throbber
Trials@uspto.gov
`571-272-7822
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`Paper 13
`Date: September 15, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`OPTIS WIRELESS TECHNOLOGY, LLC,
`Patent Owner.
`
`IPR2020-00466
`Patent 8,411,557 B2
`
`
`
`
`
`
`
`
`
`Before LYNNE E. PETTIGREW, BARBARA A. PARVIS, and
`JOHN P. PINKERTON, Administrative Patent Judges.
`PARVIS, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`I. INTRODUCTION
`Petitioner, Apple Inc., filed a Petition for inter partes review of
`claims 1–10 of U.S. Patent No. 8,411,557 B2 (Ex. 1001, “the ’557 patent”).
`Paper 3 (“Pet.”). Patent Owner, Optis Wireless Technology, LLC, filed a
`Preliminary Response. Paper 7 (“Prelim. Resp.”). Pursuant to our
`authorization for supplemental briefing, Petitioner filed a Reply to Patent
`
`
`
`

`

`IPR2020-00446
`Patent 8,411,557 B2
`Owner’s Preliminary Response, and Patent Owner filed a Sur-reply. Paper 8
`(“Pet. Reply”); Paper 9 (“PO Sur-reply”).
`Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to
`institute an inter partes review if “the information presented in the
`petition . . . and any response . . . shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a). The Board, however, 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.”); NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential, designated
`May 7, 2019) (“NHK”).
`Having considered the parties’ submissions, and for the reasons
`explained below, we exercise our discretion under 35 U.S.C. § 314(a) to
`deny institution of inter partes review.
`
`II. BACKGROUND
`A. Real Parties-in-Interest
`Petitioner identifies itself as a real party-in-interest. Pet. 1. Patent
`Owner identifies itself as a real party-in-interest and states that “PanOptis
`Patent Management, LLC has the right to license and assert the ’557 patent.”
`Paper 6, 1 (Patent Owner’s Mandatory Notices).
`B. Related Matters
`The parties identify the following pending district court proceeding
`related to the ’557 patent: Optis Wireless Technology, LLC et al. v. Apple
`Inc., No. 2:19-cv-00066 (E.D. Tex.). Pet. 1; Paper 6, 1.
`
`2
`
`

`

`IPR2020-00446
`Patent 8,411,557 B2
`
`C. Overview of the ’557 Patent
`The ’557 patent describes a mobile station and radio communication
`method for efficiently reporting control information in the RACH (Random
`Access Channel). Ex. 1001, 1:60–62. The method of the present invention
`includes selecting one of a plurality of unique code sequences as a signature,
`according to inputted control information. Id. at 2:62–65. The signature
`(code sequence) is then modulated to generate a RACH signal that is
`multiplexed and transmitted. Id. at 3:1–12.
`D. Illustrative Claim
`Challenged claims 1 and 10 are independent, and each of challenged
`claims 2–9 depends directly from claim 1. Claim 1 is illustrative of the
`claimed subject matter:
`1. A mobile station apparatus comprising:
`a receiving unit configured to receive control information;
`a selecting unit configured to randomly select a sequence from
`a plurality of sequences contained in one group of a plurality of
`groups, into which a predetermined number of sequences that
`are generated from a plurality of base sequences are grouped
`and which are respectively associated with different amounts of
`data or reception qualities, wherein the predetermined number
`of sequences are grouped by partitioning the predetermined
`number of sequences, in which sequences generated from the
`same base sequence and having different cyclic shifts are
`arranged in an increasing order of the cyclic shifts; and
`a transmitting unit configured to transmit the selected sequence;
`wherein a position at which the predetermined number of
`sequences are partitioned is determined based on the control
`information, and a number of sequences contained in each of
`the plurality of groups varies in accordance with the control
`information.
`Ex. 1001, 10:59–11:14.
`
`3
`
`

`

`IPR2020-00446
`Patent 8,411,557 B2
`E. Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims are unpatentable based on
`the following grounds (Pet. 4):
`Claims Challenged
`35 U.S.C. §
`1–10
`103(a)1
`1–10
`103(a)
`
`References
`Harris2, Tan3
`Sutivong4, Tan
`
`
`
`III. ANALYSIS
`Patent Owner contends we should exercise our discretion under
`35 U.S.C. § 314(a) to deny institution of inter partes review due to the
`advanced stage of the parallel litigation in the United States District Court
`for the Eastern District of Texas. Prelim. Resp. 1–11 (citing Apple Inc. v.
`Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential,
`designated May 5, 2020) (“Fintiv”)). According to Patent Owner, we should
`exercise our discretion “to avoid duplicative efforts that waste the judicial,
`administrative and the parties’ resources and to avoid [a] potentially
`inconsistent outcome.” Id. at 1.
`Patent Owner also contends we should exercise our discretion under
`35 U.S.C. § 325(d) to deny institution of inter partes review because the
`combination of Sutivong and Tan already was considered during prosecution
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`Because the ’557 patent has an effective filing date prior to the effective date
`of the applicable AIA amendment, we refer to the pre-AIA version of § 103.
`2 U.S. Patent No. 8,009,637 B2, issued August 30, 2011 (Ex. 1004,
`“Harris”).
`3 U.S. Patent Application Publication No. US 2007/0165567 A1, published
`July 19, 2007 (Ex. 1005, “Tan”).
`4 International Patent Application Publication No. WO 2006/019710 A1,
`published February 23, 2006 (Ex. 1003, “Sutivong”).
`
`4
`
`

`

`IPR2020-00446
`Patent 8,411,557 B2
`of the parent of the application that issued as the ’557 patent. Id. at 11–13.
`Petitioner acknowledges that during prosecution of the parent, the Examiner
`rejected all pending claims as anticipated by Tan, and later the Examiner
`finally rejected all pending claims of the parent as obvious over Tan and
`Sutivong. Pet. 14–16.5 Petitioner asserts that applicants “avoided any
`substantive rejections” in the application that issued as the ’557 Patent
`because applicants’ request to participate in the Patent Prosecution Highway
`(PPH) Program between the U.S. Patent and Trademark Office and the Japan
`Patent Office (JPO) was granted and the JPO had not considered Tan and
`Sutivong. Pet. 18 (citing Ex.1006, 62–63, 95–108). Patent Owner responds
`that “applicants noticed those references in an IDS and specifically pointed
`out ‘[t]he references listed on the attached Information Disclosure Statement
`were submitted to and/or cited by the Patent and Trademark Office in its
`prior application . . . .’” Prelim. Resp. 12 (citing Ex. 1006, 113–116).
`We begin by considering the parties’ contentions regarding whether
`we should exercise our discretion under 35 U.S.C. § 314(a) to deny
`institution of inter partes review.
`A. 35 U.S.C. § 314(a)
`In determining whether to exercise our discretion under § 314(a), we
`are guided by the Board’s precedential decisions in NHK and Fintiv. In
`NHK, the Board found that the “advanced state of the district court
`proceeding” was a “factor that weighs in favor of denying” the petition
`under § 314(a). NHK, Paper 8 at 20. The Board determined that institution
`of an inter partes review under the circumstances present in that case
`
`
`5 The ’557 patent issued from U.S. Patent Application No. 13/333,805,
`which claims priority to U.S. Patent Application No. 12/293,530 (“parent”).
`Pet. 14.
`
`5
`
`

`

`IPR2020-00446
`Patent 8,411,557 B2
`“would not be consistent with ‘an objective of the AIA . . . to provide an
`effective and efficient alternative to district court litigation.’” Id. (citing
`Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357,
`Paper 19 at 16–17 (PTAB Sept. 6, 2017) (precedential in relevant part)).
`The Board’s cases considering the advanced state of a parallel proceeding
`“as a basis for denial under NHK have sought to balance considerations such
`as system efficiency, fairness, and patent quality.” Fintiv, Paper 11 at 5
`(collecting cases). Fintiv sets forth the following factors the Board balances
`when determining whether to exercise its discretion to deny institution:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`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. “[I]n 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. at 6.
`We now consider the Fintiv factors to determine whether we should
`exercise discretion to deny institution under 35 U.S.C. § 314(a) in this case.
`Because Fintiv issued and was designated precedential after the Petition was
`filed, we authorized the parties to file supplemental briefing to address the
`Fintiv factors. See Pet. Reply 1–8; PO Sur-reply 1–8. After the parties filed
`
`6
`
`

`

`IPR2020-00446
`Patent 8,411,557 B2
`their supplemental briefing, the district court held a jury trial, which we
`address in more detail below. See Paper 11, 1 (Patent Owner’s Updated
`Mandatory Notice, Aug. 19, 2020). As a result, some of the parties’
`arguments presented in the supplemental briefing, especially those related to
`uncertainty of the trial date, are no longer particularly relevant to an analysis
`of the Fintiv factors.
`1. Fintiv Factor 1: Stay in the Parallel Proceeding
`As noted, the Texas district court trial already has taken place. See
`Paper 11, 1. Petitioner did not move for a stay in the district court
`proceeding prior to trial. See Pet. Reply 1. The parties have provided no
`evidence regarding whether a stay of any post-trial proceedings may be
`requested or granted. Under these circumstances, this factor is neutral and
`does not affect our analysis.
`2. Fintiv Factor 2: Trial Date in the Parallel Proceeding
`A jury trial involving the ’557 patent and four other patents began in
`the Texas district court proceeding on August 3, 2020 and concluded with a
`jury verdict on August 11, 2020. See Paper 11, 1; see also Paper 10, 1
`(Petitioner’s Notice of Claims and Grounds of Invalidity Presented at
`District Court Trial); Ex. 2021, 5 (jury verdict form indicating Petitioner did
`not prove by clear and convincing evidence that claims 1 and 10 of the
`’557 patent are invalid). Thus, the trial ended about one month before the
`statutory deadline for a decision whether to institute an inter partes review
`and about thirteen months before a final written decision would be due if we
`did institute an inter partes review.
`If a court’s trial date is earlier than the projected statutory deadline of
`a final written decision, “the Board generally has weighed this fact in favor
`of exercising authority to deny institution under NHK.” Fintiv, Paper 11 at
`
`7
`
`

`

`IPR2020-00446
`Patent 8,411,557 B2
`9. In this case, in view of the thirteen-month gap between the date of the
`district court jury verdict and the projected due date for a final written
`decision, this Fintiv factor strongly favors the exercise of discretionary
`denial.
`3. Fintiv Factor 3: Investment by the Court and the Parties in the
`Parallel Proceeding
`With respect to the third Fintiv factor, Petitioner argues that its
`diligence in filing the Petition favors institution. Pet. Reply 1. Petitioner
`asserts, for example, that after identifying nearly 140 prior art references
`across seven asserted patents in its initial invalidity contentions in district
`court, it diligently evaluated the unique strengths of each prior art reference
`and combination, searched for additional prior art, and filed petitions
`challenging only three patents. Id. Petitioner also argues it obtained no
`tactical advantage based on the time the Petition was filed. Id. at 2.
`Patent Owner argues that this factor weighs heavily in favor of
`discretionary denial due to the “tremendous” investment in the parallel
`proceeding by the parties and the court. Prelim. Resp. 6. At the time of the
`Preliminary Response, the district court had held a Markman hearing and
`issued a claim construction order, fact discovery had closed, and the parties
`had exchanged expert reports and conducted expert discovery. Id. at 5–6.
`By the time Patent Owner filed its Sur-reply, the parties had filed dispositive
`and Daubert motions and oppositions. PO Sur-reply 2. Responding to
`Petitioner’s argument, Patent Owner contends that diligence and tactical
`advantage are not relevant under Fintiv but instead are addressed under
`General Plastic when the Board considers whether to exercise its discretion
`to deny a petition challenging a patent that was the subject of another
`petition. Id.
`
`8
`
`

`

`IPR2020-00446
`Patent 8,411,557 B2
`Contrary to Patent Owner’s argument, Fintiv does provide that a
`petitioner’s diligence or delay in filing a petition may be relevant under the
`third Fintiv factor. Fintiv, Paper 11 at 11–12. Nevertheless, under the
`circumstances present here, the timing of the Petition does not impact our
`analysis. As discussed above, the district court held a jury trial that ended
`with a verdict on August 11, 2020. See supra § III.A.2. Thus, the parties
`and the district court have invested substantial time and effort addressing
`patent validity in preparing for and conducting a trial in the parallel
`proceeding. Accordingly, this factor strongly favors the exercise of
`discretionary denial to prevent the inefficient use of Board resources, as well
`as duplicative costs to the parties.
`4. Fintiv Factor 4: Overlap Between Issues Raised in the Petition
`and Parallel Proceeding
`Patent Owner argues that “[t]he exact same combinations of
`references at issue in the Petition are also at issue in the district court.”
`Prelim. Resp. 6 (citing Ex. 2007, 1). Patent Owner also argues “the fact that
`there are more claims at issue in the Petition than the ones elected for trial
`does not weigh in favor of discretionary institution” because the analysis in
`the Petition “for the dependent claims relies on essentially the same evidence
`and argument as for claim 1; and Petitioner devotes the bulk of the analysis
`to the elected claims.” Id. at 7–8.
`Petitioner states that at Patent Owner’s request, “and to eliminate the
`chance of inconsistent findings, Petitioner agreed on July 2, 2020 to drop the
`Harris grounds” in the district court proceeding and Petitioner “further
`stipulates that it will not pursue Ground 2 (Sutivong and Tan) in this IPR.”
`Pet. Reply 2 (citing Ex. 1045). Petitioner also asserts that “significant
`differences” in the proceedings favor institution including that in only the
`
`9
`
`

`

`IPR2020-00446
`Patent 8,411,557 B2
`instant proceeding, Petitioner asserts the ground of obviousness over Harris
`and Tan and in only the instant proceeding all claims of the ’557 patent, i.e.,
`claims 1–10 are challenged. Id. Petitioner also describes as “unique” the
`reasoning to combine in the Petition (id.), which includes the following: “[a]
`POSITA would have been motivated to use Tan’s sequences, which are
`generated from a plurality of base sequences, as the codes in Harris, at least
`because Harris incorporates the Tan Provisional by reference for the express
`purpose of using Tan’s sequences as the codes in Harris.” Pet. 28 (citing Ex.
`1004, 4:1–11). Petitioner responds to Patent Owner’s arguments regarding
`the dependent claims (Prelim. Resp. 8) by asserting that “Petitioner’s
`analysis of non-overlapping claims is proportionate to their length.” Pet.
`Reply 3.
`Patent Owner responds that Petitioner “cannot avoid complete overlap
`between the two proceedings.” PO Sur-reply 3. Patent Owner points to
`investment by both parties in the district court proceeding. Id. Patent
`Owner also argues that Petitioner cannot alter its Petition because the
`statutory deadline for filing has passed. Id. at 3–4.
`Consistent with Petitioner’s agreement “to drop the Harris grounds” in
`the district court proceeding (Pet. Reply 2), Petitioner’s invalidity
`presentation to the jury included obviousness over Sutivong and Tan, but not
`obviousness over Harris and Tan. See Paper 10, 1; Paper 11, 1–2. The
`Petition, however, relies on Tan, not Harris, for certain recitations in the
`claims. See, e.g., Pet. 27, 34. Even considering just the combination of
`Harris and Tan, Petitioner has not explained how its arguments relying on
`Tan in this proceeding differ from arguments presented to the jury regarding
`that same reference. See generally Pet. Reply. Accordingly, we do not
`agree that the issues in the Petition relating to obviousness over Harris and
`
`10
`
`

`

`IPR2020-00446
`Patent 8,411,557 B2
`Tan are “significantly” different from those presented in the district court
`proceeding.
`Furthermore, we agree with Patent Owner that Petitioner cannot alter
`its Petition. If we institute an inter partes review based on obviousness over
`Harris and Tan, therefore, we also must institute as to all other claims and all
`grounds, including the ground based on Sutivong and Tan. See SAS Inst.
`Inc. v. Iancu, 138 S. Ct. 1348, 1369–70 (2018) (holding that a decision to
`institute under 35 U.S.C. § 314 may not institute on fewer than all claims
`challenged in the petition); PGS Geophysical AS v. Iancu, 891 F.3d 1354,
`1360 (Fed. Cir. 2018); Patent Trial and Appeal Board Consolidated Trial
`Practice Guide (Nov. 2019) (“TPG”), at 5 (“In instituting a trial, the Board
`will either (1) institute as to all claims challenged in the petition and on all
`grounds in the petition, or (2) institute on no claims and deny institution.”)
`(available at https://www.uspto.gov/TrialPracticeGuideConsolidated).
`As for the challenged claims, the Petition challenges independent
`claims 1 and 10 (Pet. 1), the same independent claims at issue in the district
`court proceeding. Paper 10, 1; Paper 11, 1–2; Ex. 2021, 5. Dependent
`claims 2–9 are challenged in the Petition (Pet. 1), but were not at issue in the
`district court proceeding. Paper 10, 1; Paper 11, 1–2; Ex. 2021, 5. We agree
`with Patent Owner, however, that the Petition’s analysis of dependent
`claims 2–9, which do not add materially different limitations, relies on many
`of the same arguments and evidence as its analysis of claim 1. See Pet. 37–
`45 (repeatedly referring back to analysis of claim 1 limitations). We,
`therefore, find substantial overlap in the claimed subject matter challenged
`in the Petition and the parallel proceeding.
`This fourth Fintiv factor involves consideration of inefficiency
`concerns and the possibility of conflicting decisions. Fintiv, Paper 11 at 12.
`
`11
`
`

`

`IPR2020-00446
`Patent 8,411,557 B2
`Therefore, “if the petition includes the same or substantially the same
`claims, grounds, arguments, and evidence as presented in the parallel
`proceeding, this fact has favored denial.” Id. “Conversely, if the petition
`includes materially different grounds, arguments, and/or evidence than those
`presented in the district court, this fact has tended to weigh against
`exercising discretion to deny institution.” Id. at 12–13.
`As discussed, the Petition challenges the same independent claims that
`were considered in the district court proceeding. The dependent claims
`challenged in the Petition raise similar issues as the independent claims. The
`Petition presents an obviousness ground based on a different combination
`that involves a different reasoning to combine, but the Petition also includes
`a ground that is the same as the ground presented to the jury and Petitioner
`cannot alter the Petition. Under these circumstances, we view this factor as
`weighing slightly in favor of denial.
`5. Fintiv Factor 5: Whether Petitioner is the Defendant in the
`Parallel Proceeding
`Petitioner here is the defendant in the district court litigation. See
`Pet. 1; Paper 6, 1. Also, the jury already has rendered a verdict in Patent
`Owner’s favor with respect to independent claims 1 and 10. See supra
`§ III.A.2. Under these circumstances, we view this factor as weighing in
`favor of denial.
`
`6. Fintiv Factor 6: Other Considerations
`Under the sixth Fintiv factor, which takes into account any other
`relevant circumstances, Patent Owner argues that Petitioner unreasonably
`delayed in filing the Petition. Prelim. Resp. 9. Petitioner responds that it
`was diligent in evaluating the unique strengths of the seven patents
`originally asserted in the parallel proceeding, searching for additional prior
`
`12
`
`

`

`IPR2020-00446
`Patent 8,411,557 B2
`art, and ultimately filing only three petitions with the Board. Pet. Reply 1.
`Having considered the particular factual circumstances of this case, we do
`not consider Petitioner’s filing untimely.
`Petitioner presents extensive policy arguments against the Board’s
`application of Fintiv and NHK in determining whether to exercise discretion
`to deny institution under 35 U.S.C. § 314(a). Pet. Reply 6–8. We do not
`address these arguments because we are bound by Fintiv and NHK, which
`the Under Secretary of Commerce for Intellectual Property and Director of
`the U.S. Patent and Trademark Office has designated as precedential
`decisions of the Board.
`Petitioner argues that the strength of its Petition weighs against
`discretionary denial. Pet. Reply 3–4. Petitioner uses its Reply to respond on
`the merits to some of the arguments raised by Patent Owner in the
`Preliminary Response. Id. (citing Prelim. Resp. 26–37). Petitioner’s
`arguments pertain to whether the asserted art teaches the claim limitations,
`not whether the arguments regarding Tan are the same as those presented to
`the jury. Id. Patent Owner then offers its own response in its Sur-reply. PO
`Sur-reply 4–6. As we reminded the parties when we authorized
`supplemental briefing, we will not consider any arguments regarding the
`merits that were not raised in the Petition or Preliminary Response. See
`Ex. 2016 (emails authorizing Reply and Sur-reply). In any event, the parties
`have not identified particular strengths or weaknesses (e.g., in comparison to
`the obviousness grounds already considered by the jury in the parallel
`proceeding) that in our view would tip the balance either for or against
`discretionary denial when considered as part of a balanced assessment of the
`Fintiv factors in this case. See Fintiv, Paper 11 at 14–15.
`
`13
`
`

`

`IPR2020-00446
`Patent 8,411,557 B2
`With respect to Petitioner’s argument that the strength of its Petition
`weighs against discretionary denial (Pet. Reply 3–4), we further consider the
`arguments and evidence presented in the Petition and the Preliminary
`Response. In particular, Patent Owner asserts “[o]n the merit[s], Petitioner
`acknowledges that neither reference discloses ‘sequences generated from the
`same base sequence and having different cyclic shifts are arranged in an
`increasing order of the cyclic shifts.’” Prelim. Resp. 1 (citing Pet. 34).
`Consistent with Patent Owner’s contention, Petitioner acknowledges that
`Harris lacks express teachings in that regard, and Petitioner asserts that it
`would have been obvious for a person having ordinary skill in the art “to
`arrange Tan’s sequences such that the cyclically shifted sequences were in
`increasing order of the cyclic shifts.” Pet. 34; see also id. at 27 (stating that
`Harris “does not expressly teach that the codes are generated from a
`‘plurality of base sequences’” and relying on Tan), 34 (referring back to
`page 27 of the Petition and arguing that making Petitioner’s proposed
`modification of Tan “is the most obvious choice for a POSITA”). Upon
`consideration of Petitioner’s arguments and evidence, we are not persuaded
`that the Petition’s showing on the merits here supports Petitioner’s argument
`that the strength of its Petition weighs against discretionary denial.
`Petitioner also raises additional considerations under this factor that it
`contends favor institution. Pet. Reply 4–6. Petitioner argues that the public
`interest would be served if the Board addresses the patentability of the
`’557 patent, which Patent Owner alleges is essential to 3GPP LTE (3rd
`Generation Partnership Project Long Term Evolution) telecommunications
`standards. Pet. Reply 4 (citing Ex. 1048, 8; Ex. 1049, Ex. 1050). Petitioner
`also argues that “the Board is well suited to address the complex technical
`subject matter” of the ’557 patent and contends that a detailed analysis by
`
`14
`
`

`

`IPR2020-00446
`Patent 8,411,557 B2
`the Board would enhance the integrity of the patent system. Id. at 5–6. We
`do not take Petitioner’s concerns lightly, but Patent Owner correctly asserts
`that ample procedural safeguards exist for Petitioner to challenge that
`’557 patent in federal court, including the availability of an appeal to the
`U.S. Court of Appeals for the Federal Circuit once post-trial proceedings
`have been completed.
`
`7. Conclusion
`Based on the particular circumstances of this case, we determine that
`instituting an inter partes review would be an inefficient use of Board
`resources. As discussed above, the trial in the parallel proceeding recently
`concluded more than one year before we would reach a final decision in this
`proceeding if we instituted an inter partes review. Moreover, the district
`court and the parties expended considerable effort in preparing for and
`conducting the trial. These considerations strongly favor the exercise of
`discretionary denial, other considerations favor denial, and no considerations
`weigh against the exercise of discretionary denial in this case.
`On balance, after a holistic consideration of the relevant facts and the
`particular circumstances of this case, we conclude that efficiency and
`integrity of the system are best served by denying institution. Thus, we
`exercise our discretion under § 314(a) to deny institution of inter partes
`review.
`
`B. 35 U.S.C. § 325(d)
`In view our determination to exercise our discretion under § 314(a) to
`deny institution of inter partes review, we need not consider the parties’
`arguments regarding exercising our discretion under § 325(d) to deny
`institution of inter partes review.
`
`15
`
`

`

`IPR2020-00446
`Patent 8,411,557 B2
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that the Petition is denied; and
`FURTHER ORDERED that no inter partes review is instituted.
`
`16
`
`

`

`IPR2020-00446
`Patent 8,411,557 B2
`PETITIONER:
`
`Jason Kipnis
`Mary V. Sooter
`David Cavanaugh
`Ravi Deol
`WILMER CUTLER PICKERING HALE and DORR LLP
`Jason.Kipnis@wilmerhale.com,
`Mindy.Sooter@wilmerhale.com.
`David.Cavanaugh@wilmerhale.com
`Ravi.Deol@wilmerhale.com
`
`
`PATENT OWNER:
`
`Hong Annita Zhong
`Jason Sheasby
`IRELL & MANELLA LLP
`hzhong@irell.com
`jsheasby@irell.com
`
`
`17
`
`

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