`In this proceeding, Patent Ownerarguesthat we should exercise
`
`discretion to deny the instant Petition, as in NHK Spring,“because ajury in
`
`the concurrentdistrict court litigation between the sameparties will resolve
`
`the ’127 patent’s validity over substantially the sameprior art and arguments
`
`in a trial scheduled to begin 9.5 monthsbefore the final written decisions
`
`would be dueif instituted.” Prelim. Resp. 1-36 (citing NHK Spring Co.v.
`
`
`
`IPR2020-00255
`Patent 9,516,127 B2
`
`Intri-Plex Techs., Inc.,1PR2018-00752, Paper 8 (PTAB Sept. 12, 2018)
`
`(precedential)).!
`
`In AppleInc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar.
`20, 2020) (precedential) (““Fintiv’), the Board ordered supplementalbriefing
`on a nonexclusivelist of factors for consideration in analyzing whetherthe
`
`circumstancesofa parallel district court action are a basis for discretionary
`
`denial oftrial institution under NHK. Fintiv, Paper 11 at5—16. Those
`
`factors include:
`
`1. whether the court granted a stay or evidence exists that one
`may be grantedif a proceedingis 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 betweenissuesraised in the petition andin the parallel
`proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the sameparty; and
`
`6. other circumstances that impact
`discretion, including the merits.
`Id. at 5-6. We authorized the parties to address these factors in a Reply
`
`the Board’s exercise of
`
`(Paper11, “Pet. Reply”) and Sur-reply (Paper 12, “Sur-reply”). We now
`
`' Patent Owneralso arguesthat the Petition filed in IPR2020-00254 should
`be denied for improperparallel petitioning and submitted the same
`arguments in IPR2020-00254. Prelim. Resp. 37-52; IPR2020-00254, Paper
`9, 37-52. We address those arguments in our Decision denyinginstitution
`entered concurrently in IPR2020-00254.
`8
`
`
`
`IPR2020-00255
`Patent 9,516,127 B2
`
`consider these factors to determine whether we should exercise discretion to
`
`deny institution under § 314(a). In evaluating the factors, we take a holistic
`
`view of whetherefficiency andintegrity of the system are best served by
`
`denyingor instituting review. Fintiv, Paper 11 at 6.
`
`Factor 1: whether the court granted a stay or evidence exists
`that one may be granted ifa proceedingisinstituted
`
`Patent Ownerarguesthat“[i}]n the District Court Action, Petitioner
`
`has not movedfora stay or indicated that it would.” Prelim. Resp. 18;
`
`Sur-reply 2-4. Patent Owneralso argues that a motion for stay is unlikely in
`
`this case, even if instituted, becausethe district court “has repeatedly
`
`declined to stay cases, even overinstituted IPRs, when the motionto stay is
`
`broughtlate in the case,”citing to three decisions denying stays. Prelim.
`
`Resp. 19-21; Sur-reply 2-3.
`
`Petitioner argues that institution would resolve efficiently the issue of
`
`the ’127 patent’s invalidity and the simplification would increasegreatly the
`
`likelihood ofa district court stay. Pet. Reply 4 (citing NFC Techs. LLC v.
`
`HTC Am., Inc., Case No. 13-cv-1058, 2015 WL 1069111 (E.D. Tex. Mar.
`
`11, 2015) (“the most important factor bearing on whetherto grant a stay...
`
`is the prospect that the interpartes review proceeding will result in
`
`simplification of the issues”); Uniloc USA, Inc. v. Samsung Elecs. Am., Inc.,
`
`Case No. 2:16-cv-642-JRG,2—3 (E.D. Tex. Jun. 18, 2017) (granting stay in
`
`view ofthe “significant likelihood that the... IPR proceedingswill
`
`streamline the scope of this case”’)). Further, Petitioner contendsthat
`
`institution of interpartes review against the ’127 patent and other Seven
`
`
`
`IPR2020-00255
`Patent 9,516,127 B2
`
`patents has the potential to simplify other proceedings, “by addressing prior
`art otherwise raised but left unaddressedin settled IPR challengesfiled by
`Seven’s earlier targets,” and “by relieving future courts of the need to
`address the same during Seven’s seriallitigation campaign.” Jd. at 4—5.
`
`Onthe present record,neither party has produced evidencethata stay
`
`has been requestedor that the Eastern District of Texas has considered a stay
`
`in this case. Petitioner’s assertion that institution “greatly increases the
`
`likelihood of a District Court stay” (Pet. Reply 4) is not sufficient evidence
`
`that a stay will likely be granted. A court determines whetherto grant a stay
`
`based on the facts and circumstancesof each specific case. Although Patent
`
`Ownercites to three decisions denying stays (Prelim. Resp. 19-21), we
`
`decline to infer, based on actions taken in different cases with differentfacts,
`
`howthe district court would rule should a stay be requested bythe parties in
`
`the case here.
`
`Thus, wefind that this factor does not weigh for or against our
`
`exercising our discretion to denyinstitution under § 314(a).
`
`Factor 2: proximity ofthe court’s trial date to the Board’s
`projected statutory deadlinefor afinal written decision
`
`Theparties agree that the trial in the Eastern District of Texas
`
`(“District Court’) currently is scheduled to begin on November2, 2020.
`
`Patent Ownerarguesthat “[t]he trial is scheduled to begin on November2,
`
`2020, 9% months before the August 18, 2021 FWD deadline, and thatis after
`
`the parties already pushed backthetrial date due to COVID-19.” Prelim.
`
`Resp. 24; Sur-reply 4-5. However, Petitioner argues that “[t]he District
`
`10
`
`
`
`IPR2020-00255
`Patent 9,516,127 B2
`
`Court in this case is one of the busiest patent courts in the country”andthat
`
`“there are eighteen other cases scheduled to begin jury selection on
`November2, including a numberoflarge patent cases.” Pet. Reply 5 (citing
`Ex. 1050, 1—9 (calendar eventsset for Nov. 2, 2020, E.D. Tex, June 3,
`2020)) (emphasis added). Petitioner also argues that “given the inevitability
`
`of further COVID-19 outbreaks, further scheduling issues cannot be ruled
`
`out.” Jd. (citing Ex. 1047, 1).
`
`If the District Court’s trial date is earlier than the projected statutory
`
`deadline, the Board generally has weighedthis factor in favor of exercising
`
`authority to deny institution under § 314(a). Fintiv, Paper 11 at9. However,
`there are variables contributing to the uncertainty that the jurytrial will
`
`occur on November2, 2020. First, as Petitioner points out, the Eastern
`
`District of Texas currently has eighteen separate trials scheduled to begin on
`
`November2, 2020. Pet. Reply 5; Ex. 1050, 1-9. Second, the Coronavirus
`
`disease 2019 (“COVID-19”) pandemic already disrupted the trial date once,
`
`andthe situation is evolving daily. See Ex. 1040 (District Court scheduling
`
`order movingthetrial date from September 14, 2020 to November2, 2020,
`
`as agreed by the parties); Ex. 2002 (same).
`A previous agreement to extend scheduling order dates and
`uncertainty as to whetherthetrial will actually go forward on the presently
`
`scheduledtrial date may diminish the extent to which this factor weighs in
`
`favorof exercising discretion to denyinstitution. See SandRevolutionI,
`
`LLC v. Continental Intermodal Group — Trucking LLC, IP R2019-01393,
`
`Paper 24 at 9-10 (June 16, 2020) (informative) (“because ofthe numberof
`times the parties have jointly movedfor andthedistrict court agreed to
`
`11
`
`
`
`IPR2020-00255
`Patent 9,516,127 B2
`
`extend the scheduling order dates .. . and the uncertainty that continues to
`surround the scheduledtrial date, we find that this factor weighs marginally
`
`in favorof not exercising discretion to deny institution under 35 U.S.C.
`§ 314(a)”). Even so, given the substantial gap of 9 '2 months betweenthe
`trial date and the expectedfinal written decision deadline in this proceeding,
`it is unclear, based on the presentrecord,that the trial date would be delayed
`to a date after a final written decision in this proceedingasa result of
`
`COVID-19.
`
`Thus, given the District Court’s currently scheduledtrial date falls
`over nine monthspriorto the projected statutory deadline for a final written
`decision, but accounting for the previous agreement to extend scheduling
`order dates and uncertainty as to whetherthetrial actually will start on
`currently scheduleddate, we find that this factor weighs in favor of
`exercising our discretion to deny institution under § 314(a).
`
`investment in theparallelproceeding by the court
`Factor 3:
`and theparties
`
`Patent Ownerarguesthat the parties and district court have invested
`
`incredible amountsoftime and effort because “[t]he 101-page Markman
`
`order issued on March 31, the parties have madefinalelections of claims
`and art, discovery will close, andfinal pretrial disclosures will be made
`before the DI deadline.” Prelim. Resp. 5—6; Sur-reply 5-7.
`
`Petitioner arguesthat, in its complaint, Patent Ownerasserted sixteen
`patents containing overfive-hundredfifty claims, and that Petitioner
`“needed the time taken to prepare its twenty-onepetitions,as it was faced
`
`12
`
`
`
`IPR2020-00255
`Patent 9,516,127 B2
`
`with the immense burdenof understanding the five-hundredfifty claims
`
`contained in these patents andthe potential prior art.” Pet. Reply 5-6.
`
`Petitioner also arguesthat its substantial investment in these twenty-one
`
`petitions should counterbalance and outweigh the resourcesinvested in the
`
`Jd.
`co-pendinglitigation.
`The District Court’s scheduling order showsthe following deadlines
`passed: fact discovery andfiling of motions to compeldiscovery, service of
`disclosures for expert witnesses by the party with the burden ofproof,
`
`service of disclosures for rebuttal expert witnesses, expert discovery,filing
`
`of dispositive motions, andfiling of motionsto strike expert testimony,
`
`including Daubert motions. Ex. 1040. Upcoming deadlines include the
`
`following:
`responseto dispositive motions and Daubert motions
`(August 6, 2020), serving ofpretrial disclosures (August 13, 2020), serving
`
`of objections to disclosures, and rebuttal disclosures (August 24, 2020),
`serving of objects to rebuttal disclosures (September3, 2020), filing of
`
`motionsin limine (September3, 2020), filing of the jointpretrial order
`
`(September17, 2020), the pretrial conference (September 24, 2020), and
`
`jury trial (November30, 2020). Jd.
`
`Wefind that the parties have invested significant resources in the
`
`parallel District Court litigation, with some of the work relevantto patent
`
`validity, including claim construction and expert discovery. Nevertheless,
`
`the potential relevance of such workis diminished bythefact that only
`
`3 claims, out of the 50 claims challenged here, are involvedin the district
`
`court litigation. And, significantly, Petitioner’s unpatentability challenges
`
`here will not overlap with the invalidity grounds asserted in the underlying
`
`13
`
`
`
`IPR2020-00255
`Patent 9,516,127 B2
`
`litigation because Petitioner hasstipulated that, if the Board institutes inter
`partes review here, it will not pursue the sameinstituted groundsin the
`underlyinglitigation regarding the ’127 patent. See Ex. 1045,3; see also the
`discussion addressing Fintiv Factor 4 below. Based on the current record,it
`
`is also unclear to what extent the District Court has invested resources in the
`
`parallel district court litigation that bear directly on the issue of patent
`
`validity.
`
`Petitioner’s timing in filing the Petition is also relevant to this factor.
`
`If the petitioner, ‘“‘faced with the prospect ofa loomingtrial date, waits until
`
`the district court trial has progressedsignificantly before filing a petition,”
`
`that decision “may impose unfair costs to a patent owner.” Fintiv, Paper 11
`
`at 11. Onthe other hand,“[i]f the evidence showsthat the petitionerfiled
`
`the petition expeditiously, such as promptly after becoming awareofthe
`
`claims being asserted, this fact has weighed against exercising the authority
`
`to denyinstitution.” Jd.
`
`Here,the timing ofthe filing of this Petition mitigates somewhat the
`
`investmentin this litigation by the parties. Petitioner acted expeditiously in
`
`filing this Petition on December 30, 2019, before Patent Ownerservedits
`
`narrowed numberofasserted patents and asserted claims on January 21,
`
`2020. See Pet. Reply 5—6 (citing Ex. 1048, 1). We find that this timing is
`
`reasonable, particularly considering that Patent Owner’s complaintin the
`
`parallel district court litigation asserted sixteen patents that contain over
`
`five-hundredfifty claims, and Petitionerfiled fourteen ofits interpartes
`
`review petitions, including this Petition, before Patent Owner’s initial
`
`identification of asserted claims, and six of the remaining sevenpetitions
`
`14
`
`
`
`IPR2020-00255
`Patent 9,516,127 B2
`
`within one monthofit. See Ex. 1052; Pet. Reply 5—6 (citing Ex. 1048, 1).
`
`Therefore, even though the parties invested time and effort in the district
`
`court action, Petitioner acted diligently and without much delay in exercising
`
`its statutory right to file a Petition, mitigating against the investment (which
`
`a District Court stay otherwise could have diminished). See Fintiv, Paper 11
`
`at 11.
`
`Weighing thefacts in this particular case, including the time invested
`by the parties and the District Court in the parallel district court proceeding,
`the extent to which the investmentin the district court proceedingrelates to
`
`issues of patent validity, and the timing ofthe filing of the Petition, we find
`
`that this factor weighsslightly in favor of exercising our discretion to deny
`
`institution under § 314(a).
`
`Factor 4: overlap between issues raised in thepetitionandin
`the parallelproceeding
`
`This factor evaluates “concernsof inefficiency and the possibility of
`
`conflicting decisions” when substantially identical prior art is submitted in
`
`both the district court and the interpartes review proceedings. Fintiv,
`
`Paper 11 at 12. Patent Ownerarguesthat “the references, grounds, and
`
`arguments raised in the two venuesare strikingly similar.” Prelim.
`
`Resp. 7-9, 29; Sur-reply 7.
`
`In its Reply, Petitioner advances two arguments. First, Petitioner
`
`argues that only 3 claims overlap betweenthedistrict court proceeding and
`
`the instant IPR proceeding. Pet. Reply 8 n.3. The District Court will not
`
`
`
`IPR2020-00255
`Patent 9,516,127 B2
`
`address the validity of all 50 claims challenged in this IPR proceeding
`
`becauseonly 3 claimsare currently atissue in the District Court. Jd.
`In its Sur-reply, Patent Owner countersthat the additional claims do
`not justify institution because Patent Owner“stipulates that if the Board
`declines to institute under Fintiv, Patent Ownerwill not assert any ofthe
`
`IPR-only claims of the ’127 patent against [Petitioner] if the asserted
`
`’127 claimsarefinally adjudicated to be invalid or not infringed in the
`
`District Court Action.” Sur-reply 9-10.
`
`However,Petitioner asserts that it “will continue to create innovative
`
`new products, and desires Board review of these claims, so as to prevent
`their future assertion by [Patent Owner] in potential seriallitigation.” Pet.
`
`Reply 8n.3. Itis unclear whether Patent Owner’s stipulation would apply to
`Petitioner’s customersthat use those new products. Therefore, Patent
`
`Owner’s argumentis unavailing becausethe District Court will not address
`47 claims challenged in this IPR proceeding and Petitioner has an interestin
`
`resolving the validity issue of these 47 claims.
`
`Second,Petitioner arguesthatit “has eliminated anyrisk of duplicated
`
`effort by stipulating to counsel for [Patent Owner] that, if the Board
`institutes the pending Petition, [Petitioner] will not pursue district court
`invalidity challenges based on the pending Petition’s asserted grounds.”
`
`Pet. Reply 8 (citing Ex. 1045, 1). Petitioner’s stipulation states that
`
`“[Petitioner] herebystipulates thatif the Patent Trialand Appeal Board
`(PTAB)institutes one or more IPRpetitions on the grounds presented (a
`
`16
`
`
`
`IPR2020-00255
`Patent 9,516,127 B2
`
`table of which is reproduced below),then [Petitioner] will not pursue those
`
`same instituted groundsin the above-captionedlitigation, 2:19-cv-115.”
`Ex. 1045,1-3.
`Patent Ownerrespondsthat Petitioner’s stipulation “actually
`increase[s] the overlap betweenthe District Court Action and the IPRs”
`
`because “[a]ny difference, no matter howtrivial, falls outside this
`‘stipulation.’” Sur-reply 8. Patent Ownerarguesthat Petitioner only
`stipulates that“if the [PTAB]institutes. .
`. on the exact same ground
`presented... then [Petitioner] will not pursue those sameinstitutedgrounds
`in the... litigation.” /d. at 8 (citing Ex. 1045, 1). Thus, according to Patent
`Owner, Petitioner’s stipulation “‘is .. . a thinly-veiled attempt to increase the
`
`overlap in art and argument betweenthe District Court and here.” Jd. at 9.
`Wedisagree with Patent Ownerthat Petitioner’s stipulation is “a
`thinly-veiled attempt to increase the overlapin art and argument.” Jd. The
`stipulation is signed by Petitioner’s counsel and preventsPetitioner from
`pursuing eachofthe groundsatissue in this interpartes review proceeding
`with the prior art combinationsas listed on the Table provided with the
`stipulation. See Ex. 1045, 1-3. To the extent Patent Ownersuggests that
`Petitioner’s stipulation wouldallow it to raise the same IPR groundin the
`District Court by merely adding a reference from one combination to another
`combination of references but using the same arguments, we disagree
`
`because such a result would contravene thestipulation’s language preventing
`
`Petitioner from using the samelisted references and “the sameinstituted
`
`ground”in the District Court.
`
`17
`
`
`
`IPR2020-00255
`Patent 9,516,127 B2
`
`To the extent Patent Ownerarguesthat the stipulation would allow a
`
`primary reference in an IPR groundto be replaced entirely with another
`reference, such an outcome would result in different issues and grounds
`
`being pursued in each forum. In suchcase, Petitioner’s stipulation mitigates,
`at least to some degree, the concerns of duplicative efforts between the
`
`district court and the Board,as well as concernsofpotentially conflicting
`
`decisions.
`
`Nevertheless, the District Court issued an order requiring the parties
`
`to “streamline the issues” in the underlyinglitigation. See Ex. 2007 (“Order
`
`Focusing Patent Claimsand Prior Art’), 1. In particular, the District Court
`
`orders that Petitioner, the Defendantin the underlyinglitigation, ‘“‘shall serve
`
`a Final Election of Asserted Prior Art,” wherein “each combination counts
`
`as a separate prior art reference.” /d. at2. Inresponse,Petitioner, as
`
`Defendant, submitted its Notice Regarding Prior Art Reduction, in whichit
`
`reducedthe prior art to the sameprior art combination set forth in the Table
`provided with thestipulation. Ex. 2003 (“Apple Inc.’s Notice Regarding
`
`Prior Art Reduction”), 3.
`
`In particular, the District Court ordered Petitioner to employ “no more
`
`than nine (9)asserted prior art references per patent from among the
`
`eighteen (18) prior art references previously identified for that particular
`
`patent and no morethanatotal of forty-five (45) references.” Ex. 2007,2.
`
`Adding unnecessary referencesincreasesthe total numberof references
`
`employed. Thus, addition of a reference will not streamline the issues as
`
`ordered by the court. Also, even if adding spurious references somehow
`
`fails to violate the stipulation according to Patent Owner’s arguments,
`
`18
`
`
`
`IPR2020-00255
`Patent 9,516,127 B2
`
`Petitioner likely will not and cannotdo so in coordinatingits invalidity
`
`challenges across ten patents, because Petitioner asserted a similar
`
`stipulation across the ten patents and already reached the District Court
`
`orderedlimit of forty-five patents across those ten patentsin its invalidity
`
`challenges. See Ex. 1045; Ex. 2003; Ex. 2007.
`
`Furthermore,in its order requiring the parties to streamline the issues
`
`in the underlyinglitigation, the District Court also orders that Patent Owner,
`
`the Plaintiff in the underlyinglitigation, “shall serve a Preliminary Election
`
`of Asserted Claims.” See Ex. 2007, 2. The District Court action initially
`
`involved sixteen patents-in-suit and multiple issues, including all fourteen
`
`claims of the ’029 patent. Ex. 1052 (complaint); Ex. 1043 (invalidity
`
`contentions). After its complaint, pursuant to the District Court order, Patent
`
`Ownernarrowedits infringement assertions to seventy-five claims and
`
`sixteen patents-in-suit, including four claims of the ’029 patent. Ex. 1048.
`
`Thereafter, pursuantto the District Court’s order, Patent Ownernarrowedits
`
`infringementassertionsfurtherto thirty-six claims and ten patents-in-suit,
`
`including three claimsof the ’029 patent. Ex. 2008, 1; Ex. 2003.
`
`Accordingly, pursuantto the District Court’s order, Petitioner narrowedits
`
`prior art challenges to forty-five prior art references to challenge the ten
`
`patents-in-suit. Ex. 1041 (prior art reduction); Ex. 2003 (same).
`
`This narrowing ofissues, including the numberofpatents-in-suit,
`
`claims, and prior art invalidity challenges, evidences the complexity of
`
`multiple patents and issuesin the District Court action. A trial here avoids
`
`potentially complicated and overlapping jury issues of ten patents, while
`
`allowing the panel to focus on multiple issues in depth that involve only the
`
`19
`
`
`
`IPR2020-00255
`Patent 9,516,127 B2
`
`’127 patent. Therefore, this interpartestrial will provide the parties with an
`
`in-depth analysis of the ’127 patent, providing a full record that will enhance
`
`the integrity of the patent system.
`
`Based on the factsin this particular case, we find that this factor
`weighs against exercising our discretion to deny institution under § 314(a).
`
`Factor 5: whetherthepetitioner and the defendantin the
`parallelproceeding are the sameparty
`
`It is undisputed that Petitioner here is the defendantin the underlying
`
`litigation. Pet. Reply 5-6; Ex. 1052. “Ifa petitioner is unrelated to a
`
`defendantin an earlier court proceeding, the Board has weighed this fact
`
`against exercising discretion to deny institution under NHK.” Fintiv,
`
`Paper 11 at 13-14 (emphasis added).? Thus,this factor weighsslightly in
`
`favorof exercising our discretion to deny institution under § 314(a).
`
`Factor 6: other circumstances that impact the Board’s exercise
`ofdiscretion, including the merits.
`
`Thefinal Fintiv factor is a catch-all that takes into accountany other
`
`relevant circumstances. The decision whetherto exercise discretion to deny
`
`* At least one Board memberobservedthat Fintiv “says nothing about
`situations in which thepetitioner is the sameas,oris related to, the district
`court defendant.” Cisco Sys., Inc. v. Ramot at Tel Aviv Univ. Ltd. , IPR2020-
`00122, Paper 15 at 10 (PTAB May15, 2020) (APJ Crumbley,dissenting).
`According to the dissent in Cisco,if “the factor weighs in favor of denial if
`the parties are the same,”this could “tip the scales against a petitioner
`merely for being a defendantin the district court.” /d. atl1. This “would
`seem to be contrary to the goal of providing district court litigants an
`alternative venue to resolve questions of patentability.” Jd.
`20
`
`
`
`IPR2020-00255
`Patent 9,516,127 B2
`
`institution under § 314(a) is based on “a balanced assessment ofall relevant
`
`circumstancesin the case, including the merits.” Consolidated Trial Practice
`
`Guide 58.
`
`Weaccountfor the fact that the Office already hasinstituted
`
`proceedings challenging other patents in dispute in the co-pendingparallel
`
`litigation—IP R2020-00188 (instituted June 11, 2020), IPR2020-00156
`
`(instituted June 18, 2020), and [IPR2020-001 57(instituted June 18, 2020).
`
`Weacknowledgethat it would beinefficient to discretionarily deny
`
`institution of this Petition, which we find meetsthe statutory threshold for
`
`institution, after having instituted petitions challenging other patents in
`
`dispute in the parallel proceeding.
`
`Patent Ownerarguesthat further favoring denial wasPetitioner’s
`
`9-month delay in filing the Petition. Sur-reply 10.
`
`Wedo not agree with Patent Owner. As noted above,Petitionerfiled
`
`its Petition on December30, 2019, about three and a half months before the
`
`statutory deadline under § 315(b). Pet. 74; Paper 4, 1. Furthermore, as
`
`Petitioner explains, Patent Ownerasserted in its complaint sixteen patents
`
`which contain over 550 claims, and Petitioner “neededthe time taken to
`
`prepare its twenty-onepetitions, as it was faced with the immense burden of
`
`understanding the five-hundredfifty claims contained in these patents and
`
`the potential prior art.” Pet. Reply 5-6. As discussed above, wefind that
`
`this timing is reasonable,particularly considering that Patent Ownerasserted
`
`sixteen patents that contain over five-hundredfifty claims, and Petitioner
`
`filed twenty-one IPR Petitions challenging those patents. Ex. 1052; Pet.
`
`Reply 5-6.
`
`21
`
`
`
`IPR2020-00255
`Patent 9,516,127 B2
`
`In addition, “the factors considered in the exercise of discretion are
`
`part of a balanced assessment ofall relevant circumstancesin the case,
`including the merits.” Fintiv, Paper 11 at 14. “For example, if the merits of
`a groundraised in the petition seem particularly strong on the preliminary
`record, .. . the institution ofa trial may serve the interest of overall system
`
`efficiency and integrity becauseit allows the proceeding to continue in the
`eventthat the parallel pr
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
