Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 9
`Date: March 10, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BENTLEY MOTORS LIMITED AND BENTLEY MOTORS, INC.,
`Petitioner,
`
`v.
`
`JAGUAR LAND ROVER LIMITED,
`Patent Owner.
`
`IPR2019-01539
`Patent RE46,828 E
`
`
`
`
`
`
`
`
`
`Before BARRY L. GROSSMAN, KEVIN W. CHERRY, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 9
`Date: March 10, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BENTLEY MOTORS LIMITED AND BENTLEY MOTORS, INC.,
`Petitioner,
`
`v.
`
`JAGUAR LAND ROVER LIMITED,
`Patent Owner.
`
`IPR2019-01539
`Patent RE46,828 E
`
`
`
`
`
`
`
`
`
`Before BARRY L. GROSSMAN, KEVIN W. CHERRY, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2019-01539
`Patent RE46,828 E
`
`I.
`
`INTRODUCTION
`
`Bentley Motors Limited and Bentley Motors, Inc. (“Petitioner”) filed
`
`a petition (Paper 1, “Pet.”) to institute an inter partes review of claims 21,
`
`24, 30, 32–34, 37, 39, 41–43, 45, and 46 (the “challenged claims”) of U.S.
`
`Patent No. RE46,828 E (Ex. 1001, “the ’828 patent”). 35 U.S.C. § 311.
`
`Jaguar Land Rover Limited (“Patent Owner”) timely filed a Preliminary
`
`Response. Paper 7 (“Prelim. Resp.”).
`
`We have jurisdiction under 35 U.S.C. § 314. Under § 314, an inter
`
`partes review may not be instituted “unless . . . there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” 35 U.S.C. § 314(a). The Board
`
`determines whether to institute a trial on behalf of the Director. 37 C.F.R.
`
`§ 42.4(a).
`
`For the reasons set forth below, upon considering the arguments and
`
`evidence of record, we determine that it is appropriate to exercise our
`
`discretion under § 314(a) to deny the Petition based on the advanced status
`
`of related District Court litigation.
`
`A. Related Proceedings
`
`Patent Owner sued Petitioner for infringement of the ’828 patent.
`
`Pet. 66–67; Paper 5, 1 (citing Jaguar Land Rover Limited v. Bentley Motors
`
`Limited and Bentley Motors, Inc., Civ. No. 2:18-cv-320 (E.D. Va.) (“the
`
`Virginia District Court litigation”)).
`
`Petitioner identifies as a related matter a continuation patent
`
`application filed by Patent Owner, U.S. Application S/N 15/949,385
`
`(currently stayed). Pet. 67.
`
`2
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`
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`IPR2019-01539
`Patent RE46,828 E
`
`Petitioner also identifies IPR2019-01502, in which Petitioner
`
`challenges the same claims of the ’828 patent as are challenged in the
`
`proceeding before us. Pet. 67.
`
`B. Real Parties-in-Interest
`
`Petitioner states “Bentley Motors Limited and Bentley Motors, Inc.,
`
`along with Volkswagen AG, Volkswagen Group of America, Inc., Dr. Ing.
`
`h.c. F. Porsche AG, and Audi AG, are real-parties-in-interest.” Pet. 66.
`
`II. BACKGROUND
`
`A. The ’828 Patent
`
`The ’828 patent discloses and claims a vehicle control system. See,
`
`e.g., Ex. 1001, Abstract. More specifically, the disclosed invention provides
`
`for the “coordinated control of a number of subsystems of a vehicle.”
`
`Id. at 1:15–16. The vehicle “subsystems” include automatic transmissions,
`
`air suspensions, power steering, and all-wheel drive. Id. at 1:18–35.
`
`As the number of controllable systems increases, the driver faces an
`
`increasing number of choices as to which configuration modes to select for
`
`each of the systems. Id. at 1:36–39. To simplify this process, known
`
`vehicle control systems use a central vehicle controller to control all the
`
`subsystems in a coordinated way. Id. at 1:41–46 (citing “GB2273580” as an
`
`example of a central coordinating controller). The ’828 patent states,
`
`however, that these known systems do not provide the driver with the ability
`
`to provide direct input of the “surface terrain” to “better select the
`
`appropriate subsystem configuration modes.” Id. at 1:51–55. According to
`
`the ’828 patent, the disclosed invention addresses the need for a vehicle
`
`control system that provides improved control for different off-road surfaces
`
`and terrains. Id. at 1:65–2:2.
`
`3
`
`
`
`IPR2019-01539
`Patent RE46,828 E
`
`Figure 4 from the ’828 patent (reproduced below) is a “diagrammatic
`
`representation” of a vehicle mode controller controlling the powertrain,
`
`steering, braking, and suspension subsystems shown in Figures 1–3.
`
`Ex. 1001, 5:29–30.
`
`
`
`Figure 4 of the ’828 patent is a diagrammatic representation of
`various controllers and subsystems. Id. at Fig. 4.
`
`Figure 4 shows driver input device (99), processor based vehicle mode
`
`controller for providing the appropriate control commands to each
`
`subsystem controller (98), and a plurality of vehicle subsystems, including
`
`engine management system 28, transmission controller 30, steering
`
`controller 48, brakes controller 62, and suspension controller 82. Id. at
`
`9:44–49.
`
`The ’828 patent describes that the driver rotates rotary knob 99 to
`
`select one of a plurality of driving modes or surfaces. Id. at 9:59–62. The
`
`driving modes or surfaces selectable by the driver can include Grass, Sand,
`
`Rock Crawl and Mud. Id. at 9:59–10:5, 13:19–23, 16:57–59, Fig. 13. Once
`
`the driver selects a mode, the vehicle controller “controls the configuration
`
`4
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`
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`IPR2019-01539
`Patent RE46,828 E
`
`modes of operation of each of the subsystem controllers.” Id. at 9:43–58,
`
`2:3–9.
`
`B. Representative Claim
`
`Among the challenged claims, claims 21, 30, 37, 41, 43, 45, and 46
`
`are independent claims. All the independent claims are directed to a
`
`“vehicle control system.” See, e.g., Ex. 1001, 20:13–29 (claim 21). The
`
`independent claims are similar. Claim 21 is directed specifically to an “off-
`
`road . . . sand mode.” Id. at 20:27–28. Claim 30 is directed specifically to
`
`details of the “driver input device.” Id. at 21:46–49. Other independent
`
`claims are directed to specific subsystems, such as the powertrain (claim 37),
`
`suspension (claim 41), brake (claim 43), transmission (claim 45), and speed
`
`control subsystems. Claim 21, reproduced below, is representative.
`
`21. A vehicle control system having a driver input device
`for selecting a driving surface, the vehicle control system
`arranged to control a plurality of vehicle subsystems each of
`which is operable in a plurality of subsystem configuration
`modes, wherein the vehicle control system is operable in a
`plurality of driving modes in each of which it is arranged to select
`the subsystem configuration modes in a manner suitable for a
`respective driving surface, and further wherein the plurality of
`driving modes includes at least two off-road modes in which the
`subsystem configurations are controlled in a manner suitable for
`driving on respective off-road driving surfaces, and an on-road
`mode in which the subsystem configurations are controlled in a
`manner suitable for driving on-road, and still further wherein one
`of the off-road modes is a sand mode in which the vehicle
`subsystems are controlled in a manner suitable for driving on
`sand.
`
`Ex. 1001, 20:13–29.
`
`5
`
`
`
`IPR2019-01539
`Patent RE46,828 E
`
`C. References Relied Upon
`
`Petitioner relies upon the following prior art references:
`
`Claim(s)
`Challenged
`
`30, 32, 45
`
`33, 34, 41, 42
`
`37, 39
`
`46
`
`21, 24, 43
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`103
`
`103
`
`103
`
`103
`
`103
`
`GB ’580 1, Lancer Art2
`
`GB ’580, Lancer Art, Dixon3
`
`GB ’580, Lancer Art, Bourdon4
`
`GB ’580, Lancer Art, Gallery5
`
`959 Art, Hummer Article6
`
`Petitioner also relies on the Declaration testimony of Dr. Glenn R.
`
`Bower. See Ex. 1004.
`
`III. DISCRETIONARY INSTITUTION
`
`Patent Owner presents the threshold issues of whether we should
`
`exercise discretion under 35 U.S.C. §§ 314(a) and 325(d) to deny institution
`
`
`1 UK Patent Application No. 2,273,580 A (Ex. 1005, “GB ’580”).
`
`2 Petitioner includes four distinct exhibits under the summary label of
`“Lancer Art.” These are Exhibits 1017 (2001 Mitsubishi Lancer Evolution
`VII Press Information), 1048 (Car Magazine, Seven samurai article, (Apr.
`2001)), 1059 (LEVOLANT 30 Magazine (translation) (May 2001)), and
`1060 (Lancer Evolution in 4WD Turbo Magazine (translation) (Oct. 2001)).
`
`3 U.S. Patent No. 6,260,859 (Ex. 1027, “Dixon”).
`
`4 U.S. Patent No. 6,044,318 (Ex. 1006, “Bourdon”).
`
`5 U.S. Patent No. 5,941,614 (Ex. 1026, “Gallery”).
`
`6 H2’s Premium Powertrain, Internet article from
`web.archive.org/web/20020212134548/http://www.lynchhummer.com:80/h2
`pages/powertrai n .html (Ex. 1015, “Hummer Article”).
`
`6
`
`
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`IPR2019-01539
`Patent RE46,828 E
`
`based on the status of the related District Court litigation and because the
`
`same or substantially the same prior art or arguments previously were
`
`presented to the Office. See Prelim. Resp. 43–51.
`
`It is well settled that “the Director has complete discretion to decide
`
`not to institute review.” Saint Regis Mohawk Tribe v. Mylan Pharms. Inc.,
`
`896 F.3d 1322, 1327 (Fed. Cir. 2018); see also 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.”). The
`
`Director has delegated these discretionary institution decisions to the Board.
`
`See 37 C.F.R. § 42.4(a). As explained in detail below, we are persuaded that
`
`the evidence weighs significantly in favor of discretionary denial of the
`
`Petition.
`
`A. Section 314(a)
`
`Board decisions considering § 314(a) discretionary denial weigh
`
`whether the same evidence and arguments are presented in the petition as in
`
`the district court. See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-
`
`00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential) (noting that the
`
`petitioner was asserting the same prior art and arguments in the district court
`
`as in the petition); Mylan Pharm., Inc. v. Bayer Intellectual Prop. GmbH,
`
`IPR2018-01143, Paper 13 at 13–14 (PTAB Dec. 3, 2018) (finding that it
`
`would be an inefficient use of Board resources to institute trial due, in part,
`
`to the “extensive overlap of the asserted prior art, expert testimony, and
`
`claim construction” in the co-pending district court case); E-One, Inc. v.
`
`Oshkosh Corp., IPR2019-00161, Paper 16 at 7 (PTAB May 15, 2019)
`
`(observing that “[t]he issues, evidence, and argument presented in the
`
`Petition essentially duplicate what has been and continues to be litigated in
`
`7
`
`
`
`IPR2019-01539
`Patent RE46,828 E
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`the Parallel District Court Case”); cf. Uniden Am. Corp. v. Escort, Inc.,
`
`IPR2019-00724, Paper 6 at 9–10 (PTAB Sept. 17, 2019) (determining that
`
`uncertainty as to the arguments, evidence, and prior art that will be asserted
`
`in the parallel district court case weighed against discretionary denial).
`
`Also relevant to the analysis are similarities or disparities in the
`
`claims being challenged in the district court versus the petition. Facebook,
`
`Inc. v. Blackberry Ltd., IPR2019-00899, Paper 15 at 12 (Oct. 8, 2019)
`
`(discretionary denial disfavored when the petition challenged additional
`
`claims beyond those reviewed by the district court); Huawei Device Co. v.
`
`Optis Wireless Tech., LLC, IPR2018-00653, Paper 27 at 11–12 (PTAB Mar.
`
`13, 2019) (same); Puma North Am., Inc. v. Nike, Inc., IPR2019-01043,
`
`Paper 8 at 9–10 (PTAB Oct. 31, 2019) (same).
`
`Board decisions have sometimes emphasized that commonality in the
`
`claim construction standard favors discretionary denial. That is, when the
`
`Board would be applying the same claim construction standard as the district
`
`court, the Board has considered this fact as favoring denial of institution.
`
`See, e.g., NHK Spring, Paper 8 at 19 (noting that “because the ’841 patent
`
`has expired, we will apply the same standard for claim construction as the
`
`district court”). However, the current version of the Board’s rules applies
`
`the Phillips standard to all inter partes reviews, not just those involving
`
`expired patents. See Changes to the Claim Construction Standard for
`
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
`
`Board, 83 Fed. Reg. 51,340, 51,341 (Oct. 11, 2018) (to be codified at
`
`37 C.F.R. pt. 42). Because this fact is now present in every AIA trial in
`
`which there is a parallel district court case, our analysis for this inquiry turns
`
`on other facts.
`
`8
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`
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`IPR2019-01539
`Patent RE46,828 E
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`A district court stay of the litigation pending resolution of the PTAB
`
`trial allays concerns about inefficiency and duplication of efforts. This fact
`
`has strongly favored institution, especially if the stay was granted by the
`
`district court to allow the PTAB trial to narrow issues before the court. See
`
`Precision Planting, LLC v. Deere & Co., IPR2019-01052, Paper 19 at 10
`
`(PTAB Jan. 7, 2020) (finding that the district court stay of the parallel
`
`district court case rendered moot the patent owner’s argument for
`
`discretionary denial of the petition); Apotex Inc. v. UCB Biopharma Sprl,
`
`IPR2019-00400, Paper 17 at 31‒32 (PTAB July 15, 2019) (finding that the
`
`district court stay of the parallel district court case predicated on the inter
`
`partes review means that the trial will not occur before the Board renders a
`
`final decision). Another factor is the proximity of the trial date. A trial date
`
`significantly ahead of anticipated final written decision date will weigh
`
`against institution. A related factor to the proximity of the trial date is the
`
`amount and type of investment by the court and the parties in the parallel
`
`litigation. See Next Caller, Inc. v. TRUSTID, Inc., IPR2019-00963, Paper 8
`
`at 13 (PTAB Oct. 28, 2019) (district court issued claim construction order);
`
`E-One, Inc. v. Oshkosh Corp., IPR2019-00162, Paper 16 at 8, 13, 20 (PTAB
`
`June 5, 2019) (district court issued preliminary injunction order after finding
`
`petitioner’s invalidity contentions unlikely to succeed on the merits);
`
`Thermo Fisher Scientific, Inc. v. Regents of the Univ. of Cal., IPR2018-
`
`01370, Paper 11 at 26 (PTAB Feb. 7, 2019) (district court issued claim
`
`construction order).
`
`1. Overlap of the Claims
`
`Nine of the thirteen claims challenged in this IPR proceeding also are
`
`challenged in the Virginia District Court litigation, as we explain below.
`
`9
`
`
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`IPR2019-01539
`Patent RE46,828 E
`
`The Petition challenges thirteen claims in the ’828 patent: claims 21,
`
`24, 30, 32, 33, 34, 37, 39, 41, 42, 43, 45 and 46. E.g., Pet. 5. In the Virginia
`
`District Court litigation, Defendant (Petitioner in this IPR proceeding) is
`
`challenging ten claims in the ’828 patent: claims 21, 24, 30, 31, 32, 33, 41,
`
`42, 43, and 46. Ex. 2001, 10–11. As shown in the chart below, nine claims
`
`(70%) from this IPR proceeding are also challenged in the District court.
`
`Compare Pet 5, Ex. 2001, 10–11. Only four claims from this IPR
`
`proceeding, claims 34, 37, 39, and 45 are not also challenged in the Virginia
`
`District Court litigation. Id.
`
`CLAIMS
`AT ISSUE
`21
`
`24
`
`30
`
`31
`
`32
`
`33
`
`34
`
`37
`
`39
`
`41
`
`42
`
`43
`
`45
`
`46
`
`VA. DIST.
`CT.
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`NO
`
`NO
`
`NO
`
`X
`
`X
`
`X
`
`NO
`
`X
`
`IPR
`
`X
`
`X
`
`X
`
`NO
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`10
`
`
`
`IPR2019-01539
`Patent RE46,828 E
`
`In Sand Revolution II LLC v. Continental Intermodal Group-Trucking
`
`LLC, the Board denied institution of a petition where District Court
`
`discovery had not yet closed, trial was scheduled five months after the
`
`Decision, and the claims and references in the District Court’s invalidity
`
`arguments were “very similar to, but perhaps not exactly the same” as in the
`
`related IPR proceeding. Sand Revolution II, LLC v. Continental Intermodal
`
`Group – Trucking LLC, IPR2019-01393, Paper 12 at 16–17 (PTAB,
`
`February 5, 2020). Here, we find there is substantial duplication between
`
`the claims at issue in this IPR proceeding and the claims at issue in the
`
`District Court. This finding weighs in favor of discretionary denial.
`
`2. Overlap of the References
`
`Petitioner relies on nine references to establish that the challenged
`
`claims are unpatentable. See, e.g., Pet 5 (identifying Ex. 1005, 1006, 1015,
`
`1017, 1026, 1027, 1048, 1059, and 1060)7. These same nine references also
`
`are relied on to establish invalidity in the Virginia District Court litigation.
`
`Ex. 2001, 4–7 (see Prod. Nos. 10664, 10679, 10700, 10770, 11138, 11206,
`
`11243, 11258, and 11336). Defendants’ Invalidity Contentions (Ex. 2001)
`
`refer to the “Lancer Art” repeatedly (e.g. Ex. 2001, 10–11) but we have not
`
`been directed to any evidence that the Invalidity Contentions define the term
`
`“Lancer Art.” Nonetheless, the four references included in the Lancer Art
`
`defined in the Petition also are relied on in the Invalidity Contentions.
`
`Ex. 2001, 6–7 (see Prod. Nos. 11206, 11243, 11258, and 11336).
`
`
`7 The “Lancer Art” referred to in the Petition includes four different
`references: Exs. 1017, 1048, 1059, 1060.
`
`11
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`IPR2019-01539
`Patent RE46,828 E
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`The asserted bases for unpatentability in this IPR proceeding and
`
`invalidity in the District Court also are substantially identical. Compare
`
`Pet. 5 with Ex. 2001, 10–11.
`
`To emphasize the duplication of references, evidence, and arguments
`
`between this IPR proceeding and the Virginia District Court litigation,
`
`Defendants state in their Invalidity Contentions that “Bentley [Petitioner in
`
`this IPR proceeding] incorporates by reference the entirety of the arguments
`
`and exhibits presented in its petitions for Inter Partes Review (Nos. 2019-
`
`01502 and 2019-01539).” Ex. 2001, 10.
`
`Thus, we find there is duplication between the evidence and grounds
`
`of unpatentability in this IPR proceeding and the evidence and grounds of
`
`invalidity asserted in the District Court. This finding weighs in favor of
`
`discretionary denial.
`
`3. Stage of the Litigation
`
`A further fact tending to weigh in favor of discretionary denial of
`
`institution is when the courts have already invested substantial resources
`
`adjudicating the same issues that are presented in a Board proceeding, or
`
`when trial in the parallel district court case has already occurred or is
`
`reasonably imminent. See, e.g., NHK Spring, Paper 8 at 20 (finding that the
`
`advanced state of the district court case, which was set to go to trial
`
`approximately six months before the Board’s final decision would be due,
`
`weighed in favor of denial); E-One, Paper 16 at 6–9 (denying institution
`
`where district court case was scheduled to conclude before a final decision
`
`from the Board would be due and the district court had already invested
`
`substantial resources deciding the claim construction and obviousness issues
`
`presented in the Petition); Mylan, Paper 13 at 13–14 (noting that the district
`
`12
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`IPR2019-01539
`Patent RE46,828 E
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`court had already construed the claims and trial was scheduled for more than
`
`eight months before the Board’s final decision would be due); Thermo
`
`Fisher Sci., Inc. v. Regents of Univ. of California, IPR2018-01370, Paper 11
`
`at 26–27 (PTAB Feb. 7, 2019) (advanced stage of district court case favored
`
`denying institution where the district court had already construed the claims
`
`and the petitioner proposed using the district court’s constructions in the
`
`IPR, and the district court’s trial was scheduled to occur three months after
`
`the institution decision).
`
`Conversely, when the district court has not yet expended resources on
`
`a case or the court’s resolution of issues raised in a petition is distant,
`
`discretionary denial tends to be somewhat more disfavored. Amazon.com,
`
`Inc. v. CustomPlay, LLC, IPR2018-01496, Paper 12 at 8–9 (PTAB Mar. 7,
`
`2019) (disagreeing that parallel district court case was at an advanced stage
`
`sufficient to warrant denial when the court had not yet construed the claims
`
`and, although trial was scheduled to occur before the Board’s final decision
`
`would be due, the court had already extended some of the deadlines in the
`
`case schedule); Abbott Vascular, Inc. v. FlexStent, LLC, IPR2019-00882,
`
`Paper 11 at 30–31 (PTAB Oct. 7, 2019) (determining that the “early stage of
`
`the district court litigation” weighed against discretionary denial despite a
`
`trial date four months later, because summary judgment briefing and claim
`
`construction had not yet occurred).
`
`Here, we are persuaded that the Virginia District Court litigation is at
`
`such an advanced stage that it weighs in favor of discretionary denial.
`
`Patent Owner served the complaint in the Virginia District Court
`
`litigation on August 30, 2018. Petitioner filed this petition on August 23,
`
`2019 just one week before the statutory deadline. During this delay, the
`
`13
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`IPR2019-01539
`Patent RE46,828 E
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`Virginia District Court litigation proceeded rapidly towards resolution.
`
`Ex. 3001.
`
`In a 31-page Order, issued on June 26, 2019, the Court denied a
`
`substantive motion to dismiss the amended complaint under Fed. R. Civ. P.
`
`12(b)(6) based on whether the claims were eligible for patent protection
`
`under 35 U.S.C. § 101. Ex. 2021. This Order provided a comprehensive
`
`analysis of the patented technology, the claims, and other evidence, and
`
`concluded that the claims were patent-eligible. Id.
`
`Fact discovery closed January 17, 2020. Ex. 2024, 2. Claim
`
`construction briefing was completed on February 25, 2020.8 Id. at 5. A
`
`Markman hearing is scheduled for March 20. Id. The jury trial is scheduled
`
`for October 13, 2020. Id. at 1. The trial date is two months before a PTAB
`
`hearing would occur (if we were to institute), and five months before a
`
`PTAB Final Decision would issue (again, if we were to institute). We have
`
`not been directed to any evidence of a stay being entered by the District
`
`Court.
`
`We recognize that the District Court has not issued a claim
`
`construction ruling, and expert discovery ends in July 2020 (Ex. 2024, 2).
`
`But those events are likely to occur well before we have an oral hearing or
`
`issue a Final Written Decision.
`
`The main purposes to be served by discretionary denial are avoiding
`
`wasteful duplication of effort, minimizing the potential for inconsistent
`
`outcomes, and ensuring that the Office allocates its adjudicative resources
`
`
`8 We note that “Supplemental Authority in Support of its Claim Construction
`Briefs” and related filings have been filed since February 25, 2020.
`Ex. 3001
`
`14
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`IPR2019-01539
`Patent RE46,828 E
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`effectively and efficiently. See Consolidated Trial Practice Guide, at 56
`
`(noting that the Director’s discretion under § 314(a) is informed by the
`
`requirements under §§ 316(b) and 326(b) to consider effects on “the
`
`economy, the integrity of the patent system, the efficient administration of
`
`the Office, and the ability of the Office to timely complete proceedings
`
`instituted under this chapter”).
`
`Based on the evidence before us, we find that the District Court has
`
`invested substantial resources adjudicating the same issues as are presented
`
`in this IPR proceeding, and that the litigation is nearing its final stages.
`
`This finding weighs in favor of discretionary denial.
`
`4. Conclusion Regarding Discretionary Denial
`
`After considering all of the circumstances the parties have presented
`
`that are relevant to the § 314(a) discretionary denial inquiry, we determine
`
`that the facts of this case warrant discretionary denial. Facts weighing most
`
`in favor of discretionary denial include: (1) substantial overlap in patent
`
`claims challenged in the Virginia District Court litigation; (2) overlap in the
`
`obviousness theories and references that Petitioner is pursuing here and in
`
`the Virginia District Court litigation; (3) the advanced stage of the Virginia
`
`District Court litigation; and (4) the significant investment by the Court and
`
`parties into the Virginia District Court litigation.
`
`IV. CONCLUSION
`
`Based on the evidence and the analysis above, we exercise our
`
`discretion and deny the Petition. Accordingly, we do not institute inter
`
`partes review of the ’828 patent.
`
`
`
`
`
`15
`
`
`
`IPR2019-01539
`Patent RE46,828 E
`
`V. ORDER
`
`For the reasons given, it is:
`
`ORDERED that inter partes review is not instituted for any claim of
`
`the ’828 patent.
`
`16
`
`
`
`IPR2019-01539
`Patent RE46,828 E
`
`PETITIONER:
`
`Edgar Haug
`Brian Murphy
`Robert Colletti
`HAUG PARTNERS LLP
`ehaug@haugpartners.com
`bmurphy@haugpartners.com
`rcolletti@haugpartners.com
`
`
`PATENT OWNER:
`
`Jon Strang
`Clement Naples
`LATHAM & WATKINS LLP
`jonathan.strang@lw.com
`clement.naples@lw.com
`
`
`
`
`17
`
`
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