`571-272-7822
`
`
`
`
`Paper 10
`Entered: May 1, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VALVE CORPORATION,
`Petitioner,
`
`v.
`
`ELECTRONIC SCRIPTING PRODUCTS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2019-00064 (Patent 8,553,935 B2)
`Case IPR2019-00065 (Patent 8,553,935 B2)
`Case IPR2019-00085 (Patent 8,553,935 B2)1
`_______________
`
`
`Before ANDREI IANCU, Under Secretary of Commerce for Intellectual
`Property and Director of the United States Patent and Trademark Office,
`WILLIAM M. FINK, Vice Chief Administrative Patent Judge, and
`ROBERT J. WEINSCHENK, Administrative Patent Judge.
`
`FINK, Vice Chief Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`1 These cases have not been joined or consolidated. Rather, this Decision
`governs each case based on common issues. The parties shall not employ
`this heading style.
`
`
`
`IPR2019-00064 (Patent 8,553,935 B2)
`IPR2019-00065 (Patent 8,553,935 B2)
`IPR2019-00085 (Patent 8,553,935 B2)
`
`
`INTRODUCTION
`I.
`Valve Corporation (“Valve”) filed three petitions (IPR2019-00064,
`Paper 2, “Pet.”; IPR2019-00065, Paper 1; IPR2019-00085, Paper 3)
`requesting inter partes review of claims 1–21 of U.S. Patent No. 8,553,935
`B2 (Ex. 1001, “the ’935 patent”). This Decision addresses common issues
`presented by all three petitions. For purposes of this Decision, we treat the
`Petition in IPR2019-00064 (“the Petition”) as representative and cite to the
`record in IPR2019-00064, unless otherwise indicated.
`Electronic Scripting Products, Inc. (“Patent Owner”) filed a
`Preliminary Response (IPR2019-00064, Paper 5, “Prelim. Resp.”) to the
`Petition. Patent Owner argues that we should exercise our discretion under
`35 U.S.C. § 314(a) to deny the Petition as an “unfair” follow-on petition.
`Prelim. Resp. 9–11. Pursuant to our authorization (Paper 7), Valve filed a
`Reply (Paper 6, “Reply”) to Patent Owner’s follow-on petition argument,
`and Patent Owner filed a Sur-reply (Paper 8, “Sur-reply”) to the Reply.
`Valve is not the first party to request an inter partes review of the
`’935 patent. HTC Corporation and HTC America, Inc. (collectively,
`“HTC”) previously filed a petition requesting an inter partes review of the
`’935 patent in IPR2018-01032 (“the 1032 IPR”). 1032 IPR, Paper 2. The
`Board instituted inter partes review. 1032 IPR, Paper 6 (“1032 DI”). In
`IPR2019-00074, Valve filed a Petition and Motion to join the 1032 IPR,
`which we granted. 1032 IPR, slip op. at 10 (PTAB Jan. 18, 2019) (Paper
`12). The statutory deadline for a final determination as to the patentability
`of claims 1–21 of the ’935 patent in the 1032 IPR is September 13, 2019.
`
`1
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`IPR2019-00064 (Patent 8,553,935 B2)
`IPR2019-00065 (Patent 8,553,935 B2)
`IPR2019-00085 (Patent 8,553,935 B2)
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`
`In General Plastic Industries Co. v. Canon Kabushiki Kaisha, Case
`IPR2016-01357, slip op. at 15–16 (PTAB Sept. 6, 2017) (Paper 19)
`(precedential), the Board articulated a non-exhaustive list of factors to be
`considered in determining whether to exercise discretion under § 314(a) to
`deny a petition that challenges the same patent as a previous petition. Under
`the first General Plastic factor, we consider “whether the same petitioner
`previously filed a petition directed to the same claims of the same patent.”
`General Plastic, slip op. at 16. Here, Valve has joined the ongoing 1032
`IPR proceeding, and therefore has filed a petition directed to the same claims
`of the same patent. Moreover, our application of the General Plastic factors
`is not limited solely to instances in which multiple petitions are filed by the
`same petitioner. When different petitioners challenge the same patent, we
`consider any relationship between those petitioners while weighing the
`General Plastic factors. Based on our consideration of the General Plastic
`factors, we determine that it is appropriate to exercise our discretion under
`§ 314(a) to deny the Petition.
`A.
`Related Proceedings
`The ’935 patent and a related patent, U.S. Patent No. 9,235,934 B2
`(Ex. 1002, “the ’934 patent”), are the subject of a patent infringement
`lawsuit, Electronic Scripting Products, Inc. v. HTC America, Inc., No. 3:17-
`cv-05806-RS, filed on October 9, 2017, in the United States District Court
`for the Northern District of California (“the District Court litigation”).
`Pet. 1. Valve and HTC were named as co-defendants in that lawsuit and
`were accused of infringing the ’935 patent based on HTC’s VIVE devices
`that incorporate Valve’s technology. Prelim. Resp. 8–9; Reply 1. In
`
`2
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`IPR2019-00065 (Patent 8,553,935 B2)
`IPR2019-00085 (Patent 8,553,935 B2)
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`response to Valve’s motion challenging venue, however, Patent Owner
`voluntarily dismissed Valve without prejudice on January 25, 2018.
`Reply 1; Sur-reply 2.
`As discussed above, HTC requested an inter partes review of the ’935
`patent in the 1032 IPR, and the Board instituted review. Pet. 1; Prelim Resp.
`9; Ex. 1061, 32. HTC also requested an inter partes review of the related
`’934 patent in IPR2018-01031, which the Board denied. Ex. 1060, 16
`(denying institution). Valve also requested inter partes review of the ’934
`patent in IPR2019-00062, IPR2019-00063, and IPR2019-00084, which the
`Board denied under 35 U.S.C. § 314(a). E.g., Valve Corp. v. Elec. Scripting
`Prods., Inc., Case IPR2019-00062 (PTAB April 2, 2019) (Paper 11)
`(“Valve I”).
`B.
`The ’935 Patent
`The ’935 patent relates to determining an absolute pose of a
`manipulated object in a real three-dimensional environment, particularly of a
`manipulated object used by human users to interface with the digital world.
`Ex. 1001, 1:24–28. An object’s pose combines the three linear displacement
`coordinates (x, y, z) of any reference point on the object and the three
`orientation angles, also called the Euler angles (ϕ, θ, ψ), that describe the
`object’s pitch, yaw, and roll. Id. at 1:46–50.
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`3
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`IPR2019-00085 (Patent 8,553,935 B2)
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`
`Figure 21 of the ’935 patent is reproduced below:
`
`
`Figure 21 illustrates a “cyber game” in which user or player 882 interacts
`with game application 880 by moving manipulated object 884, in this case a
`tennis racket, in real three-dimensional environment 886. Ex. 1001, 37:9–
`13. Visual tennis match elements 898A–D and image 884′ of tennis racket
`884 held by user 882 are displayed on screen 890. Id. at 37:29–44. The
`display of image 884′ changes in response to the detected absolute pose of
`racket 884. Id. at 38:12–20.
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`4
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`IPR2019-00085 (Patent 8,553,935 B2)
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`The absolute pose of racket 884 is detected using on-board optical
`
`measuring arrangement 888 and auxiliary motion detection component 904.
`Ex. 1001, 37:14–16, 37:65–66, 38:12–14. Optical measurement
`arrangement 888 infers absolute pose data (x, y, z, ϕ, θ, ψ) of racket 884 by
`sensing light 893 emitted from beacons B1–B9 disposed on and around
`screen 890. Id. at 37:14–21, 37:61–64. Auxiliary motion detection
`component 904 is an inertial sensing device that includes gyroscope 908 for
`providing information about changes in orientation (ϕ, θ, ψ) and
`accelerometer 906 for providing information about linear displacement (x, y,
`z). Id. at 37:65–38:11.
`The combination of absolute pose data and relative motion data is
`used to determine the absolute pose, which is expressed in world coordinates
`(X0, Y0, Z0). Id. at 11:29–34, 38:12–14. Such absolute pose data and
`relative motion data can be combined using any suitable combination or data
`fusion techniques well-known in the art. Id. at 44:51–55.
`C.
`Illustrative Claim
`Of the challenged claims, claims 1 and 12 are independent. Claim 1 is
`illustrative of the claims at issue and is reproduced below.
`1. A method for use with a system having a manipulated
`object, the method comprising:
`a) accepting light data indicative of light detected by a
`photodetector mounted on-board said manipulated object from a
`first plurality of predetermined light sources having known
`locations in world coordinates;
`b) accepting relative motion data from a relative motion
`sensor mounted on-board said manipulated object indicative of a
`change in an orientation of said manipulated object; and
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`5
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`c), determining the pose of said manipulated object based
`on said light data and said relative motion data, wherein said pose
`is determined with respect to said world coordinates.
`Ex. 1001, 51:13–26.
`D.
`Evidence of Record
`In Valve’s three petitions for inter partes review of the ’935 patent,
`Valve relies on the following references and declarations.
`IPR2019-00064
`Reference or Declaration Exhibit No.
`Declaration of Dr. Gregory Welch
`Ex. 1003
`Masaki Maeda et al., Tracking of User Position and
`Ex. 1047
`Orientation by Stereo Measurement of Infrared Markers
`and Orientation Sensing, PROC. EIGHTH INT’L SYMP. ON
`WEARABLE COMPUTERS 77 (2004) (“Maeda”)
`Greg Welch et al., High-Performance Wide-Area Optical
`Tracking, PRESENCE: TELEOPERATORS & VIRTUAL
`ENVIRONMENTS 1 (Feb. 2001) (“Welch-HiBall”)
`
`
`
`
`
`Ex. 1004
`
`IPR2019-00065
`Reference or Declaration Exhibit No.
`Declaration of Dr. Gregory Welch
`Ex. 1003
`Anderson et al., U.S. Patent No. 7,063,256 B2 (filed Jan.
`Ex. 1054
`23, 2004; issued June 20, 2006) (“Anderson”)
`Welch-HiBall
`
`Ex. 1004
`
`IPR2019-00085
`Reference or Declaration Exhibit No.
`Declaration of Dr. Gregory Welch
`Ex. 1003
`Masaki Maeda et al., A Wearable AR Navigation System
`Ex. 1048
`Using Vision Based Tracking with Infrared, TECH. REP.
`IEICE (2004) (“Maeda II”)
`Masaki Maeda et al., Proposal of a Three-dimensional
`User Position and Orientation Detection Technique
`Using Infrared Identifiers for a Wearable System, 65TH
`
`Ex. 1064
`
`6
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`
`NAT’L CONVENTION INFO. PROCESSING SOC’Y JAPAN 203
`(2003) (“Maeda I”)
`E.
`Asserted Grounds of Unpatentability
`In Valve’s three petitions for inter partes review of the ’935 patent,
`Valve asserts that the challenged claims are unpatentable on the following
`grounds.
`
`
`
`
`
`Claims Challenged
`1–21
`11 and 21
`
`Claims Challenged
`1–21
`6, 11, 18, and 21
`
`Claims Challenged
`1–21
`6, 11, 18, and 21
`
`IPR2019-00064
`Basis
`§ 103(a)
`§ 103(a)
`
`IPR2019-00065
`Basis
`§ 103(a)
`§ 103(a)
`
`IPR2019-00085
`Basis
`§ 103(a)
`§ 103(a)
`
`Reference
`Maeda
`Maeda and AAPA and/or
`Welch-HiBall
`
`Reference
`Anderson
`Anderson and AAPA
`and/or Welch-HiBall
`
`References
`Maeda I and Maeda II
`Maeda I, Maeda II, and
`AAPA
`
`II. ANALYSIS
`A.
`35 U.S.C. § 314(a)
`Patent Owner argues that the Petition should be denied under
`35 U.S.C. § 314(a) because the Petition challenges the same claims of the
`’935 patent as the petition in the 1032 IPR, and Valve is “similarly situated”
`to HTC, the petitioner in the 1032 IPR. Prelim. Resp. 3, 8–11. Patent
`Owner also argues that Valve “waited until HTC’s petition on this patent
`was instituted (as a test case), and only then filed its own petition essentially
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`7
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`on the same grounds related to the same patent and building on the
`successful promotion of a fundamental misapprehension of the claims
`successfully perpetrated by HTC.” Id. at 10–11 (emphasis omitted). Patent
`Owner, therefore, contends that the Petition “is unfair, and nothing more
`than a follow-on petition for the previously instituted [1032] IPR.” Id. at 11.
`Valve responds that the Board should not deny the Petition under § 314(a)
`because HTC is an “unrelated” company and Valve “did not act in concert
`with HTC.” Reply 1. Valve also responds that the timing of its Petition was
`the result of a recent change in the law regarding the one-year time bar under
`35 U.S.C. § 315(b). Id. at 2.
`For the reasons discussed below, we determine that it is appropriate to
`exercise our discretion under § 314(a) to deny the Petition.
`1.
`Legal Framework
`35 U.S.C. § 314(a) states that
`[t]he Director may not authorize an inter partes review to be
`instituted unless the Director determines that the information
`presented in the petition filed under section 311 and any response
`filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.
`Under § 314(a), the Director has discretion to deny institution of an inter
`partes review. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140
`(2016) (“[T]he agency’s decision to deny a petition is a matter committed to
`the Patent Office’s discretion.”).
`
`As discussed above, in the precedential General Plastic decision, the
`Board articulated a non-exhaustive list of factors to be considered in
`determining whether to exercise discretion under § 314(a) to deny a petition
`
`8
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`that challenges the same patent as a previous petition. General Plastic, slip
`op. at 15–16. These factors are
`1. whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
`2. whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should
`have known of it;
`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision
`on whether to institute review in the first petition;
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the
`filing of the second petition;
`5. whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions directed
`to the same claims of the same patent;
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
`
`Id. at 16.
`
`2.
`Factor One
`Under the first General Plastic factor, we consider “whether the same
`petitioner previously filed a petition directed to the same claims of the same
`patent.” Id. at 16. Patent Owner argues that the Petition in this case
`challenges the same claims of the ’935 patent as the petition in the 1032 IPR,
`and Valve is “similarly situated” to HTC, the petitioner in the 1032 IPR.
`Prelim. Resp. 3, 8–11. Valve responds that it is an “unrelated” company that
`“did not act in concert with HTC.” Reply 1.
`The petitions in these cases and the previous petition in the 1032 IPR
`(and Valve’s petition in IPR2019-00074) all challenge claims 1–21 of the
`
`9
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`IPR2019-00085 (Patent 8,553,935 B2)
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`’935 patent. See, e.g., Pet. 4; 1032 IPR, Paper 2, 3. Valve did not file the
`petition in the 1032 IPR, but joined that ongoing proceeding as a petitioner.
`By joining the ongoing 1032 IPR, Valve has filed a petition previously
`directed to the same claims of the same patent under the first General Plastic
`factor.
`In addition, as discussed above and in our decision in Valve I, our
`application of the General Plastic factors is not limited solely to instances in
`which multiple petitions are filed by the same petitioner. Rather, when
`different petitioners challenge the same patent, we consider any relationship
`between those petitioners while weighing the General Plastic factors. See
`NetApp Inc. v. Realtime Data LLC, Case IPR2017-01195, slip op. at 10
`(PTAB Oct. 12, 2017) (Paper 9) (“[T]he General Plastic factors provide a
`useful framework for analyzing the facts and circumstances present in this
`case, in which a different petitioner filed a petition challenging a patent that
`had been challenged already by previous petitions.”). Here, Valve and HTC
`were co-defendants in the District Court litigation and were accused of
`infringing the ’935 patent based on the same product, namely HTC’s VIVE
`devices that incorporate technology licensed from Valve. Prelim. Resp. 8–9;
`IPR2019-00085, Ex. 2010 ¶¶ 6–7. Indeed, in that lawsuit, Valve represented
`that “HTC’s VIVE devices incorporate certain Valve technologies under a
`technology license from Valve,” and that “Valve employees did provide
`HTC with technical assistance during the development of the accused VIVE
`devices.” IPR2019-00085, Ex. 2010 ¶¶ 6–7. Although Valve was
`voluntarily dismissed from the District Court litigation after it filed a motion
`challenging venue (Reply 1; Sur-reply 2), Valve was aware of Patent
`
`10
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`Owner’s infringement allegations at the time HTC filed its petition in the
`1032 IPR (see IPR2019-00085, Ex. 2010 ¶¶ 6–7).
`We determine that the first General Plastic factor weighs against
`institution. As discussed above, the three petitions in these cases challenge
`the same claims of the ’935 patent as the previous petition in the 1032 IPR,
`which is ongoing and in which Valve is now joined as a party at Valve’s
`request. Moreover, similar to the circumstances in Valve I, Valve and HTC
`were co-defendants in the District Court litigation and were accused of
`infringing the ’935 patent based on HTC’s VIVE devices that incorporate
`technology licensed from Valve. Thus, there is a significant relationship
`between Valve and HTC with respect to Patent Owner’s assertion of the
`’935 patent. The complete overlap in the challenged claims and the
`significant relationship between Valve and HTC favor denying institution.
`3.
`Factor Two
`Under the second General Plastic factor, we consider “whether at the
`time of filing of the first petition the petitioner knew of the prior art asserted
`in the second petition or should have known of it.” General Plastic, slip op.
`at 16. This factor includes considering whether the prior art relied on in the
`later petition “could have been found with reasonable diligence.” Id. at 20.
`We determine that the second General Plastic factor weighs against
`institution for reasons similar to those discussed in Valve I. Valve knew or
`should have known of the Welch-HiBall reference around the time HTC
`filed its petition in the 1032 IPR because it was one of the two references
`relied upon by HTC. See 1032 DI. With respect to the other relied-upon
`references, Maeda, Maeda I, Maeda II, and Anderson, the timing of Valve’s
`petitions suggests that it could have found these references through the
`
`11
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`exercise of reasonable diligence around the time of HTC’s petition on May
`10, 2018. Specifically, by its own admission, Valve began preparing its
`petitions on or after August 16, 2018, and filed them less than two months
`later, which indicates that Valve found the Maeda and Anderson references
`quickly. See Reply 2. Valve’s knowledge of the Welch-HiBall reference
`and its ability to quickly locate the Maeda and Anderson references favor
`denying institution.
`4.
`Factor Three
`Under the third General Plastic factor, we consider “whether at the
`time of filing of the second petition the petitioner already received the patent
`owner’s preliminary response to the first petition or received the Board’s
`decision on whether to institute review in the first petition.” General
`Plastic, slip op. at 16. The Board previously explained that
`factor 3 is directed to Petitioner’s potential benefit from
`receiving and having the opportunity to study Patent Owner’s
`Preliminary Response, as well as our institution decisions on the
`first-filed petitions, prior to its filing of follow-on petitions. . . .
`Multiple, staggered petitions challenging the same patent and
`same claims raise the potential for abuse. The absence of any
`restrictions on follow-on petitions would allow petitioners the
`opportunity to strategically stage their prior art and arguments in
`multiple petitions, using our decisions as a roadmap, until a
`ground is found that results in the grant of review. All other
`factors aside, this is unfair to patent owners and is an inefficient
`use of the inter partes review process and other post-grant review
`processes.
`Id. at 17–18 (internal citation and footnote omitted). Patent Owner argues
`that Valve “waited until HTC’s petition on this patent was instituted (as a
`test case)” and then filed its Petition. Prelim. Resp. 10.
`
`12
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`We determine that the third General Plastic factor weighs against
`institution for reasons similar to those discussed in Valve I. In the 1032 IPR,
`the Board instituted review based on the combination of Welch-HiBall and
`SIGGRAPH. See 1032 DI. Valve had access to Patent Owner’s preliminary
`response and the Board’s institution decision in the 1032 IPR before filing
`the Petition and used the institution decision as a guide to preemptively
`address anticipated arguments by Patent Owner based on the preliminary
`response in that proceeding. See Pet. 23–25 (noting the Board’s
`determination that “Welch-HiBall was not considered by the Examiner.”).
`Moreover, unlike the circumstances in Valve I, Valve had an instituted
`proceeding (i.e., the 1032 DI) as a roadmap to follow in preparing these
`follow-on petitions. As a result, it would have gained a substantial
`advantage in waiting for the preliminary response and institution decision in
`that proceeding before preparing these follow-on petitions.2
`Accordingly, Valve’s use of the Board’s institution decision in the
`1032 IPR as a roadmap for the Petition in this case implicates the fairness
`concerns discussed in General Plastic and favors denying institution.
`5.
`Factors Four and Five
`Under the fourth and fifth General Plastic factors, we consider “the
`length of time that elapsed between the time the petitioner learned of the
`prior art asserted in the second petition and the filing of the second petition”
`and “whether the petitioner provides adequate explanation for the time
`
`
`2 To the extent Valve is confident in the unpatentability challenges in the
`1032 IPR, these further challenges are an inefficient use of Board resources
`(see infra § II.A.6).
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`elapsed between the filings of multiple petitions directed to the same claims
`of the same patent.” General Plastic, slip op. at 16.
`Patent Owner argues that Valve and HTC are similarly situated parties
`sued at the same time and involved in the same accused “VIVE devices,”
`and, therefore, there is no justification for it having waited for the Board’s
`institution decision in the 1032 IPR other than to use that IPR as a test case.
`Prelim. Resp. 10–11. Valve responds that the timing of its Petition was
`dictated by the Federal Circuit’s decision in Click-to-Call Technologies, LP
`v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018). Reply 1–2. Valve argues
`that, under the Board’s established practice, the voluntary dismissal of a
`district court complaint without prejudice tolled the one-year deadline for
`requesting an inter partes review under § 315(b). Id. at 2. Valve contends
`that, as a result, it “had no intention of filing any IPR petitions” after its
`dismissal from the District Court litigation. Id. According to Valve, Click-
`to-Call changed the Board’s practice by holding that the voluntary dismissal
`of a district court complaint without prejudice does not toll the one-year
`deadline under § 315(b). Id. Thus, after Click-to-Call, Valve “immediately
`began preparing its own petitions”—including analyzing prior art and
`retaining an expert—“to avoid a bar if [Patent Owner] later alleged
`infringement.” Id. Valve states that it pursued other grounds of
`unpatentability despite the Board’s institution of the 1032 IPR. Id.
`We determine that the fourth and fifth General Plastic factors weigh
`against institution for reasons similar to those discussed in Valve I. The
`Click-to-Call decision may have prompted Valve to file the Petition before
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`the deadline under § 315(b),3 but it does not excuse the five-month delay
`between the filing of HTC’s petition and Valve’s Petition. As discussed
`above, Valve could have found the prior art asserted in its Petition through
`the exercise of reasonable diligence at or around the time of HTC’s petition.
`As also discussed above, Valve was a co-defendant with HTC in the District
`Court litigation and provides HTC with technology used in the accused
`VIVE devices. As a licensor of technology incorporated in the accused
`products, Valve’s interests are aligned closely with HTC’s interests, and
`Valve could have filed its Petition at or around the same time as HTC. The
`fact that Valve waited five months after HTC’s petition to file the Petition in
`this case favors denying institution. If Click-to-Call had been decided
`differently, and Valve had waited even longer to file the Petition, Valve’s
`delay still would favor denying institution.
`6.
`Factors Six and Seven
`Under the sixth and seventh General Plastic factors, we consider “the
`finite resources of the Board” and “the requirement under 35 U.S.C.
`§ 316(a)(11) to issue a final determination not later than 1 year after the date
`on which the Director notices institution of review.” General Plastic, slip
`op. at 16. The sixth and seventh factors are efficiency considerations. Id. at
`
`
`3 Valve also states it was “never served” (Reply 1), which, if true, would
`mean there is no time bar against Valve however Click-to-Call had been
`decided. This is also inconsistent with Valve’s rationale for having to file a
`Petition when it did. See Reply 2 (“Valve filed its petitions because of the
`Federal Circuit’s en banc decision.”). In any event, as explained below, the
`issue is the five-month delay in filing, not what prompted it.
`
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`16–17; see also Trial Practice Guide Update4 9 (referenced at 83 Fed. Reg.
`39,989 (Aug. 13, 2018)) (noting that the Director’s discretion under § 314(a)
`is informed by 35 U.S.C. § 316(b), which requires “the efficient
`administration of the Office, and the ability of the Office to timely complete
`proceedings instituted under this chapter”).
`We determine that the sixth and seventh General Plastic factors weigh
`against institution for reasons similar and in addition to those discussed in
`Valve I. In general, having multiple petitions challenging the same patent,
`especially when not filed at or around the same time as in this case, is
`inefficient and tends to waste resources. Here, Valve waited until after the
`institution decision in the 1032 IPR, and then in addition to requesting
`joinder to the 1032 IPR, filed not one but three additional petitions
`challenging the ’935 Patent, without a substantial explanation of why such
`additional challenges are necessary given the 1032 IPR.
`Furthermore, we note that the efficient administration of the Office is
`particularly implicated on these facts because there is an ongoing proceeding
`that includes Valve and that will address all claims of the ’935 patent.
`Having the Office address one set of challenges in the 1032 IPR on its
`procedural schedule (which Valve agreed to follow) and these three petitions
`on their own procedural schedule, which Valve seeks here, is an inefficient
`use of resources.
`Finally, if a final decision in the 1032 IPR issues, Patent Owner may
`argue that Valve should be estopped from “maintain[ing] a proceeding
`
`
`4 Available at https://go.usa.gov/xU7GP.
`
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`before the Office” with respect to the challenged claims on some or all of the
`grounds in these follow-on petitions. See 35 U.S.C. § 315(e)(1).
`Specifically, § 315(e)(1) states that “[t]he petitioner in an inter partes
`review of a claim in a patent under this chapter that results in a final written
`decision under section 318(a) . . . may not request or maintain a proceeding
`before the Office with respect to that claim on any ground that the petitioner
`raised or reasonably could have raised during that inter partes review.”
`Because we granted Valve’s request to join the 1032 IPR, Valve is now a
`petitioner in the 1032 IPR. Thus, if the 1032 IPR results in a final written
`decision, Patent Owner may argue that Valve reasonably could have raised
`at least some of the grounds in these petitions by requesting joinder of such
`grounds to the 1032 IPR.5 See Apple Inc. v. Papst Licensing GmbH, Case
`IPR2016-01860, slip op. at 7–9 (PTAB Jan. 10, 2018) (Paper 28)
`(terminating the proceeding because petitioner was estopped by virtue of
`being joined to a previous proceeding from which a final decision issued);
`Parallel Networks Licensing, LLC v. Int’l Bus. Machs. Corp., Case No.
`1:13-cv-2072, 2017 WL 1045912, at *11–12 (D. Del. Feb. 22, 2017)
`(holding that estoppel applies to prior art that party was aware of but did not
`include in a petition when joining an ongoing IPR).
`These serial and repetitive attacks implicate the efficiency concerns
`underpinning General Plastic and, thus, favor denying institution. Given the
`additional circumstances here, including the ongoing 1032 IPR proceeding
`
`5 To be clear, we need not decide here whether estoppel would apply at some
`point in the future, but merely point out that if we instituted review in some
`or all of these proceedings, a collateral dispute on estoppel is a real
`possibility.
`
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`on its own procedural schedule and also the possibility of an estoppel issue,
`the efficiency concerns underpinning General Plastic weigh even more
`strongly than in Valve I in favor of denying institution.
`7.
`Summary
`As discussed above, the evidence of record shows that all the General
`Plastic factors weigh against institution. As a result, we determine that it is
`appropriate to exercise our discretion under § 314(a) to deny institution.
`
`III. CONCLUSION
`For the forgoing reasons, we exercise our discretion under § 314(a) to
`deny institution of inter partes review.
`
`IV. ORDER
`
`It is hereby
`ORDERED that the petitions are denied, and an inter partes review is
`not instituted.
`
`
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`For PETITIONER:
`
`Brian C. Nash
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`brian.nash@pillsburylaw.com
`
`Reynaldo C. Barcelo
`BARCELO, HARRISON & WALKER, LLP
`rey@bhiplaw.com
`
`For PATENT OWNER:
`
`Marek Alboszta
`marek@patentsafari.com
`
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`