Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 8
`Entered: March 27, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2020-00115
`Patent 8,407,609 B2
`____________
`
`
`Before CHARLES J. BOUDREAU, DANIEL J. GALLIGAN, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`DIRBA, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 8
`Entered: March 27, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2020-00115
`Patent 8,407,609 B2
`____________
`
`
`Before CHARLES J. BOUDREAU, DANIEL J. GALLIGAN, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`DIRBA, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`IPR2020-00115
`Patent 8,407,609 B2
`
`I. INTRODUCTION
`On October 31, 2019, Google LLC (“Petitioner”) filed a Petition
`seeking institution of inter partes review of claims 1–3 of U.S. Patent
`No. 8,407,609 B2 (Ex. 1001, “the ’609 patent”). Paper 1 (“Pet.”). Uniloc
`2017 LLC (“Patent Owner”) filed a Preliminary Response on February 10,
`2020. Paper 6 (“Prelim. Resp.”).
`We may institute an inter partes review if the information presented
`in the Petition and the Preliminary Response shows that there is a reasonable
`likelihood that Petitioner would prevail with respect to at least one of the
`challenged claims. See 35 U.S.C. § 314. However, the Board has discretion
`to deny a petition even when a petitioner meets that threshold. Id.; see, e.g.,
`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 Trial Practice Guide identifies considerations
`that may warrant exercise of this discretion. Consolidated Trial Practice
`Guide (Nov. 2019) (“Consolidated TPG”), 55–63, available at
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf.
`Having considered the parties’ submissions, we determine that it is
`appropriate in this case to exercise our discretion to deny institution of inter
`partes review pursuant to 35 U.S.C. § 314(a).
`
`II. BACKGROUND
`
`Related District Court Proceedings
`A.
`The ’609 patent is asserted against Petitioner in Uniloc 2017 LLC v.
`Google LLC, 2:18-cv-00502 (E.D. Tex.) (“the Texas Litigation”). Pet. 63;
`Prelim. Resp. 9. Patent Owner filed the Texas Litigation on November 17,
`
`2
`
`
`
`IPR2020-00115
`Patent 8,407,609 B2
`2018. Prelim. Resp. 9. The district court held a Markman hearing on
`January 10, 2020, and issued an order shortly thereafter. Ex. 2001 (District
`Court’s Claim Construction Memorandum and Order), 1, 78. That order
`construes six of the disputed claim terms and phrases from the ’609 patent.
`Id. at 57–78. According to the district court’s Amended Docket Control
`Order: fact discovery must be completed and expert reports are due on
`March 30, 2020; expert discovery closes and dispositive and Daubert
`motions are due by May 11, 2020; a joint pretrial order, proposed jury
`instructions, and a proposed verdict form are due by July 6, 2020; a pretrial
`conference will be held on July 9, 2020. Ex. 2002, 1–3. The order also
`specifies that jury selection in the Texas Litigation will begin on August 17,
`2020—less than five months from today. Id. at 1.
`The parties also identify other district court proceedings involving the
`’609 patent that are currently pending. Pet. 63–64; Prelim. Resp. 9. Each of
`these proceedings was filed on or after November 17, 2018 (i.e., the filing
`date of the Texas Litigation). Prelim. Resp. 9; see Pet. 63–64.
`
`Related PTAB Proceedings
`B.
`The ’609 patent is the subject of petitions for inter partes review in
`IPR2019-01367 (filed by Sling TV, L.L.C. on July 22, 2019; the “1367
`IPR”) and IPR2020-00041 (filed by Netflix, Inc. and Roku, Inc. on October
`31, 2019; the “041 IPR”). Pet. 63; Prelim. Resp. 9. Both of those petitions
`challenge all claims of the ’609 patent (i.e., claims 1–3), and the Board
`instituted an inter partes review in both proceedings. Sling TV, L.L.C. v.
`Uniloc 2017 LLC, IPR2019-01367, Paper 7 (PTAB Feb. 4, 2020) (Institution
`Decision); Netflix, Inc. v. Uniloc 2017, IPR2020-00041, Paper 10 (PTAB
`Mar. 25, 2020) (Institution Decision).
`
`3
`
`
`
`IPR2020-00115
`Patent 8,407,609 B2
`In addition, the ’609 patent is the subject of IPR2020-00677 (filed by
`Vudu, Inc. on March 3, 2020), and in that proceeding, the petitioner requests
`joinder with IPR2019-01367. A decision whether to institute has not been
`entered in IPR2020-00677.
`
`The Petition’s Asserted Grounds
`C.
`Petitioner asserts the following grounds of unpatentability (Pet. 24):
`
`Claim(s) Challenged 35 U.S.C. §
`
`Reference(s)/Basis
`
`1
`
`1
`
`2, 3
`
`
`
`102(b)1
`
`103(a)
`
`103(a)
`
`Hayward2
`
`Hayward, Middleton3
`
`Hayward, Middleton, Ryan4
`
`III. ANALYSIS
`Patent Owner argues, inter alia, that we should exercise our discretion
`under 35 U.S.C. §314(a) to deny institution. Prelim. Resp. 10–13. For the
`reasons explained below,5 we agree.
`
`
`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 US 2004/0045040 A1, published Mar. 4, 2004 (Ex. 1005).
`3 US 2002/0111865 A1, published Aug. 15, 2002 (Ex. 1006).
`4 US 6,421,675 B1, issued July 16, 2002 (Ex. 1007).
`5 We decline to address the other arguments advanced by Patent Owner for
`discretionary denial. See generally Prelim. Resp. 13–23.
`
`4
`
`
`
`IPR2020-00115
`Patent 8,407,609 B2
`Patent Owner contends that a trial would be “an inefficient use of
`Board resources.” Prelim. Resp. 10–13 (citing NHK Spring Co. v. Intri-Plex
`Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential)
`(“NHK”)). In particular, Patent Owner submits that “[j]ury selection is set to
`begin in the [Texas Litigation] on August 17, 2020, which is approximately
`three months after the anticipated timing of an institution decision from the
`Board in this case, and therefore, approximately nine months prior to any
`expected Final Written Decision in this IPR if trial were instituted.” Id. at
`10 (emphasis omitted) (citing Ex. 2002). Patent Owner argues that
`Petitioner’s invalidity contentions in the Texas Litigation include “the same
`grounds” of unpatentability as are presented in the Petition for independent
`claim 1. Id. at 12 (citing Ex. 2003, 14–15, 18 (Invalidity Contentions)). In
`addition, Patent Owner contends that the district court has already construed
`the claims of the ’609 patent and that expert discovery in the Texas
`Litigation “will close on May 11, 2020, which is one day after the last date
`to issue a decision on institution in this proceeding.” Id. at 12–13 (citing
`Ex. 2001; Ex. 2002, 3). According to Patent Owner, the Board’s
`precedential decision in NHK is “on point,” and, consequently, the Board
`should exercise discretion to deny the Petition. Id. at 10, 13.
`In the Petition, Petitioner identifies the Texas Litigation, but does not
`discuss its stage or the arguments advanced in that copending district court
`case; rather, the Petition simply notes that the Texas Litigation is “unrelated”
`to the litigations against the parties who filed the 1367 and 041 IPRs. Pet.
`61, 63; see generally Pet. i, 60–65; cf. Consolidated TPG at 58 (noting that
`proceedings related to the same patent at a district court may favor denial of
`a petition and inviting parties to “address in their submissions whether any
`
`5
`
`
`
`IPR2020-00115
`Patent 8,407,609 B2
`other such reasons exist in their case . . . and whether and how such factors
`should be considered” (citing, inter alia, NHK, IPR2018-00752, Paper 8 at
`19–20)).6
`In determining whether to exercise our discretion, we are guided by
`the Board’s precedential decision in NHK. There, the Board found that “the
`advanced state of the district court proceeding is an additional factor that
`weighs in favor of denying the Petition under § 314(a).” NHK, IPR2018-
`00752, Paper 8 at 20. In the parallel district court case, the petitioner had
`asserted “the same prior art and arguments,” expert discovery was scheduled
`to end in approximately seven weeks, and a jury trial was scheduled to begin
`in just over six months. Id. at 1, 20. The Board found that “[i]nstitution of
`an inter partes review under these circumstances would not be consistent
`with ‘an objective of the AIA . . . to provide an effective and efficient
`alternative to district court litigation.’” Id. at 20 (citing Gen. Plastic Indus.
`Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16–17 (PTAB
`Sept. 6, 2017) (precedential in relevant part)).
`“[T]he Board’s cases addressing earlier trial dates as a basis for denial
`under NHK have sought to balance considerations such as system efficiency,
`fairness, and patent quality.” Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`Paper 11 at 5 (PTAB Mar. 20, 2020). When applying NHK, the Board has
`balanced the following factors:
`1. whether the court granted a stay or evidence exists that
`one may be granted if a proceeding is instituted;
`
`
`6 Although the Consolidated TPG was published after the Petition was filed,
`the earlier version also includes this guidance. See July 2019 Office Trial
`Practice Guide Update, 84 Fed. Reg. 33,925 (July 16, 2019).
`
`6
`
`
`
`IPR2020-00115
`Patent 8,407,609 B2
`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. at 5–6 (footnote omitted).
`Factors 1, 2, 3, and 5 (above) weigh in favor of denying institution of
`the Petition. Indeed, the relevant facts before us here are substantially the
`same as those presented in NHK. Petitioner is the defendant in the Texas
`litigation. Pet. 63; Prelim. Resp. 10. According to the Amended Docket
`Control Order submitted by Patent Owner, expert discovery will close in
`approximately six weeks, and a jury trial will begin in less than five months.
`Ex. 2002, 1, 3. Thus, the district court’s trial is scheduled to precede our
`final written decision by more than seven months.7 There is no evidence
`that the district court has granted (or would grant) a stay pending inter partes
`review. The district court has invested time and resources in the Texas
`Litigation: the district court issued a Markman order with a detailed
`discussion of a number of disputed claim terms and phrases (Ex. 2001, 57–
`78), and the court issued that order within two weeks of its Markman
`hearing (id. at 1, 78).
`
`7 Even if the district court were to delay its schedule by two months, the
`trial would still precede our final written decision by more than five months.
`See Paper 7 at 3–4.
`
`7
`
`
`
`IPR2020-00115
`Patent 8,407,609 B2
`Turning to factor 4, Petitioner presents overlapping arguments in the
`Texas Litigation and in the Petition. Petitioner’s invalidity contentions in
`the Texas Litigation contain the same invalidity arguments as are presented
`in the Petition for independent claim 1. Compare Pet. 24 (asserting that
`Hayward anticipates claim 1 and that Hayward and Middleton render
`obvious claim 1), with Ex. 2003, 14–15, 18 (same). In addition, Petitioner’s
`invalidity contentions purport to “incorporate[] by reference any prior art
`identified and/or invalidity claim charts set forth . . . in any inter partes
`review petitions and/or proceedings involving the [’609 patent].” Ex. 2003,
`5. In other words, Petitioner has expressly and specifically sought to
`incorporate all of the Petition’s contentions into the Texas Litigation.
`There are two potentially significant differences between Petitioner’s
`invalidity contentions in the Texas Litigation and the grounds presented in
`the Petition. First, Petitioner’s invalidity contentions include a large number
`of other allegations, in addition to those presented in the Petition. See
`generally Ex. 2003 (alleging hundreds of obviousness combinations).
`However, Hayward is the only anticipatory reference identified in the
`invalidity contentions—and Hayward is the Petition’s primary reference,
`relied upon for most claim limitations. Compare Ex. 2003, 14–15
`(identifying only one reference for anticipation or single-reference
`obviousness: Hayward), with Pet. 24–46 (ground 1: alleging Hayward
`anticipates), 46–55 (ground 2: relying on Hayward for most limitations of
`Hayward-Middleton combination). Accordingly, in the facts and
`circumstances of this case, the additional invalidity arguments presented in
`the invalidity contentions do not significantly impact our analysis.
`
`8
`
`
`
`IPR2020-00115
`Patent 8,407,609 B2
`Second, the Texas Litigation and the Petition do not involve an
`identical set of claims. According to Petitioner’s invalidity contentions, only
`claim 1 is currently at issue in the Texas Litigation (Ex. 2003, 1), where the
`Petition challenges both independent claim 1 and its dependent claims 2 and
`3 (Pet. 24). However, the Board has already instituted two other inter partes
`review proceedings that challenge these claims: the 1367 and 041 IPRs.
`Sling TV, IPR2019-01367, Paper 7 (trial instituted on claims 1–3); Netflix,
`IPR2020-00041, Paper 10 (same); see Prelim. Resp. 20 (arguing the Petition
`is redundant given two earlier-filed petitions in the 1367 and 041 IPRs).
`Given these other pending trials at the Board, we are not persuaded that a
`third trial is justified in these circumstances.8
`On balance, under the particular circumstances presented here, i.e., the
`advanced stage of the Texas Litigation and the fact that the ’609 patent is
`challenged in two other pending inter partes review proceedings, we decline
`to institute an additional inter partes review in this proceeding. See NHK,
`IPR2018-00752, Paper 8 at 20; Consolidated TPG at 58. Accordingly, we
`exercise our discretion under 35 U.S.C. § 314(a) and deny institution.
`
`
`8 Petitioner’s arguments do not persuade us that the differences between this
`Petition and the two earlier filed petitions mitigate in favor of a third trial.
`See Pet. 61–62. In particular, Petitioner identifies differences between its
`primary reference (Hayward) and a reference asserted in a previous petition
`(Jacoby); however, Petitioner does not explain the significance of these
`differences. Id. In addition, although Petitioner notes that the Petition
`alleges anticipation, Petitioner fails to explain why this is a material
`difference from the obviousness arguments presented in the earlier-filed
`petitions. Id. at 62.
`
`9
`
`
`
`IPR2020-00115
`Patent 8,407,609 B2
`
`IV. CONCLUSION
`In the specific factual circumstances of this case, consistent with the
`Board’s precedential decision in NHK, we exercise our discretion to deny
`institution under § 314(a).
`
`ORDER
`
`It is, therefore,
`ORDERED that the Petition is denied; and
`FURTHER ORDERED that the requested inter partes review is not
`instituted with respect to any claim of the ’609 patent.
`
`
`
`
`10
`
`
`
`IPR2020-00115
`Patent 8,407,609 B2
`PETITIONER:
`Erika H. Arner
`Joshua L. Goldberg
`A. Grace Klock Mills
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT, & DUNNER LLP
`erika.arner@finnegan.com
`joshua.goldberg@finnegan.com
`gracie.mills@finnegan.com
`
`PATENT OWNER:
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`
`
`
`
`
`
`11
`
`
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