throbber
Paper 10
`Trials@uspto.gov
`Date: December 14, 2020
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG DISPLAY CO., LTD.,
`Petitioner,
`
`v.
`
`SOLAS OLED LTD.,
`Patent Owner.
`____________
`
`IPR2020-01055
`Patent 7,907,137 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JOHN A. HUDALLA, and JULIA HEANEY,
`Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`LG Display Co., Ltd. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting an inter partes review (IPR) of claims 1, 9–11, 15, 36, 37, and 39
`(“the challenged claims”) of U.S. Patent No. 7,907,137 B2 (Ex. 1001, “the
`’137 patent”). Petitioner filed a Declaration of Miltiadis Hatalis, Ph.D.
`(Ex. 1003) with its Petition. Patent Owner, Solas OLED Ltd. (“Patent
`Owner”), filed a Preliminary Response (Paper 6, “Prelim. Resp.”). With our
`
`

`

`IPR2020-01055
`Patent 7,907,137 B2
`authorization (Paper 7), Petitioner filed a Reply (Paper 8, “Pet. Reply”) and
`Patent Owner filed a Sur-reply (Paper 9, “PO Sur-reply”) to address the
`Board’s precedential decision in Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”).
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C.
`§ 314(a), we may not authorize an inter partes review unless the information
`in the petition and the preliminary 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.” 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) (“NHK”). For the
`reasons that follow, we exercise our discretion under 35 U.S.C. § 314(a) to
`deny institution of inter partes review.
`
`
`
`A.
`
`I. BACKGROUND
`Real Parties-in-Interest
`Petitioner identifies LG Display Co., Ltd. as the real party-in-interest.
`Pet. 1. Patent Owner identifies Solas OLED Ltd. as the real party-in-
`interest. Paper 4, 1.
`
`
`2
`
`

`

`IPR2020-01055
`Patent 7,907,137 B2
`Related Proceedings
`B.
`The parties identify the following proceeding related to the
`’137 patent (Pet. 2; Paper 4, 1):
`Solas OLED Ltd. v. LG Display Co., Ltd., No. 6:19-cv-00236-ADA
`(W.D. Tex. filed April 1, 2019) (“the underlying litigation”).
`In the underlying litigation, Patent Owner has asserted two other
`patents in addition to the ’137 patent: U.S. Patent Nos. 7,432,891 B2 (“the
`’891 patent”) and 7,573,068 B2 (“the ’068 patent”). Petitioner has
`challenged the ’891 patent in IPR2020-00177, and the panel instituted inter
`partes review in that case. Petitioner has challenged the ’068 patent in
`IPR2020-01238 and IPR2020-01546, but the Board has not yet issued
`decisions on institution in those cases.
`
`The ’137 patent
`The ’137 patent is directed to a drive control method for a display
`drive apparatus that controls a display panel with a plurality of organic
`electroluminescent elements (OEL). Ex. 1001, 1:18–26. Each pixel, which
`includes an OEL, is controlled by a driver circuit with thin film transistors.
`See id. at 2:11–25. One of the transistors allows driving current
`corresponding to display data through the OEL so that it emits light. Id. at
`2:26–52. The ’137 patent recognizes that the element characteristics, i.e.,
`the threshold voltage characteristics, of this transistor may change over time.
`Id. at 3:15–30. As such, the invention of the ’137 patent seeks to
`compensate for variations in element characteristics in order to obtain
`uniform image quality. Id. at 3:45–53. Accordingly, the ’137 patent
`discloses a display drive apparatus that includes
`
`C.
`
`3
`
`

`

`D.
`
`IPR2020-01055
`Patent 7,907,137 B2
`a threshold voltage detection circuit which detects a threshold
`voltage peculiar to the drive element of the display pixel, and a
`compensation voltage application circuit which generates a
`compensation voltage for compensating for the threshold
`voltage of the drive element on the basis of the threshold
`voltage and applies the compensation voltage to the drive
`element.
`Id., code (57).
`
`Illustrative Claim
`Of the challenged claims, claims 1, 10, and 36 are independent.
`Claim 9 depends from claim 1; claims 11 and 15 depend from claim 10; and
`claims 37 and 39 depend from claim 36. Claim 10 is illustrative of the
`challenged claims and recites:
`10. A display drive apparatus which operates, in accordance
`with display data, a current control type optical element of each
`display pixel of a display, wherein each display pixel is
`provided with the optical element and a drive element which
`supplies a driving current to the optical element, the display
`drive apparatus comprising:
`a gradation signal generation circuit which generates a
`gradation current having a current value for allowing the optical
`element to perform a light emitting operation at a luminance
`corresponding to a luminance gradation of the display data, as a
`gradation signal corresponding to the luminance gradation of
`the display data, and supplies the gradation current to the
`display pixel through a data line connected to the display pixel;
`a threshold voltage detection circuit which detects a
`threshold voltage peculiar to the drive element of the display
`pixel through the data line; and
`a compensation voltage application circuit which
`generates a compensation voltage for compensating for the
`threshold voltage of the drive element based on the threshold
`voltage and applies the compensation voltage to the drive
`
`4
`
`

`

`E.
`
`IPR2020-01055
`Patent 7,907,137 B2
`element through the data line before the gradation signal
`generation circuit supplies the gradation current to the display
`pixel.
`Ex. 1001, 57:66–58:22.
`
`Prior Art
`Petitioner relies on the following prior art:
`U.S. Patent Application Publication No. 2005/0116902
`A1, filed Sept. 9, 2004, published June 2, 2005 (Ex. 1005,
`“Miyazawa”);
`Patent Cooperation Treaty (PCT) Patent Application
`Publication No. WO 2005/069267 A1, published July 28, 2005
`(Ex. 1006, “Childs”); and
`U.S. Patent Application Publication No. 2005/0156837
`A1, filed Dec. 8, 2004, published July 21, 2005 (Ex. 1007,
`“Kasai”).
`
`
`F.
`
`The Asserted Grounds
`Petitioner challenges claims 1, 9–11, 15, 36, 37, and 39 of the
`’137 patent on the following grounds (Pet. 3):1
`Claims Challenged
`35 U.S.C. §
`1, 10, 11, 36, 37
`103(a)2
`1, 10, 11, 36, 37
`103(a)
`
`References
`Miyazawa
`Miyazawa, Childs
`
`
`1 Petitioner styles its grounds as “Miyazawa, alone or with Childs” and
`“Miyazawa, alone or with Childs, and Kasai.” Pet. 3. In accordance with
`Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1372–73 (Fed. Cir. 2019), we
`consider these to be four separate grounds of unpatentability.
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the
`’137 patent was filed before March 16, 2013 (the effective date of the
`relevant amendments), the pre-AIA version of § 103 applies.
`
`5
`
`

`

`IPR2020-01055
`Patent 7,907,137 B2
`Claims Challenged
`9, 15, 39
`9, 15, 39
`
`
`
`35 U.S.C. §
`103(a)
`103(a)
`
`References
`Miyazawa, Kasai
`Miyazawa, Childs, Kasai
`
`II. ANALYSIS
`Institution of inter partes review is discretionary. Harmonic Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he [Office] is
`permitted, but never compelled, to institute an [inter partes review]
`proceeding.”); 35 U.S.C. § 314(a) (“The Director may not authorize an inter
`partes review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 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.” (emphasis added)). Patent Owner contends we
`should exercise our discretion to deny institution under 35 U.S.C. § 314(a).
`Prelim. Resp. 1–19; PO Sur-reply 1–5. Petitioner argues against
`discretionary denial based on § 314(a). Pet. 75; Pet. Reply 1–5. We now
`consider the parties’ arguments regarding discretionary denial.
`In Fintiv, the Board discussed potential applications of NHK, as well
`as a number of other cases dealing with discretionary denial under § 314(a).
`Fintiv identifies a non-exclusive list of factors parties may consider
`addressing, particularly where there is a related, parallel district court action
`and whether such action provides any basis for discretionary denial. Fintiv,
`Paper 11 at 5–16. Those factors include:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`
`6
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`

`IPR2020-01055
`Patent 7,907,137 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.
`We now consider these factors to determine whether we should use
`our discretion to deny institution under 35 U.S.C. § 314(a). In evaluating the
`factors, we take a holistic view of whether efficiency and integrity of the
`system are best served by denying or instituting review. Fintiv, Paper 11 at
`6.
`
`A.
`
`
`Stay in the Underlying Litigation
`The parties indicate that the underlying litigation has not been stayed,
`and neither party indicates that Petitioner has sought a stay. Prelim. Resp.
`2–3; Pet. Reply 1; PO Sur-reply 1. Patent Owner argues that it is “highly
`unlikely” that the presiding judge in the underlying litigation would entertain
`a stay because he “rarely grants stays pending IPR.” Prelim. Resp. 2–3
`(citing Ex. 2006). Petitioner argues that the Board has instituted inter partes
`review of the ’891 patent in IPR2020-00177,3 “so there is little reason the
`
`
`3 We note that Patent Owner did not file a preliminary response or make
`arguments in favor of discretionary denial in IPR2020-00177.
`
`7
`
`

`

`IPR2020-01055
`Patent 7,907,137 B2
`[underlying] litigation should not be stayed once this IPR is instituted.”4
`Pet. Reply 1.
`In the absence of any specific statements from the district court about
`its amenability to stay the underlying litigation, we decline to speculate
`about the presiding judge’s inclinations. See Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“We
`decline to infer, based on actions taken in different cases with different facts,
`how the District Court would rule should a stay be requested by the parties
`in the parallel case here.”). Thus, we find this factor is neutral.
`
`The Trial Date in the Underlying Litigation
`Patent Owner notes that the trial in the underlying litigation is set for
`March 29, 2021, which is “nine months before the [Final Written Decision]
`deadline.” Prelim. Resp. 2–4 (citing Ex. 2004). According to Patent Owner,
`there is no evidence that the trial will be postponed. PO Sur-reply 1–2.
`Thus, Patent Owner contends that this factor weighs strongly in favor of
`denial. Prelim. Resp. 4. Petitioner contends this factor “weighs, at most,
`‘moderately’ in favor of denial.” Pet. Reply 4.
`The trial in the underlying litigation is currently set to occur months
`before any Final Written Decision in this case will issue. Although trial
`delays are a possibility, there is no evidence before us that would indicate
`
`B.
`
`
`4 The parties also make certain arguments about the possibility of a stay
`related to an International Trade Commission (ITC) investigation involving
`the ’068 patent. Pet. Reply 1; PO Sur-reply 1. The ITC terminated the
`investigation since the time of the parties’ arguments. Accordingly, the
`arguments are no longer relevant.
`
`8
`
`

`

`C.
`
`IPR2020-01055
`Patent 7,907,137 B2
`the likelihood of a trial postponement. Thus, this factor favors the exercise
`of discretionary denial.
`
`Investment by the Court and the Parties in the Underlying Litigation
`Patent Owner argues that, by the time of our institution decision, “the
`parties will have completed fact discovery and expert reports in the
`[underlying litigation], and be nearing the close of expert discovery.”
`Prelim. Resp. 4 (citing Ex. 2001, 3). Patent Owner further contends “the
`court and parties have already invested heavily in the ’137 patent through
`extensive Markman proceedings disputing seven terms from the ’137 patent,
`as well as exchanging initial infringement and invalidity contentions.” Id. at
`6.
`
`Petitioner acknowledges that claim construction is complete, but
`argues that it occurred before fact discovery and that “all but two of the
`court’s constructions are ‘plain and ordinary meaning’ or ‘not indefinite,’
`and claim construction was relevant to infringement—not invalidity.” Pet.
`Reply 3 (citing Pet. 15–16; Prelim. Resp. 8; Ex. 1024, 1); see also Pet. 15
`(citing Dr. Hatalis’s testimony and arguing that the court’s “claim
`constructions do not impact the outcome of this IPR as the prior art meets
`each of the parties’ proposed constructions and the court’s final
`constructions for each term”). Petitioner further argues that Patent Owner
`“overstates the relevance of discovery, pointing to three motions for letters
`rogatory seeking third-party discovery, but they show little to no relevant
`investment.” Id. (citing Exs. 1025–1027). Petitioner also minimizes the
`investment related to invalidity contentions as having been borne primarily
`by Petitioner, not Patent Owner. Id. at 4.
`
`9
`
`

`

`IPR2020-01055
`Patent 7,907,137 B2
`In its Sur-reply, Patent Owner argues that Petitioner “draw[s]
`artificial, fine-grain distinctions” in trying to minimize the investment in the
`underlying litigation. PO Sur-reply 2–3 (citing Pet. Reply 3–4). Patent
`Owner further argues we should consider “the overall work” such that it is
`not limited by a particular issue or particular party. Id. at 3. Patent Owner
`additionally emphasizes that it has addressed invalidity issues extensively in
`interrogatory answers. Id. at 3 (citing Ex. 2013).
`We agree with Patent Owner (PO Sur-reply 3) that this factor
`considers investment by both parties. Fintiv at 9–10. Thus, contrary to
`Petitioner’s arguments (Pet. Reply 4), we do consider Petitioner’s own
`efforts in the underlying litigation, including its work on invalidity
`contentions, for example. Notwithstanding, we also consider whether the
`alleged investment in the underlying litigation is tethered to the merits of the
`parties’ validity positions in that litigation and, by extension, their
`patentability positions here. See Sand Revolution II, LLC v. Continental
`Intermodal Group–Trucking LLC, IPR2019-01393, Paper 24 at 10–11 (June
`16, 2020) (informative) (“Sand Revolution”). Thus, work on particular
`issues may not be as important in our analysis, contrary to Patent Owner’s
`contentions (PO Sur-reply 3).
`Certain work underway or already completed in the underlying
`litigation has relevance to issues in the Petition. We note that fact and
`contention discovery in the underlying litigation have closed, and both of
`these have significantly addressed invalidity issues. See Ex. 2005
`(Petitioner’s final invalidity contentions); Ex. 2013 (interrogatory answers
`from Patent Owner related to validity). Also of particular relevance to this
`case are the two rounds of expert reports on invalidity. See PO Sur-reply 3.
`
`10
`
`

`

`IPR2020-01055
`Patent 7,907,137 B2
`Even under recently updated deadlines,5 the vast majority of the work on
`these reports will have been completed by the time this Decision issues.
`And, contrary to Petitioner’s contentions (Pet. Reply 4), we consider this to
`be significant “invalidity effort” borne by both parties. We additionally note
`that the court has completed claim construction. See Ex. 1024, 1. Petitioner
`is correct (Pet. Reply 3) that the summary nature of the court’s claim
`construction order does not exhibit the same level investment as detailed
`claim construction orders in other cases. See Sand Revolution, Paper 24 at
`10–11. Notwithstanding, the court conducted a hearing on claim
`construction with argument from both parties (see Ex. 2012), and we credit
`this as additional case development relevant to the issues here. Taken
`together, we find that the court and the parties’ investment in the underlying
`litigation weighs in favor of exercising discretion to deny institution.
`We also consider whether Petitioner unreasonably delayed in filing
`the Petition in this case. See Fintiv, Paper 11 at 11–12. Patent Owner
`argues that Petitioner was aware of the asserted claims in November 2019,
`and that Petitioner served invalidity contentions in January 2020, but
`Petitioner nonetheless waited to file the Petition until June 2020. Prelim.
`Resp. 7; PO Sur-reply 2. Patent Owner also addresses the fact that the
`Petition followed closely after the court completed claim construction in
`May 2020. Prelim. Resp. 8–9. Patent Owner notes that Petitioner did not
`apply the court’s constructions in the Petition, but rather applied “narrower
`
`
`5 The court recently granted a joint motion to amend the deadlines for
`opening and rebuttal expert reports to November 24 and December 23, 2020,
`respectively. See Underlying Litigation, ECF No. 115 (motion dated
`Oct. 29, 2020, and docket text order granting motion dated Oct. 30, 2020).
`
`11
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`

`IPR2020-01055
`Patent 7,907,137 B2
`constructions” that it proposed in the underlying litigation in February 2020.
`Id. at 8 (quoting Pet. 15–16). Patent Owner also argues that “Petitioner and
`its expert had no problem understanding the terms and allegedly mapping
`them to the prior art” in this case, but Petitioner nonetheless asserted
`indefiniteness in the underlying litigation. Id. at 8–9 (citing Ex. 2009, 2).
`Patent Owner notes that Petitioner waited to file the Petition until after the
`court decided the indefiniteness issue, which Patent Owner characterizes as
`“strategically motivated and intended to gain an unfair advantage over
`Patent Owner.” Id.
`Petitioner argues that it filed the Petition three months before the
`statutory deadline under 35 U.S.C. § 315(b). Pet. Reply 4. Petitioner also
`notes that the parties had not yet exchanged their final infringement and
`invalidity contentions at the time of filing. Pet. 75. Thus, Petitioner argues
`it “was diligent, filing its Petition . . . well before [Patent Owner] responded
`at all, much less meaningfully, to [Petitioner’s] invalidity contentions or
`informed [Petitioner] which patent claims it is asserting.” Pet. Reply 4.
`Petitioner also implies that it waited until after claim construction to avoid
`the possibility of certain claim terms being deemed indefinite. Id. at 3.
`According to Petitioner, inter partes review would not be necessary or
`possible with indefinite claims, and “[f]iling any sooner risked wasting
`significant party and Board resources.” Id.
`Patent Owner identified its asserted claims in the underlying litigation
`on November 26, 2019. Ex. 2002. Petitioner served its preliminary
`invalidity contentions in the underlying litigation on January 24, 2020.
`Ex. 2003. The court conducted a claim construction hearing on May 22,
`2020, in which it issued certain oral rulings on claim construction and
`
`12
`
`

`

`IPR2020-01055
`Patent 7,907,137 B2
`indefiniteness. Ex. 1017 (excerpts of hearing transcript); Ex. 2012
`(complete hearing transcript); see also Ex. 1024 (order entering oral rulings).
`The Petition was filed on June 5, 2020. Pet. 76. The statutory bar date in
`this case was August 26, 2020. See 35 U.S.C. § 315(b); Ex. 2010 (proof of
`service of the complaint in the underlying litigation dated August 26, 2019).
`As can be seen from the list of dates above, the timing of Petitioner’s
`filing was most closely tied to the court’s claim construction ruling.
`Petitioner suggests that it waited to file the Petition until after the court ruled
`that certain claim terms were not indefinite. See Pet. Reply 3. Yet, even
`though it was filed after the court’s rulings on indefiniteness, the Petition
`still notes Petitioner’s (by-then-rejected) contentions regarding
`indefiniteness and includes a disclaimer limiting Petitioner’s contentions
`accordingly. See Pet. 64 n.9 (“Petitioner contends for the purposes of this
`IPR only that a [person of ordinary skill in the art] would understand these
`claims in the way discussed herein . . . . Petitioner contends in court that
`claims 15 and 39 are indefinite.”). This gives some credence to Patent
`Owner’s arguments that “Petitioner and its expert had no problem
`understanding the terms and allegedly mapping them to the prior art” and
`that Petitioner’s delay was “strategically motivated.” Prelim. Resp. 8–9; PO
`Sur-reply 2. In addition, Patent Owner is correct (Prelim. Resp. 8) that
`Petitioner’s arguments in the Petition do not incorporate any claim term
`constructions issued by the court. Although Petitioner notes the court’s
`constructions from the Markman hearing, Petitioner nonetheless puts forth
`its unpatentability contentions relative to the constructions Petitioner
`proposed prior to the hearing. See Pet. 15–16 (“For the purpose of this IPR,
`Petitioner conservatively applies the narrower constructions it proposed in
`
`13
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`

`IPR2020-01055
`Patent 7,907,137 B2
`the district court litigation, which it contends are the correct constructions.”).
`This supports Patent Owner’s contention that “Petitioner unduly delayed in
`filing this Petition” until after the court ruled on claim construction. PO
`Sur-reply 2.
`Furthermore, the filing of the Petition in June 2020 was not tied to
`Patent Owner’s identification of asserted claims from November 2019.
`Ex. 2002. Thus, Petitioner did not “wait to file its petition until it learn[ed]
`which claims are being asserted against it in the parallel proceeding.”
`Fintiv, Paper 11 at 11. We further note that Petitioner served invalidity
`contentions in January 2020 that incorporated its unpatentability arguments
`here based primarily on Miyazawa. See Ex. 2003, 60–80, 95–100. This
`supports Patent Owner’s contention (see Prelim. Resp. 8; PO Sur-reply 2)
`that Petitioner could have filed the Petition shortly thereafter.
`Considering the timing issue as a whole, we find that the scope and
`content of the unpatentability contentions presented in the Petition did not
`meaningfully change since the time that Patent Owner identified its asserted
`claims in January 2020. Importantly, the Petition does not incorporate
`substantively the court’s rulings from the claim construction hearing. See
`Pet. 15–16, 64 n.9. As such, Petitioner could have filed the same Petition
`prior to the claim construction hearing. Because Petitioner has not explained
`adequately why it did not file the Petition months earlier, e.g., around the
`time Patent Owner identified its asserted claims, we find that the timing of
`the Petition favors the exercise of discretionary denial.
`
`
`14
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`IPR2020-01055
`Patent 7,907,137 B2
`D. Overlap of the Issues
`In this case, Petitioner contends claims 1, 10, 11, 36, and 37 would
`have been obvious over Miyazawa alone or over the combination of
`Miyazawa and Childs. Pet. 3. Petitioner further contends claims 9, 15, and
`39 would have been obvious over the combination of Miyazawa and Kasai
`or over the combination of Miyazawa, Childs, and Kasai. Id. In the
`underlying litigation, Petitioner challenges the validity of claims 10, 11, 15,
`36, 37, and 39. Ex. 2005, 1. Petitioner lists Miyazawa, Childs, and Kasai as
`asserted prior art references in the underlying litigation. Id. at 76. In
`addition, Petitioner has provided an invalidity chart in the underlying
`litigation for claims 10, 11, 15, 36, 37, and 39 that is based on Miyazawa.
`Id. at 104–08.
`Regarding overlap of the issues, Petitioner cites a stipulation that the
`Defendants in the underlying litigation “will not pursue any IPR grounds in
`the [underlying litigation] if the Board institutes.” Pet. Reply 2 (citing
`Ex. 1021). Petitioner also argues that its Petition challenges additional
`claims that are not at issue in the underlying litigation. Id.; see also Pet. 75
`(noting that claims 1 and 9 are not at issue in the underlying litigation).
`Patent Owner characterizes Petitioner’s stipulation as “narrow” and
`contends it “only ‘mitigates to some degree’ concerns about duplicative
`issues.” PO Sur-reply 4 (quoting Sand Revolution, Paper 24 at 12 n.5).
`Patent Owner also contends the fact that two additional claims are being
`challenged here is immaterial because “[t]hey involve the same or similar
`issues as the other claims” and “there is zero prejudice to Petitioner if the
`invalidity challenges against those claims are not addressed.” Prelim. Resp.
`
`15
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`

`IPR2020-01055
`Patent 7,907,137 B2
`13; PO Sur-reply 4. Thus, Patent Owner contends this factor weighs
`marginally against discretionary denial. PO Sur-reply 4.
`We agree with Patent Owner that Petitioner’s stipulation is similar to
`the one in Sand Revolution insofar as it focuses on the same grounds
`challenged in the Petition. Thus, it “mitigates to some degree the concerns
`of duplicative efforts between the district court and the Board, as well as
`concerns of potentially conflicting decisions.” Sand Revolution, Paper 24 at
`12 & n.5. Further, Petitioner is correct that two claims challenged here,
`including independent claim 1, are not challenged in the underlying
`litigation. Pet. Reply 2. Thus, given Petitioner’s stipulation and the
`differences in asserted claims, we find that this factor favors institution.
`
`E. Whether Petitioner is Unrelated to the Defendant in the Underlying
`Litigation
`“If a petitioner is unrelated to a defendant in an earlier court
`proceeding, the Board has weighed this fact against exercising discretion.”
`Fintiv, Paper 11 at 13–14. Both parties acknowledge that Petitioner here is
`the defendant in the underlying litigation. Prelim. Resp. 13–14; Pet.
`Reply 1; PO Sur-reply 1. Thus, this factor does not weigh against exercising
`discretionary denial.
`
`F. Other Considerations
`The final Fintiv factor is a catch-all that takes into account any other
`relevant circumstances. To start, Patent Owner again argues that Petitioner
`unduly delayed in filing the Petition. Prelim. Resp. 14; PO Sur-reply 4–5.
`We have already considered those arguments above. See supra § II.C.
`
`16
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`

`IPR2020-01055
`Patent 7,907,137 B2
`The parties also make arguments related to the merits of Petitioner’s
`unpatentability challenges. Prelim. Resp. 14–18; PO Resp. 4–5; PO
`Sur-reply 5. The decision whether to exercise discretion to deny institution
`under § 314(a) is based on “a balanced assessment of all relevant
`circumstances in the case, including the merits.” Patent Trial and Appeal
`Board Consolidated Trial Practice Guide 58 (Nov. 2019) (“Consolidated
`Trial Practice Guide”), available at https://www.uspto.gov/sites/default/
`files/documents/tpgnov.pdf. Having reviewed Petitioner’s unpatentability
`arguments in the Petition and Reply, and Patent Owner’s arguments in the
`Preliminary Response and Sur-reply, and based on the limited record before
`us, we do not find that the merits outweigh the other Fintiv factors.
`
`
`III. CONCLUSION
`Petitioner has stipulated that, if we were to institute inter partes
`review, it would not pursue the same grounds in the underlying litigation as
`the grounds asserted here, which would mitigate to some degree the
`concerns of duplicative efforts between the district court and the Board. See
`Sand Revolution, Paper 24 at 12 & n.5. We also have considered the merits
`of Petitioner’s unpatentability contentions. Against these factors, Patent
`Owner has established that (1) the trial in the underlying litigation is set to
`occur several months before a Final Written Decision would be issued here;
`(2) the court and the parties have completed considerable work that is related
`to unpatentability grounds presented here, including contention discovery
`and expert discovery; and (3) Petitioner has not explained adequately why it
`filed the Petition long into the development of the underlying litigation.
`Given the advanced posture of the underlying litigation, we find that it
`
`17
`
`

`

`IPR2020-01055
`Patent 7,907,137 B2
`would be inefficient to proceed with inter partes review even if Petitioner’s
`stipulation were put into effect. We also note that the merits of the vast
`majority of Petitioner’s unpatentability contentions here are already being
`considered as part of its invalidity case in the underlying litigation. Thus,
`based on the particular facts and circumstances of this case, we exercise our
`discretion under 35 U.S.C. § 314(a) to deny inter partes review.
`
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that the Petition is denied as to all grounds and all
`challenged claims of the ’137 patent.
`
`
`18
`
`

`

`IPR2020-01055
`Patent 7,907,137 B2
`
`PETITIONER:
`
`Jonathan Strang
`Gabriel Gross
`LATHAM & WATKINS LLP
`jonathan.strang@lw.com
`gabe.gross@lw.com
`
`PATENT OWNER:
`
`Philip Wang
`Neil A. Rubin
`Reza Mirzaie
`Kent N. Shum
`RUSS AUGUST & KABAT
`pwang@raklaw.com
`nrubin@raklaw.com
`rmirzaie@raklaw.com
`kshum@raklaw.com
`
`
`19
`
`

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