Trials@uspto.gov
`571-272-7822
`
`Paper 15
`Date: May 13, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FINTIV, INC.,
`Patent Owner.
`
`IPR2020-00019
`Patent 8,843,125 B2
`
`
`
`
`
`
`
`
`
`Before WILLIAM M. FINK, Vice Chief Administrative Patent Judge, and
`LINDA E. HORNER and LYNNE E. PETTIGREW, Administrative Patent
`Judges.
`
`HORNER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`I.
`
`INTRODUCTION
`
`Petitioner, Apple Inc., filed a Petition requesting inter partes review
`
`of claims 11, 13, 14, 16‒18, and 20‒25 of U.S. Patent No. 8,843,125 B2
`
`(Ex. 1001, “the ’125 patent”). Paper 1 (“Pet.”). Patent Owner, Fintiv, Inc.,
`
`filed a Preliminary Response. Paper 10 (“Prelim. Resp.”). In its Preliminary
`
`
`
`
`571-272-7822
`
`Paper 15
`Date: May 13, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FINTIV, INC.,
`Patent Owner.
`
`IPR2020-00019
`Patent 8,843,125 B2
`
`
`
`
`
`
`
`
`
`Before WILLIAM M. FINK, Vice Chief Administrative Patent Judge, and
`LINDA E. HORNER and LYNNE E. PETTIGREW, Administrative Patent
`Judges.
`
`HORNER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`I.
`
`INTRODUCTION
`
`Petitioner, Apple Inc., filed a Petition requesting inter partes review
`
`of claims 11, 13, 14, 16‒18, and 20‒25 of U.S. Patent No. 8,843,125 B2
`
`(Ex. 1001, “the ’125 patent”). Paper 1 (“Pet.”). Patent Owner, Fintiv, Inc.,
`
`filed a Preliminary Response. Paper 10 (“Prelim. Resp.”). In its Preliminary
`
`
`
`
`
`IPR2020-00019
`Patent 8,843,125 B2
`
`Response, Patent Owner requests that the Board apply its discretion under
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`35 U.S.C. § 314(a) to deny institution of the requested proceeding due to the
`
`advanced state of a parallel district court litigation, in which the same issues
`
`have been presented and trial has been set for November 16, 2020. Prelim.
`
`Resp. 22‒26 (citing NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-
`
`00752, Paper 8 (PTAB Sept. 12, 2018) (precedential, designated May 7,
`
`2019)). Although Petitioner addressed the issue briefly in the Petition, at
`
`that time no trial date had been set. See Pet. 7. In light of the change in
`
`status of the parallel proceeding, the Board ordered supplemental briefing on
`
`the issue of discretionary denial under 35 U.S.C. § 314(a) to give Petitioner
`
`an opportunity to respond. Paper 11. This Order, which is now
`
`precedential, discussed the factors relevant to the Board’s decision on
`
`whether to apply its discretion under 35 U.S.C. § 314(a) to deny institution.
`
`Id. (“Order” or “Precedential Order”). Petitioner filed a Reply to Patent
`
`Owner’s Preliminary Response to address the issue of discretionary denial.
`
`Paper 12 (“Reply”). Patent Owner filed a Sur-Reply to Petitioner’s Reply.
`
`Paper 13 (“Sur-Reply”).
`
`Upon consideration of the parties’ briefing, and for the reasons
`
`explained below, we exercise our discretion under 35 U.S.C. § 314(a) and
`
`deny institution of inter partes review.
`
`II. BACKGROUND
`
`A. Real Parties in Interest
`
`Apple Inc. identifies itself as the real party-in-interest. Paper 1, 4.
`
`Fintiv, Inc. identifies itself as the real party-in-interest. Paper 4, 1.
`
`B. Related Matter
`
`Petitioner and Patent Owner identify the following related matter:
`
`Fintiv, Inc. v. Apple Inc., Case No. 6:18-cv-00372, filed in the United States
`
`2
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`
`
`IPR2020-00019
`Patent 8,843,125 B2
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`District Court for the Western District of Texas on December 21, 2018.
`
`Paper 1, 4; Paper 4, 1.
`
`C. The ’125 Patent
`
`The ’125 patent relates to management of virtual cards stored on
`
`mobile devices. Ex. 1001, 1:25‒26. Specifically, the ’125 patent “provides
`
`a mobile device to store a mobile wallet application and a wallet
`
`management system to store corresponding wallet application information.”
`
`Id. at 2:55‒58. The patent also provides a method for provisioning a wallet
`
`application, a contactless card applet, a wallet management applet, and a
`
`widget, and a method for synchronizing a mobile wallet application with the
`
`wallet management system. Id. at 2:58‒63.
`
`Figure 1 below shows a mobile wallet system according to the ’125
`
`patent.
`
`
`
`3
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`IPR2020-00019
`Patent 8,843,125 B2
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`Figure 1 is a system diagram of a mobile wallet system and associated
`
`integration. Ex. 1001, 4:44‒45. As shown in Figure 1, the mobile wallet
`
`system includes mobile device 100 and wallet management system (WMS)
`
`110. Id. at 4:48‒49. WMS 110 is supported by trusted service manager
`
`(TSM) system 120, mobile network operator 130, and service provider 140.
`
`Id. at 4:48‒51.
`
`Figure 2 below shows installation of a wallet application on a mobile
`
`device.
`
`Figure 2 is a system diagram illustrating a system and method for
`
`installing a mobile wallet application on the mobile device and correlating
`
`wallet management applet in the secure element (SE) of the mobile device.
`
`Id. at 5:49‒52.
`
`
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`4
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`IPR2020-00019
`Patent 8,843,125 B2
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`The ’125 patent also describes that the system can dynamically filter a
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`list of mobile widget applications that are available for installation based on
`
`corresponding mobile device attributes. Id. at 10:9‒12, Fig. 4. Specifically,
`
`rule engine 116 of WMS 110 may be used to display to mobile device 100 a
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`filtered list of downloadable applications. Id. at 10:18‒26. Downloadable
`
`applications include contactless card applets 23 housed in TSM system 120.
`
`Id. at 10:35‒36. The ’125 patent describes that “by providing an active
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`dynamic filtering mechanism at the TSM system 120 level, all of the parties
`
`involved in such transaction need to make only a general request to the TSM
`
`system 120 to access and to provide customer specific services.” Id. at
`
`10:63‒67.
`
`The ’125 patent also describes that the system synchronizes mobile
`
`wallet application 24 in mobile device 100 with TSM 120. Id. at 11:5‒7,
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`Fig. 5. Specifically, TSM system 120 stores the master configuration of
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`mobile wallet application 24, which may be changed by service providers
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`from time-to-time. Id. at 11:13‒18. When the user logs into mobile wallet
`
`application 24, the application checks with TSM system 120 for any
`
`modifications to the wallet configuration since the last login by the user. Id.
`
`at 11:35‒39. If updates are needed, the user will be prompted to make the
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`update. Id. at 11:48‒50. While mobile wallet application 24 is active, any
`
`modifications made in the application itself will be updated in WMS 110.
`
`Id. at 11:54‒57.
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`5
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`
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`IPR2020-00019
`Patent 8,843,125 B2
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`D. Challenged Claims
`
`The Petition challenges claims 11, 13, 14, 16‒18, and 20‒25. Of
`
`these, claims 11, 18, and 23 are independent. Claim 11, which is illustrative
`
`of the subject matter at issue, is directed to a method of provisioning a
`
`contactless card applet and is reproduced below.
`
` 11. A method for provisioning a contactless card applet in a
`mobile device comprising a mobile wallet application, the
`method comprising:
`
`activating the mobile wallet application;
`
`connecting to a Trusted Service Manager (TSM) system;
`
`synchronizing the mobile wallet application with the TSM
`system;
`
`displaying a contactless card applet based on attributes of
`the mobile device;
`
`receiving a selection of a contactless card applet;
`
`retrieving a widget and a wallet management applet
`(WMA) corresponding to the contactless card applet; and
`
`provisioning the selected contactless card applet, the
`widget, and the WMA.
`
`Ex. 1001, 13:16‒30. Independent claim 18 is directed to a wallet
`
`management system. Id. at 14:7‒23. Independent claim 23 is directed to a
`
`mobile device. Id. at 14:38‒53.
`
`6
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`
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`IPR2020-00019
`Patent 8,843,125 B2
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`E. Asserted Grounds of Unpatentability
`
`Petitioner contends that the challenged claims are unpatentable based
`
`on the following grounds:
`
`35 U.S.C. §
`Claim(s) Challenged
`11, 13, 14, 16, 17, 23‒25 103(a)1
`18, 20‒22
`103(a)
`
`Reference(s)/Basis
`Aiglstorfer2, Buhot3, Wang4
`Aiglstorfer, Wang
`
`
`
`III. DISCRETIONARY DENIAL
`
`A. Legal Standards
`
`In exercising the Director’s discretion under 35 U.S.C. § 314(a), the
`
`Board may consider “events in other proceedings related to the same patent,
`
`either at the Office, in district courts, or the ITC.” Consolidated Trial
`
`Practice Guide November 20195 (“TPG”) at 58. The recent Precedential
`
`Order in this case sets forth factors that balance considerations of system
`
`efficiency, fairness, and patent quality when a patent owner raises an
`
`argument for discretionary denial due to the advanced state of a parallel
`
`proceeding. Order 5‒6. These factors include:
`
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), revised 35 U.S.C. §§ 102, 103 effective March 16,
`2013. Because the challenged patent was filed before March 16, 2013, we
`refer to the pre-AIA version of §§ 102, 103.
`2 U.S. Patent Application Publication No. US 2010/0138518 A1, published
`June 3, 2010. Ex. 1004.
`3 U.S. Patent Application Publication No. US 2010/0190437 A1, published
`July 29, 2010. Ex. 1005.
`4 Chinese Patent Application Publication No. CN 101459902A, published
`June 17, 2009. Ex. 1008. We refer to the English language translation
`provided by Petitioner, and submitted as Exhibit 1009.
`5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`7
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`IPR2020-00019
`Patent 8,843,125 B2
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`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`
`3. investment in the parallel proceeding by the court and the
`parties;
`
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`
`Id. See also NHK, Paper 8 at 20 (considering an earlier trial date as a factor
`
`in favor of discretionary denial).
`
`As explained in detail in the Order, the Board examines these factors,
`
`which relate to whether efficiency, fairness, and the merits support the
`
`exercise of authority to deny institution. Id. at 6, 9. In evaluating the
`
`factors, the Board takes a holistic view of whether efficiency and integrity of
`
`the system are best served by denying or instituting review. Id.
`
`B. Facts
`
`Fintiv filed its original complaint in the Western District of Texas on
`
`December 21, 2018, and served Apple with the complaint on January 4,
`
`2019. Ex. 3002 (docket #1, 8). Fintiv served its initial asserted claims and
`
`infringement contentions on Apple on May 20, 2019. Ex. 2029. Shortly
`
`thereafter, the District Court held a case management conference, and
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`subsequently issued a scheduling order. Ex. 2023. The scheduling order set,
`
`among other things, a due date for Apple to serve preliminary invalidity
`
`contentions on July 25, 2019 and a Markman Hearing for November 8,
`
`2019. Id. at 1‒2.
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`8
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`IPR2020-00019
`Patent 8,843,125 B2
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`Between the time of the case management conference and the
`
`scheduled Markman Hearing, Apple filed the present Petition on October 28,
`
`2019.6 Paper 1. This Petition was filed five months after Apple received
`
`Fintiv’s Initial Infringement Contentions and ten months after Apple was
`
`served with Fintiv’s complaint. At the time of filing the Petition, the parties
`
`were in the midst of preparations for the Markman hearing, and initial
`
`contentions had been exchanged, but fact discovery had not yet begun, and
`
`the District Court had not yet set a trial date. Ex. 2023.
`
`Shortly thereafter, the District Court held a Markman hearing and, a
`
`few weeks later, issued a claim construction order. Exs. 2009, 1027. At the
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`Markman hearing, the District Court also set a trial date of November 16,
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`2020. Ex. 2009. Fact discovery then began on November 14, 2019.
`
`Ex. 2023, 2.
`
`Meanwhile, Apple served Fintiv with its final invalidity contentions.
`
`Ex. 1045 (filed Jan. 17, 2020). The parties are currently in the midst of
`
`ongoing discovery. Exs. 1034, 1039, 1040, 1041, 1043, 2028. Many of the
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`documents and witnesses involved in this case are located in the Northern
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`District of California, which has been under a shelter-in-place order since
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`March 16, 2020. Ex. 1042.
`
`
`6 During this time, Apple sought to transfer venue. Ex. 2037 (seeking, in
`part, to transfer the case to the Northern District of California). The District
`Court denied Apple’s motion to transfer the case to California. Ex. 3002
`(docket # 65, 73) (denying, in part, motion on September 13, 2019).
`The U.S. Court of Appeals for the Federal Circuit denied Apple’s petition
`for a writ of mandamus. Ex. 2026 (denying petition on Dec. 20, 2019). See
`also Ex. 2027 (denying Apple’s petition for rehearing en banc on March 30,
`2020).
`
`9
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`IPR2020-00019
`Patent 8,843,125 B2
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`The District Court recently issued several orders related to the
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`COVID-19 pandemic. Among others, the District Court issued a Standing
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`Order Regarding Post-Markman Patent Cases, in which the Court indicated
`
`its willingness to “consider all reasonable adjustments to the current
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`scheduling orders to allow the parties to complete discovery, and have
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`adequate time to complete expert reports, take expert depositions, and file
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`appropriate motions.” Ex. 3002 (docket #122).
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`On April 23, 2020, the District Court granted a joint motion to extend
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`the schedule, resetting the jury trial to begin on March 8, 2021, and
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`postponing the due dates to complete fact and expert discovery and the
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`deadline for filing dispositive motions. Ex. 1049 (Agreed Amended
`
`Scheduling Order).
`
`C. Policy Considerations
`
`1. Policy Arguments
`
`Before turning to the factors, Petitioner argues, as an overall matter of
`
`policy, that we should not deny institution based on the state of a parallel
`
`district court proceeding. Reply 1‒5. Petitioner argues that taking into
`
`account the state of a parallel district court proceeding in a decision on
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`institution negates the statutorily provided one-year filing period, encourages
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`forum shopping, improperly bases the decision on trial dates that are often
`
`moving targets,7 and contravenes Congressional intent of the America
`
`Invents Act, which was based on district courts granting stays. Id.
`
`
`7 In addition to its policy arguments, Petitioner argues that the Board should
`take judicial notice of effect of the COVID-19 pandemic and the disruption
`it is causing to trial schedules. Reply 4. Since the filing of Petitioner’s
`supplemental brief, the parties have agreed to an amended scheduling order
`that renders moot this argument. We address the amended scheduling order
`below in our analysis of the factors.
`
`10
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`
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`IPR2020-00019
`Patent 8,843,125 B2
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`Relatedly, Petitioner also argues that NHK did not hold that the advanced
`
`state of a parallel case, alone, is sufficient reason to deny. Id. at 5.
`
`Patent Owner argues that the district court trial date is not dispositive,
`
`and is used in conjunction with other factors to assess and promote
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`efficiency and fairness in inter partes review proceedings. Sur-Reply 7.
`
`Patent Owner asserts that the factors in this case demonstrate that
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`discretionary denial will promote efficiency and fairness. Id. Patent Owner
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`also argues that forum shopping is not an issue in this case, noting that the
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`District Court denied Apple’s motion to transfer the case to another district.
`
`Id. at 9‒10.
`
`2. Analysis
`
`We have addressed Petitioner’s policy arguments in our Precedential
`
`Order. As discussed there, a parallel proceeding in an advanced state
`
`implicates considerations of efficiency and fairness, which can serve as an
`
`independent reason to apply discretion to deny institution. See Order 3. As
`
`to Petitioner’s concern about forum shopping, it always has been the case
`
`that some district courts move faster than others, and patent owners seeking
`
`to enforce patents may be inclined to file suit in a district that moves
`
`relatively quickly. It is up to a district court to determine whether adequate
`
`ties exist between the defendant and the selected district. As noted by Patent
`
`Owner, in this case, the District Court determined that venue was proper. To
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`Petitioner’s point regarding the time-bar of 35 U.S.C. § 315(b), we recognize
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`that, under certain circumstances, considerations of the state of a parallel
`
`proceeding may require petitioners to act more quickly than the maximum
`
`amount of time permitted by Congress. Nonetheless, Congress also gave the
`
`Director discretion to deny institution. See Cuozzo Speed Techs., LLC v.
`
`Lee, 579 U.S. __, 136 S. Ct. 2131, 2140 (2016) (citing 35 U.S.C. § 314(a)).
`
`11
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`IPR2020-00019
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`Thus, considerations of efficiency and fairness require a holistic look at the
`
`facts surrounding the parallel proceeding in each case. See id. at 6.
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`D. Analysis of Factors
`
`We turn to each of the factors set forth in our Order and briefed by the
`
`parties.
`
`1. Factor 1: whether the court granted a stay or evidence exists that
`one may be granted if a proceeding is instituted
`
`Neither party has requested a stay of the District Court case pending
`
`this proceeding. Thus, the District Court has not ruled on this issue.
`
`Petitioner argues that there is no reason that a stay should be denied in
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`the District Court case because Congress intended for district courts to be
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`liberal in granting stays pending AIA post-grant proceedings. Reply 6‒7.
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`Patent Owner argues that Petitioner does not provide specific facts or cases
`
`that indicate the District Court would be inclined to stay this case.
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`Sur-Reply 2. Patent Owner also argues that a stay is unlikely under the
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`three-factor analysis employed by the District Court. Id. at 2‒4 (citing Exs.
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`2024, 2025).
`
`A judge determines whether to grant a stay based on the facts of each
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`specific case as presented in the briefs by the parties. We decline to infer,
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`based on actions taken in different cases with different facts, how the
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`District Court would rule should a stay be requested by the parties in the
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`parallel case here. This factor does not weigh for or against discretionary
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`denial in this case.
`
`2. Factor 2: proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision
`
`The parties’ supplemental briefs presented arguments addressing
`
`uncertainty about the November 16, 2020, trial date due to the COVID-19
`
`12
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`IPR2020-00019
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`pandemic. Reply 7; Sur-Reply 4‒5. After filing of these briefs, the parties
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`agreed to an amended scheduling order. Ex. 1049. In the amended
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`scheduling order, the District Court set the jury trial to begin on March 8,
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`2021, approximately two months before a final written decision would be
`
`due in this proceeding. Id. at 3. We generally take courts’ trial schedules at
`
`face value absent some strong evidence to the contrary. We have no reason
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`to believe that the jointly agreed-upon trial date, which already has been
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`postponed by several months due to complications stemming from the
`
`COVID-19 pandemic, will be postponed again. Because the currently
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`scheduled District Court trial is scheduled to begin two months before our
`
`deadline to reach a final decision, this factor weighs somewhat in favor of
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`discretionary denial in this case.
`
`3. Factor 3: investment in the parallel proceeding by the court and
`the parties
`
`Petitioner argues that apart from a Markman Hearing conducted early
`
`in the district court litigation, no other efforts have been expended by the
`
`court on the parties’ claims and defenses (e.g., no preliminary injunction has
`
`been sought, summary judgment motions are months away, fact discovery is
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`ongoing, Patent Owner has taken only two depositions, and Petitioner has
`
`taken no depositions). Reply 7‒8. Patent Owner argues that substantial
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`investment in the district court case has been made because claim
`
`construction is complete, the parties have served final infringement and
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`invalidity contentions and exchanged multiple rounds of written discovery,
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`depositions have been taken, and venue issues have been briefed and
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`appealed. Sur-Reply 5‒6.
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`The parties each filed three briefs addressing claim construction issues
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`in this case in the District Court, i.e., opening, responsive, and reply briefs,
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`13
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`IPR2020-00019
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`the District Court held a claim construction hearing on November 7, 2019,
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`and a few weeks after the hearing, the District Court issued a detailed
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`34-page claim construction order construing seven claim terms. Ex. 1027.
`
`The parties also exchanged both initial and final infringement and invalidity
`
`contentions, including detailed invalidity claim charts addressing the prior
`
`art cited in this Petition. Exs. 2010, 2023, 2029, 2031‒2036. We recognize
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`that much work remains in this case as it relates to invalidity: fact discovery
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`is in its early stages, with document production ongoing and depositions just
`
`getting underway, expert reports are not yet due, and substantive motion
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`practice is yet to come. Thus, although the parties and the Court have
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`invested effort in the District Court case to date, further effort remains to be
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`expended in this case before trial. Based on the level of investment and
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`effort already expended on claim construction and invalidity contentions in
`
`the District Court, this factor weighs somewhat in favor of discretionary
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`denial in this case.
`
`4. Factor 4: overlap between issues raised in the petition and in the
`parallel proceeding
`
`Petitioner admits that the same claims are challenged in the Petition
`
`and in the district court, but Petitioner argues that its invalidity contentions
`
`in district court contain more prior art than the art presented in the Petition.
`
`Reply 9‒10. Petitioner also states that it has not decided whether to pursue
`
`the art presented in its Petition in expert discovery or at trial in the district
`
`court. Id. at 9. Patent Owner argues that Petitioner challenges the same
`
`claims and presents the same grounds in both the Petition and in the District
`
`Court and the fact that Petitioner raises additional contentions in the District
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`Court is irrelevant. Sur-Reply 6‒7 (citing Exs. 2010, 2031‒2036).
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`14
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`IPR2020-00019
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`We agree with Patent Owner that Petitioner’s assertion of additional
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`invalidity contentions in the District Court is not relevant to the question of
`
`the degree of overlap for this factor. Further, the fact that Petitioner has not
`
`decided whether to pursue the art from this proceeding in its expert
`
`discovery or at trial in the District Court is not persuasive. The same art is
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`presented in Petitioner’s final invalidity contentions, which are extremely
`
`detailed and developed. See Exs. 2010, 2031‒2036. Thus, because the
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`identical claims are challenged based on the same prior art in both the
`
`Petition and in the District Court, this factor weighs in favor of discretionary
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`denial in this case.
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`5. Factor 5: whether the petitioner and the defendant in the parallel
`proceeding are the same party
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`The parties agree that the Petitioner here, and the defendant in District
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`Court, are the same party. Reply 10; Sur-Reply 7. Because the petitioner
`
`and the defendant in the parallel proceeding are the same party, this factor
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`weighs in favor of discretionary denial.
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`6. Factor 6: other circumstances that impact the Board’s exercise of
`discretion, including the merits
`
`As noted in our Order, a balanced assessment of factors may include
`
`consideration of the merits. Order 14‒15. Each party argues that the merits
`
`tip the balance in its favor. Reply 10; Sur-Reply 10. A full merits analysis
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`is not necessary as part of deciding whether to exercise discretion not to
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`institute, but rather the parties may point out, as part of the factor-based
`
`analysis, particular “strengths or weaknesses” to aid the Board in deciding
`
`whether the merits tip the balance one way or another. See Order 15–16. As
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`an example, a petitioner can use the opportunity to draw attention to
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`particular grounds that it believes are particularly persuasive of
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`15
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`IPR2020-00019
`Patent 8,843,125 B2
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`unpatentability. Conversely, a patent owner can use the opportunity to call
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`attention to particular arguments that, on balance, make the petitioner’s case
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`a close call.
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`Here, our initial inspection of the merits on the record before us
`
`suggests some of Petitioner’s challenges contain certain weaknesses and,
`
`taken as a whole, the strengths of the merits do not outweigh other factors in
`
`favor of discretionary denial. For example, Patent Owner identifies a
`
`weakness in Petitioner’s challenge to claim 11 in explaining where the prior
`
`art discloses the claimed synchronizing step. Prelim. Resp. 31‒32. We
`
`agree that the Petition does not propose an interpretation of “synchronizing,”
`
`in light of how that term is used in the context of the ’125 patent, to explain
`
`how Aiglstorfer’s download of banking card information from the Trusted
`
`Service Manager to a Trusted Secure Agent of the electronic device
`
`synchronizes the first moblet software module with the Trusted Service
`
`Manager.
`
`Also, Patent Owner identifies a weakness in Petitioner’s challenges to
`
`claims 11 and 18 in explaining where the prior art discloses the filtering
`
`aspect of these claims. Prelim. Resp. 32‒35, 58. The Petition relies on
`
`Aiglstorfer, as modified by Wang, to disclose these filtering aspects of
`
`claims 11 and 18. Pet. 32‒33. Patent Owner argues that the Petition fails to
`
`explain why it would have been obvious to modify Aiglstorfer to filter the
`
`moblet software modules based on attributes of the mobile device “given
`
`that [Aiglstorfer’s] applets are typically device-independent.” Prelim.
`
`Resp. 35. We find that neither Petitioner nor Dr. Neuman explains
`
`sufficiently why one of ordinary skill in the art would have modified
`
`Aiglstorfer’s system to filter device-independent moblet software modules
`
`based on attributes of the mobile device, or to modify Aiglstorfer’s
`
`16
`
`
`
`IPR2020-00019
`Patent 8,843,125 B2
`
`device-independent moblet software modules to make them device-
`
`dependent.
`
`
`
`As noted in our Order, a full analysis of the merits is not necessary to
`
`evaluate this factor. Order 15. It is sufficient that Patent Owner has pointed
`
`out that Petitioner’s case, at least as to two of three independent claims, is a
`
`close call. As to claim 23, we express no opinion. The merits, taken as a
`
`whole, do not tip the balance in favor of Petitioner and instead also weigh in
`
`favor discretionary denial in a balanced assessment of all the circumstances.
`
`IV. CONCLUSION
`
`Based on the circumstances discussed above, we agree with Patent
`
`Owner that instituting a trial would be an inefficient use of Board resources.
`
`As discussed above, the District Court case is ongoing, trial is scheduled to
`
`begin two months before we would reach a final decision in this proceeding,
`
`the District Court has expended effort resolving substantive issues in the
`
`case, the identical claims are challenged based on the same prior art in both
`
`the Petition and in the District Court, and the defendant in District Court and
`
`the Petitioner here are the same party. Further, based on our own
`
`preliminary assessment of the merits of some challenges presented in the
`
`Petition, we view Petitioner’s arguments as containing some weaknesses.
`
`On balance, these facts, when viewed holistically, lead us to determine that
`
`efficiency is best served by denying institution. Thus, we exercise our
`
`discretion to deny institution under § 314(a).
`
`V. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that that Petition is denied; and
`
`FURTHER ORDERED that no inter partes review is instituted.
`
`17
`
`
`
`IPR2020-00019
`Patent 8,843,125 B2
`
`FOR PETITIONER:
`
`Travis Jensen
`K. Patrick Herman
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`T61PTABDocket@orrick.com
`P52PTABDocket@orrick.com
`Apple-Fintiv_OHS@orrick.com
`
`
`
`FOR PATENT OWNER:
`
`Jonathan K. Waldrop
`Rodney R. Miller
`John W. Downing
`KASOWITZ BENSON TORRES LLP
`jwaldrop@kasowitz.com
`rmiller@kasowitz.com
`jdowning@kasowitz.com
`
`
`
`18
`
`
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