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`Paper __
`Filed: March 27, 2020
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`
`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
`U.S. Patent No. RE46,828
`
`
`Petitioner’s Request for Rehearing
`
`
`

`

`
`
`
`TABLE OF AUTHORITIES .................................................................................... ii 
`
`TABLE OF CONTENTS
`
`I. 
`
`II. 
`
`INTRODUCTION ........................................................................................... 1 
`
`LEGAL STANDARD ..................................................................................... 2 
`
`III.  ARGUMENT ................................................................................................... 2 
`
`A. 
`
`The Board Should Reconsider NHK Spring and Institute
`Here ....................................................................................................... 4 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`NHK Spring Contravenes the IPR Statutory
`Scheme and Explicit Congressional Intent ................................. 4 
`
`NHK Spring Undermines the AIA’s Objectives ......................... 9 
`
`NHK Spring’s Focus on the District Court’s
`Schedule Ignores Its Inherent Unpredictability ........................ 11 
`
`NHK Spring Incentivizes Forum Shopping .............................. 13 
`
`B. 
`
`NHK Spring Should Not Support Institution Denial
`Based Solely or Primarily on the State of Parallel District
`Court Litigation ................................................................................... 14 
`
`IV.  CONCLUSION .............................................................................................. 15 
`
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`IPR2019-01539
`U.S. Patent No.RE46,828
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`
`TABLE OF AUTHORITIES
`
`Cases 
`Cuozzo Speed Techs. v. Lee,
`136 S. Ct. 2131 (2016) .................................................................................5, 6
`
`Dietz v. Bouldin,
`136 S. Ct. 1885 (2016) ................................................................................... 10
`
`Ericsson Inc. v. Intellectual Ventures I LLC,
`IPR2018-01256, Paper 6 (P.T.A.B. Jan. 9, 2019) ......................................... 13
`
`Ericsson Inc. v. Intellectual Ventures II LLC,
`IPR2018-01689, Paper 15 (P.T.A.B. April 16, 2019) ................................... 15
`
`Intuitive Surgical, Inc. v. Ethicon LLC,
`IPR2018-01703, Paper 7 (P.T.A.B. Feb. 19, 2019) ............................... 10, 15
`
`Microsoft Corp. v. i4i Limited Partnership,
`564 U.S. 91 (2011) ......................................................................................... 11
`
`NHK Spring Co. v. Intri-Plex Technologies, Inc.,
`IPR2018-00752, Paper 8 (P.T.A.B. Sept. 12, 2018) ............................. passim
`
`Oticon Medical AB v. Cochlear Limited,
`IPR2019-00975, Paper 15 (P.T.A.B. Oct. 16, 2019) .............................. 11, 15
`
`Precision Planting, LLC v. Deere & Co.,
`IPR2019-01044, Paper 17 (P.T.A.B. Dec. 2, 2019) ...................................... 12
`
`Samsung Elecs. Co. Ltd. v. Immersion Corp.,
`IPR2018-01502, Paper 11 (P.T.A.B. Mar. 29, 2019) .................................... 15
`
`Sand Revolution II, LLC. v. Continental Intermodal Group – Trucking LLC.,
`IPR2019-01393 Paper 15 (P.T.A.B. March 6, 2020) ...................................... 1
`
`SAS Institute Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ..................................................................................... 8
`
`Statutes 
`35 U.S.C. § 312(a)(2) ................................................................................................ 6
`
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`IPR2019-01539
`U.S. Patent No.RE46,828
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`35 U.S.C. § 313 ......................................................................................................7, 8
`
`35 U.S.C. § 314(a) ........................................................................................... passim
`
`35 U.S.C. § 314(d) ..................................................................................................... 7
`
`35 U.S.C. § 315(b) ..................................................................................................... 7
`
`35 U.S.C. § 315(d) ..................................................................................................... 5
`
`35 U.S.C. § 315(e) ..................................................................................................... 6
`
`35 U.S.C. § 315(e)(2) ................................................................................................. 6
`
`35 U.S.C. § 316(a)(11) ............................................................................................... 7
`
`35 U.S.C. § 316(a)(5)-(8) ........................................................................................... 7
`
`35 U.S.C. § 316(b) ..................................................................................................... 7
`
`35 U.S.C. § 317(b) (2006) ......................................................................................... 7
`
`35 U.S.C. § 318(a) ..................................................................................................... 7
`
`35 U.S.C. § 318(d) ..................................................................................................... 7
`
`35 U.S.C. § 325(d) ........................................................................................... passim
`
`35 U.S.C. § 6 (a) ........................................................................................................ 6
`
`Other Authorities 
`157 Cong. Rec. at S5429 (Sept. 8, 2011) ................................................................. 10
`
`AIA § 18(b)(1) .................................................................................................... 5, 10
`
`Regulations 
`37 C.F.R. § 42.100(c) ................................................................................................. 7
`
`37 C.F.R. § 42.107(b) ................................................................................................ 7
`
`37 C.F.R. § 42.120(b) ................................................................................................ 7
`
`37 C.F.R. § 42.51 ....................................................................................................... 7
`
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`IPR2019-01539
`
`IPR2019-01539
`U.S. Patent No.RE46,828
`US. Patent N0.RE46,828
`
`37 C.F.R. § 42.52 ....................................................................................................... 7
`37 CPR. § 42.52 ....................................................................................................... 7
`
`37 C.F.R. § 42.71(d) ..............................................................................................1, 2
`37 CPR. § 42.71(d) .............................................................................................. 1, 2
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`iv
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`iV
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`IPR2019-01539
`U.S. Patent No. RE46,828
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`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. § 42.71(d), Bentley Motors Limited and Bentley
`
`Motors, Inc. (“Petitioner”) respectfully submit this Request for Rehearing in
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`response to the Decision denying institution of inter partes review (Paper 12,
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`“Panel Dec.”). The Board, relying on NHK Spring Co. v. Intri-Plex Technologies,
`
`Inc., IPR2018-00752, Paper 8 (P.T.A.B. Sept. 12, 2018) (precedential), improperly
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`denied institution under 35 U.S.C. § 314(a) based solely or primarily on the
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`“advanced status of related district court litigation.” Panel Dec. at 2. This request
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`is timely filed within 30 days of the Board’s Decision. Petitioner also has
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`submitted a request for Precedential Opinion Panel (“POP”) review.
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`As recently set forth in Sand Revolution II, LLC. v. Continental Intermodal
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`Group – Trucking LLC., IPR2019-01393, Paper 15 (P.T.A.B. March 6, 2020), the
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`POP should reconsider and overrule the Board’s application of NHK Spring that
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`the advanced state of a related district court action, without more, warrants
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`discretionary denial under § 314(a). The Board’s application of NHK Spring here
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`and in Sand Revolution is inconsistent with the IPR statutory scheme and
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`Congressional intent, leads to inconsistent decision-making, encourages forum-
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`shopping, and limits availability of IPRs as a forum for challenging patent validity.
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`NHK Spring held that a parallel district court action can support denial of
`
`institution but only when there is an additional independent reason that supports
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`U.S. Patent No.RE46,828
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`the denial. NHK Spring at 18-20. NHK Spring did not hold that a related district
`
`court action can provide the sole or primary reason to decline IPR review. Here,
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`there is no prior IPR petition “road map” or prior Office proceedings that advanced
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`substantially the same prior art or arguments as in the Petition. In addition, the
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`Board’s decision in Bentley’s related IPR2019-1502 (issued less than three weeks
`
`before its decision here) addressed the merits of Bentley’s first IPR without
`
`considering the status of the related district court action. Bentley’s second IPR
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`presents new art disclosing the “plurality of subsystems,” found lacking in the
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`Board’s earlier decision. Instead of addressing Bentley’s arguments the Board
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`denied institution based on the status of the related litigation.
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`II. LEGAL STANDARD
`“A party dissatisfied with a decision may file a single request for rehearing.”
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`37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party
`
`believes the Board misapprehended or overlooked, and the place where each
`
`matter was previously addressed in a motion, an opposition, or a reply.” Id.
`
`III. ARGUMENT
`The Board applied NHK Spring to deny review under 35 U.S.C. § 314(a)
`
`because it found a related litigation between Petitioner and Patent Owner was at an
`
`advanced stage with overlap of claims at issue and prior art references. Panel Dec.
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`at 2, 9-14. Although it addressed the merits of Bentley’s related IPR, filed nine
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`
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`2
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`U.S. Patent No.RE46,828
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`days earlier, the Board found here that the district court action was sufficiently
`
`advanced because i) a jury trial was tentatively scheduled to begin two months
`
`before a PTAB hearing would occur, ii) the district court had invested substantial
`
`resources as a result of ruling on a motion to dismiss, and iii) the litigation was
`
`nearing its final stages despite the upcoming claim construction hearing and
`
`beginning of expert discovery. Panel Dec. at 14-15. The Board did not address the
`
`fact that Petitioner’s IPR arguments were not previously presented to the Office,
`
`nor did the Board address the merits of Petitioner’s arguments to determine
`
`whether there was a reasonable likelihood that at least one claim was unpatentable.
`
`Petitioner respectfully submits that the decision not to institute should be set
`
`aside. First, NHK Spring was wrongly decided insofar as it holds that the
`
`advanced stage of a related district court action can form the basis of a
`
`discretionary denial under § 314(a). The POP should reconsider and overrule that
`
`aspect of NHK Spring. Second, even under NHK Spring, the Board here abused its
`
`§ 314(a) discretion because it lacked an independent reason for denying review
`
`beyond the existence of a related district court action. NHK Spring does not give
`
`the Board authority to deny institution solely or primarily because a related district
`
`court action could potentially resolve the overlapping invalidity disputes before a
`
`final decision by the Board. Rather, the NHK Spring panel held pursuant to
`
`§ 325(d) that it had express discretion to deny the petition because the same or
`
`
`
`3
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`IPR2019-01539
`U.S. Patent No.RE46,828
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`substantially the same prior art or arguments were previously presented to the
`
`Office. The advanced state of the district court litigation with similar invalidity
`
`disputes was an “additional” factor supporting denial, not the only basis for the
`
`denial. NHK Spring at 19-20. Although the art was different and contained the
`
`elements found lacking in Bentley’s first IPR, the Board did not address the merits
`
`or § 325(d) factors1 in its decision. There was no additional reason for denial and
`
`the Board erred in denying institution, especially after addressing the merits of
`
`Bentley’s related IPR filed a little more than a week before this IPR.
`
`A. The Board Should Reconsider NHK Spring and Institute Here
`1. NHK Spring Contravenes the IPR Statutory Scheme and
`Explicit Congressional Intent
`NHK Spring held that the advanced state of a parallel district court action
`
`involving similar invalidity disputes as those in an IPR petition can support a
`
`denial of an otherwise timely and meritorious IPR petition, because “instituting a
`
`trial under [such] circumstances . . . would be an inefficient use of Board
`
`resources.” NHK Spring at 19-20; See also Consolidated Trial Practice Guide
`
`(Nov. 2019) at 58 n.2. Respectfully, this holding contravenes the IPR statutory
`
`scheme and explicit Congressional intent.
`
`
`1 Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR 2017-01586, Paper 8 at
`
`17-18 (PTAB Dec. 15, 2017) (precedential).
`
`
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`4
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`IPR2019-01539
`U.S. Patent No.RE46,828
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`
`In promulgating IPRs, Congress was well aware of the possibility of parallel
`
`validity proceedings. See AIA § 18(b)(1). Congress did not authorize the Director
`
`to deny an IPR based on the stage or status of a related district court proceeding.
`
`To the contrary, Congress only authorized the Board to stay or terminate a pending
`
`IPR in view of other proceedings before the Patent Office. See 35 U.S.C. § 315(d).
`
`Congress intended to have the Patent Office use its special expertise to reexamine
`
`issued patents as a fast, efficient, and cost effective alternative to district court
`
`litigation. The goal was to improve patent quality and restore confidence in the
`
`U.S. patent system. As stated by the Supreme Court in Cuozzo Speed Techs. v.
`
`Lee, 136 S. Ct. 2131 (2016):
`
`[O]ne important congressional objective [is], namely,
`giving the Patent Office significant power to revisit and
`revise earlier patent grants. See H.R. Rep., at 45, 48
`(explaining that the statute seeks to “improve patent
`quality and restore confidence in the presumption of
`validity that comes with issued patents”); 157 Cong. Rec.
`9778 (2011) (remarks of Rep. Goodlatte) (noting that
`inter partes review “screen[s] out bad patents while
`bolstering valid ones”). Cuozzo, 136 S. Ct. at 2139-40;
`and
`
`Although Congress changed the name from
`“reexamination” to “review,” nothing convinces us that,
`in doing so, Congress wanted to change its basic
`purposes, namely, to reexamine an earlier agency
`decision. . . . [S]ee H.R. Rep., at 39–40 (Inter partes
`review is an “efficient system for challenging patents that
`should not have issued”). Id. at 2144 (citations omitted).
`
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`U.S. Patent No.RE46,828
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`Congress further stated:
`
`[I]f an inter partes review is instituted while litigation is
`pending, that review will completely substitute for at least
`the patents-and-printed-publications portion [35 U.S.C.
`§§ 102 and 103] of the civil litigation. 157 Cong. Record
`S1360, 1376 (March 8, 2011) (remarks of Senator Kyl
`regarding impact of estoppel provisions in 35 U.S.C. §§
`315(e) and 325(e) (emphasis added)).
`
`Further focusing on the statutory scheme, administrative patent judges “shall
`
`be persons of competent legal knowledge and scientific ability who are appointed
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`by the Secretary, in consultation with the Director.” 35 U.S.C. § 6 (a) (emphasis
`
`added). The America Invents Act “creates within the Patent Office a Patent Trial
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`and Appeal Board (Board) composed of administrative patent judges, who are
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`patent lawyers and former patent examiners, among others.” Cuozzo at 2137. The
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`statutory scheme relies heavily on PTAB Judges with scientific ability, training,
`
`and experience directly relevant to the patented technology of the claims being
`
`challenged in an IPR petition. Few if any district court judges are as technically
`
`qualified to decide patent validity challenges.
`
`Section 312(a)(2) requires identification of all real parties in interest who are
`
`bound by any final written decision pursuant to Section 315(e). Moreover,
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`Congress provided for estoppel in the district court proceedings based on the
`
`grounds raised in the IPR, 35 U.S.C. § 315(e)(2), but did not provide for a similar
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`estoppel based on the district court’s validity decision, which is in stark contrast
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`
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`6
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`IPR2019-01539
`U.S. Patent No.RE46,828
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`with the pre-AIA inter partes reexamination scheme. See 35 U.S.C. § 317(b)
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`(2006). That deliberate choice indicates Congress did not intend to preempt IPRs
`
`and demonstrates that NHK Spring is inconsistent with the IPR statutory scheme.
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`IPR proceedings are designed to be streamlined and resolved within 18
`
`months. Petitioners must file a petition within one year of service of a patent
`
`infringement complaint, Patent Owners must file a preliminary response within 3
`
`months from the notice of filing date, there is no interlocutory review of the
`
`Director’s institution decisions, discovery is very limited and must be completed
`
`within a 3 month response time, and a final written decision must issue within 12
`
`months from institution. 35 U.S.C. §§ 313, 314(d), 315(b), 316(a)(5)-(8),
`
`316(a)(11), 316(b), 318(a), 318(d); 37 C.F.R. §§ 42.51, 42.52, 42.100(c),
`
`42.107(b), 42.120(b). Very few district courts move faster or more efficiently than
`
`an IPR validity proceeding.
`
`The Panel Decision incorrectly posits that the Director has “complete
`
`discretion to decide not to institute review.” Panel Dec. 7. To the contrary, the
`
`Supreme Court has determined that the Director’s discretion to institute is limited:
`
`The Director, we see, is given only the choice “whether”
`to institute an inter partes review. That language
`indicates a binary choice—either institute review or
`don’t. And by using the term “pursuant to,” Congress
`told the Director what he must say yes or no to: an inter
`partes review that proceeds “[in] accordance with” or
`“in conformance to” the petition.” Nothing suggests the
`
`
`
`7
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`IPR2019-01539
`U.S. Patent No.RE46,828
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`
`Director enjoys a license to depart from the petition and
`institute a different inter partes review of his own design.
`SAS Institute, 138 S. Ct. 1348, 1355-56 (2018) (emphasis
`added).
`
`Section 314(a) . . . requires [the Director] to decide
`whether the petitioner is likely to succeed on “at least 1”
`claim. Once that single claim threshold is satisfied, it
`doesn’t matter whether the petitioner is likely to prevail
`on any additional claims; the Director need not even
`consider any other claim before instituting review. Id. at
`1356 (first emphasis added).
`
`“The rest of the statute confirms, too, that the petitioner’s petition, not the
`
`Director’s discretion, is supposed to guide the life of the litigation.” Id. That is
`
`particularly noteworthy here because after addressing the merits of Bentley’s first
`
`IPR, the second IPR was discretionarily denied based on the same litigation that
`
`was pending when the same Board panel addressed the merits of Bentley’s first
`
`IPR.
`
`Congress did not vest the Board with “complete discretion” to deny
`
`institution merely for reasons of administrative convenience, especially where such
`
`denial would prejudice the party seeking review and effectively negate a statutory
`
`provision. Instead, Congress intended that the Board exercise its discretion in
`
`applying the enumerated statutory factors. See, e.g., 35 U.S.C. § 325(d) (providing
`
`discretion to deny a petition “because, the same or substantially the same prior art
`
`or arguments previously were presented to the Office”); see also Id. at § 313
`
`
`
`8
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`IPR2019-01539
`U.S. Patent No.RE46,828
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`(permitting patent owner to file a preliminary response “that sets forth reasons why
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`no inter partes review should be instituted based upon the failure of the petition to
`
`meet any requirement of this chapter”) (emphasis added). Relying on the state of a
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`parallel district court proceeding to deny institution has no basis in the statute and
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`should not be considered when determining whether to institute review.
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`In sum, Congress crafted the IPR statute in favor of using IPR adjudicative
`
`proceedings over district court litigation to reexamine the patentability of issued
`
`patent claims for alleged anticipation and obviousness. The use of § 314(a) and
`
`NHK Spring to justify discretionary denial based solely or primarily on the
`
`advanced state of a co-pending district court proceeding undermines the IPR
`
`statute and Congressional intent.
`
`2. NHK Spring Undermines the AIA’s Objectives
`In NHK Spring, the Board concluded that instituting IPR, when the same
`
`invalidity dispute would be resolved sooner in district court, would contravene the
`
`AIA objective of providing an “effective and efficient alternative to district court
`
`litigation.” NHK Spring at 20. This conclusion was based on the erroneous
`
`presumption that the PTAB must be the first and sole forum to resolve invalidity.
`
`As the Board itself has recognized:
`
`[T]here is no per se rule against instituting an inter partes
`review when any Final Decision may issue after a district court
`has addressed the patentability of the same claims. Nor should
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`9
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`IPR2019-01539
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`there be. Instituting under such circumstances gives the district
`court the opportunity . . . to conserve judicial resources by
`staying the litigation until the review is complete, thus
`satisfying the AIA’s objective of providing “an effective and
`efficient alternative to district court litigation.”
`
`Intuitive Surgical, Inc. v. Ethicon LLC, IPR2018-01703, Paper 7 at 11-12
`
`(P.T.A.B. Feb. 19, 2019). Indeed, Congress intended for the district courts (not the
`
`Board) to determine when to stay litigation. See AIA § 18(b)(1).
`
`“[D]istrict courts have the inherent authority to manage their dockets and
`
`courtrooms with a view toward the efficient and expedient resolution of cases.”
`
`Dietz v. Bouldin, 136 S. Ct. 1885, 1892 (2016). NHK Spring improperly shifts the
`
`decision about whether and how to conserve judicial resources from the district
`
`court to the Board. An expansive application of NHK Spring would deny
`
`petitioners the option of using IPR as an alternative to district court litigation
`
`simply because the plaintiff chose to bring suit in a certain jurisdiction. The
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`practical effect of NHK Spring is that defendants must forego the one-year period
`
`Congress deemed necessary to make a proper decision on whether to file an IPR,
`
`and instead file IPR petitions immediately upon being sued, before they are able to
`
`“identify and understand” fully the relevant patent claims (from an infringement
`
`perspective) and prior art. See 157 Cong. Rec. at S5429 (Sept. 8, 2011) (statement
`
`of Sen. Kyl). This will decrease IPR quality and allow the Board to characterize an
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`IPR, improperly, as being “delayed” if it is filed close to the one year bar date, as
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`10
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`IPR2019-01539
`U.S. Patent No.RE46,828
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`was the case here.2 Panel Dec. at 13. But as the precedential NHK Spring decision
`
`made clear, a Petition filed shortly before the one-year bar date is “timely.” NHK
`
`Spring at 19; see also Oticon Medical AB v. Cochlear Limited, IPR2019-00975,
`
`Paper 15, 22 (P.T.A.B. Oct. 16, 2019) (§ II.B and II.C precedential) (petition filed
`
`four days before one-year bar date was “timely”).
`
`An expansive application of NHK Spring also cuts against the statutory
`
`objective of having anticipation and obviousness issues resolved under a
`
`preponderance of the evidence standard of proof in IPR proceedings. 35 U.S.C. §
`
`316(e). Congress did not intend to force a petitioner, who timely files an IPR
`
`petition challenging a patent’s validity, to litigate in district court under a clear and
`
`convincing evidence standard. See Microsoft Corp. v. i4i Limited Partnership, 564
`
`U.S. 91, 95 (2011) (“We consider whether § 282 requires an invalidity defense to
`
`be proved by clear and convincing evidence. We hold that it does.”).
`
`3. NHK Spring’s Focus on the District Court’s Schedule
`Ignores Its Inherent Unpredictability
`
`
`2 Bentley filed close to the one year date because of a long-pending dispositive
`
`motion (denied two months before the bar date on June 26, 2019) that would have
`
`made the IPR unnecessary. The Court had not conducted a Rule 16 conference or
`
`issued a Scheduling Order when Bentley filed its IPR petition in August 2019.
`
`
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`11
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`IPR2019-01539
`U.S. Patent No.RE46,828
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`Both here and in NHK Spring, the Board based its discretionary denial on
`
`the possibility that the related district court action will result in a jury verdict
`
`before a final written decision. See Dec. at 14 (stating that a “jury trial is
`
`scheduled for October 13, 2020” and that “[t]he trial date is two months before a
`
`PTAB hearing would occur…, and five months before a PTAB Final Decision
`
`would issue…”). But as the Board has acknowledged in assessing the stage of a
`
`related litigation, “District court litigation is not subject to fixed, immutable
`
`deadlines for final disposition. Courts can and often do, extend or accelerate
`
`deadlines and modify case schedules for myriad reasons.” Precision Planting,
`
`LLC v. Deere & Co., IPR2019-01044, Paper 17 at 14 (P.T.A.B. Dec. 2, 2019). In
`
`Precision Planting the Board noted that the district court case was not at an
`
`advanced stage, there was no claim construction ruling, and discovery deadlines
`
`were two to eight months away. Id. The facts are very similar here.
`
`The district court has not issued its claim construction ruling. The March
`
`20th Markman hearing was cancelled and the Court has not yet rescheduled it.
`
`Further delays are possible – the schedule contemplated having a Markman
`
`decision before submission of opening expert reports in mid-May and dispositive
`
`motions in mid-July. At the scheduling conference, the court scheduled the
`
`Markman hearing after the IPR institution deadline, anticipating guidance from the
`
`Board. Ex. 1059, 28:7–24. The court also contemplated staying the case pending
`
`
`
`12
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`the Board’s institution decision. Judge Davis opened the status conference by
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`asking counsel why “shouldn’t this matter be stayed pending. . . that initial [Board]
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`decision about the petition.” Id. at 2:22-3:4. Judge Davis recognized that the
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`district court case is in a “unique. . . procedural posture” and may be ripe for a stay
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`if the Board institutes an IPR proceeding. Id. at 30:9-19. The Board has refused to
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`apply NHK Spring where the district court indicated it would grant a stay. See,
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`e.g., Ericsson Inc. v. Intellectual Ventures I LLC, IPR2018-01256, Paper 6 at 43
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`(P.T.A.B. Jan. 9, 2019).
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`4.
`NHK Spring Incentivizes Forum Shopping
`If the Board interprets NHK Spring to allow a discretionary denial based on
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`district court scheduling order dates for actions that might, or might not, occur
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`before the Board’s statutory final decision date, the Board will incentivize
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`plaintiffs to forum shop. Plaintiffs will evade IPR proceedings by filing suit in
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`districts known for expedited trial schedules. In those districts any IPR decisions
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`will typically issue after a jury trial. That is the case here. Patent Owner filed suit
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`in the Eastern District of Virginia, a well known “rocket docket” where the average
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`time to a jury verdict is 14.3 months, less than the 18 months required for an IPR
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`final decision. See https://www.uscourts.gov/statistics/table/c-5/statistical-tables-
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`federal-judiciary/2019/12/31. NHK Spring’s reasoning further encourages
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`plaintiffs to engage in gamesmanship because plaintiffs know any district court
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`discovery or trial extension will cut against a discretionary denial. Incentivizing
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`plaintiffs to seek discretionary denials by forum shopping in rocket dockets or
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`refusing to stipulate to any time extensions is contrary to the AIA’s goal of having
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`the Patent Office use its special expertise to reexamine issued patents in a fast,
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`efficient, and cost effective manner.
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`B. NHK Spring Should Not Support Institution Denial Based Solely
`or Primarily on the State of Parallel District Court Litigation
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`Even if the Board declines to reconsider NHK Spring’s holding that the
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`advanced state of a district court proceeding can be an additional factor in denying
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`institution, the Decision should be reconsidered because it misapplied NHK Spring.
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`Under NHK Spring, the advanced state of a district court action cannot be the
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`primary or sole basis for discretionary denial. Instead, there must be an additional
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`reason that can independently justify a discretionary denial. See NHK Spring at
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`11-18, 20. But the Decision here provided no additional basis for denying
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`institution beyond the advanced status of the district court action. See Dec. at 9-14.
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`The heart of the NHK Spring decision was a discretionary denial under §
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`325(d) wherein the court thoroughly analyzed the Becton Dickinson factors. After
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`determining that § 325(d) “alone is sufficient to support [discretionary denial of
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`institution],” the panel in NHK Spring proceeded to “find that the advanced state of
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`the district court proceeding is an additional factor that weighs in favor of denying
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`the Petition under § 314(a).” NHK Spring at 11-18, 20 (emphasis added). As the
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`Board acknowledged, NHK Spring “was decided chiefly on § 325(d).” Samsung
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`Elecs. Co. Ltd. v. Immersion Corp., IPR2018-01502, Paper 11 at 35 (P.T.A.B. Mar.
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`29, 2019). And “it is unclear whether considerations under 35 U.S.C. § 314(a)
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`alone would have supported discretionary denial of the petition in [NHK Spring].”
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`Ericsson Inc. v. Intellectual Ventures II LLC, IPR2018-01689, Paper 15 at 57
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`(P.T.A.B. April 16, 2019). “NHK Spring does not suggest, much less hold, that
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`inter partes review should be denied under § 314(a) solely because a district court
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`is scheduled to consider the same validity issues before the inter partes review
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`would be complete.” Intuitive Surgical at 13 (emphasis added). Thus, while NHK
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`Spring permits the Board to consider the state of a parallel district court action in
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`its § 314(a) analysis, the state of the parallel action cannot be the primary or sole
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`basis for denying institution. “[T]he § 314(a) inquiry is a balanced assessment of
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`all relevant circumstances in the case, including the merits.” Oticon at 22
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`(emphasis added). Because the Board’s Decision here found no such independent
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`basis for denial (see Dec., 15-18), the Board misapplied NHK Spring
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that this Request
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`for Rehearing be granted and the Board reconsider its Decision and institute inter
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`partes review of the ’828 patent.
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`IPR2019-01539
`U.S. Patent No.RE46,828
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`Respectfully submitted,
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`
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`By:
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`/s/ Edgar H. Haug
`Edgar H. Haug (Reg. No. 29,309)
`Brian P. Murphy (Reg. No. 34,986)
`Robert E. Colletti (Reg. No. 76, 417)
`Georg C. Reitboeck (pro hac vice to be requested)
`Christopher F Gosselin (pro hac vice to be requested)
`
`HAUG PARTNERS LLP
`745 Fifth Avenue
`New York, New York 10151
`Telephone: (212) 588-0800
`Facsimile: (212) 588-0500
`Email: BentleyIPR@haugpartners.com
`
`Counsel for Petitioner
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`DATED: March 27, 2020
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`CERTIFICATE OF SERVICE
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`I hereby certify that on March 27, 2020, I caused a true and correct copy of
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`the foregoing Petitioner’s Request for Rehearing Under 37 C.F.R. § 42.71(d) to be
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`served electronically on petitioners lead and backup counsel at the following e-
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`mail addresses:
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`Jonathan M. Strang (Reg. No. 61,724)
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, D.C. 20004-1304
`jonathan.strang@lw.com
`
`Clement Naples (Reg. No. 50,663)
`Latham & Watkins LLP
`885 Th