Trials@uspto.gov
`571-272-7822
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`Paper 10
`Date: February 22, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ABILITY OPTO-ELECTRONICS TECHNOLOGY CO., LTD,
`Petitioner,
`v.
`LARGAN PRECISION CO., LTD.,
`Patent Owner.
`____________
`
`IPR2020-01339
`Patent No. 8,988,796 B1
`____________
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
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`
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`
`
`Before MINN CHUNG, NORMAN H. BEAMER,
`and JOHN D. HAMANN, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
`
`
`
`571-272-7822
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`
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`
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`
`
`Paper 10
`Date: February 22, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ABILITY OPTO-ELECTRONICS TECHNOLOGY CO., LTD,
`Petitioner,
`v.
`LARGAN PRECISION CO., LTD.,
`Patent Owner.
`____________
`
`IPR2020-01339
`Patent No. 8,988,796 B1
`____________
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Before MINN CHUNG, NORMAN H. BEAMER,
`and JOHN D. HAMANN, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
`
`
`
`
`IPR2020-01339
`Patent No. 8,988,796 B1
`
`
`I.
`INTRODUCTION
`On July 21, 2020, Ability Opto-Electronics Technology Co., Ltd.
`(“Petitioner”) filed a Petition (“Pet.”) pursuant to 35 U.S.C. §§ 311–319 to
`institute an inter partes review of claims 1–11 and 15–25 of U.S. Patent
`No. 8,988,796 B1 (“the ’796 patent”). Paper 1. Petitioner also filed the
`Declaration of William T. Plummer, Ph.D. in support of the Petition.
`Ex. 1007 (“Plummer Decl.”). On November 23, 2020, Largan Precision
`Co., Ltd. (“Patent Owner”) filed a Preliminary Response (“Prelim. Resp.”).
`Paper 7. Pursuant to our authorization, Petitioner and Patent Owner
`subsequently filed reply and sur-reply briefs, respectively, further addressing
`the issue of discretion under 35 U.S.C. § 314(a). Papers 8, 9 (“Reply”; “Sur-
`Reply”).
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides that an inter partes review may not be
`instituted unless the information presented in the Petition and any
`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.”
`For the reasons explained below, we institute an inter partes review as
`to all challenged claims and on all grounds raised in the Petition.
`
`II. BACKGROUND
`A. The ’796 Patent
`The ’796 patent, titled “Image Capturing Lens System, Imaging
`Device And Mobile Terminal,” was filed on December 13, 2013, issued on
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`March 24, 2015, and specifies a foreign application priority date of October
`29, 2013. Ex. 1001, codes (54), (22), (45), (30).
`The ’796 patent describes several embodiments of a compact image
`capturing lens system with four lens elements suitable for use in a mobile
`terminal. Id. at Abstr., 1:13–16. Figure 1A of the ’796 patent is reproduced
`below.
`
`
`Figure 1A is a schematic view of one embodiment of the compact image
`capturing lens system, depicting (i) first lens 110 with convex object-side
`surface 111 and concave image-side surface 112; (ii) aperture stop 100;
`(iii) second lens 120 with convex object-side surface 121 and convex image-
`side surface 122; (iv) third lens 130 with concave object-side surface 131
`and convex image-side surface 132; (v) fourth lens 140 with convex object-
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`side surface 141 and concave image-side surface 142; (vi) IR-cut filter 150;
`and (vii) image sensor 170. Id. at 7:15–50. In addition, image-side surface
`142 of fourth lens 140 has a convex shape in the off-axis region. Id. at 7:43–
`45.
`
`Table 1 of the ’796 patent is reproduced below.
`
`
`
`Table 1 specifies values of various optical parameters for the components of
`Figure 1A — viz., for each surface number, the table specifies the radius of
`curvature, thickness, type of material, index of refraction, Abbe number, and
`focal length. Id. at 9:5–6, 9:55–58; see Plummer Decl. ¶ 39.
`The surfaces of the lenses of the embodiments of the ’796 patent are
`“aspheric,” meaning that they do not conform to the simple shape of the
`surface of a sphere, but rather are defined via a more complex surface
`equation. Plummer Decl. ¶ 40. In particular, the embodiments of the ’796
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`patent specify that the lens surfaces are defined by an equation described and
`set forth below.
`
`
`Ex. 1001, 7:52–8:2; see Plummer Decl. ¶ 40. The above excerpt from the
`’796 patent sets forth an equation for aspheric surfaces and defines the
`variables and coefficients used in that formula. Table 2 of the ’796 patent is
`reproduced below.
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`Table 2 specifies the conic coefficient k and aspheric coefficients Ai for the
`aspheric surface equations of each lens surface of the first embodiment of
`the ’796 patent. Id. at 9:6–7, 9:58–62; see Plummer Decl. ¶ 40.
`The ’796 patent similarly depicts nine other embodiments of four-lens
`systems, with corresponding tables defining the parameters for each
`embodiment. Ex. 1001, Figs. 2A–10A, Tables 3–20. The embodiments are
`described as suitable for use in a mobile terminal, and
`[F]avorable for reducing the total track length of the image
`capturing lens system while obtaining large field of view.
`Furthermore, it is also favorable for improving the resolving
`power and illumination so as to achieve the best image quality.
`Id. at Figs. 11A, 11B, 6:49–60.
`
`B. Illustrative Claim
`Independent claim 1 is reproduced below.
`1. An image capturing lens system comprising, in order
`from an object side to an image side:
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`a first lens element having refractive power;
`a second lens element with positive refractive power
`having a convex image-side surface in a paraxial
`region thereof;
`a third lens element with negative refractive power
`having a concave object-side surface in a paraxial
`region thereof and a convex image-side surface in a
`paraxial region thereof; and
`a fourth lens element with refractive power having a
`concave image-side surface in a paraxial region
`thereof, wherein both of an object-side surface and
`the image-side surface of the fourth lens element are
`aspheric, and the image-side surface of the fourth lens
`element has at least one convex shape in an off-axis
`region thereof;
`wherein the image capturing lens system has a total of
`four lens elements with refractive power, an axial
`distance between an object-side surface of the first
`lens element and the image-side surface of the fourth
`lens element is Td, half of a maximal field of view of
`the image capturing lens system is HFOV, a focal
`length of the image capturing lens system is f, a focal
`length of the fourth lens element is f4, a focal length
`of the second lens element is f2, a focal length of the
`third lens element is f3, and the following conditions
`are satisfied:
`0.5 mm<Td<3.2 mm;
`1.0 mm<Td/tan(HFOV)<3.75 mm;
`|f/f4|<1.20; and
`f2/f3<-0.65.
`
`Ex. 1001, 30:48–31:15.
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`C. References
`Petitioner relies on the following references (Pet. 8):
` Yu et al., US Patent No. 9,097,860. Ex. 1003 (“Yu”).
` Yamaguchi, US Patent Application Publication No. 2004/0012861.
`Ex. 1006 (“Yamaguchi”).
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1, 7–10, 13–16, 22,
`and 24–26 of the ’796 patent on the following grounds (Pet. 8)1:
`
`Claims Challenged
`1–11, 15–25
`1–11, 15, 16, 19–24
`
`35 U.S.C. §
`103
`103
`
`References
`Yu
`Yamaguchi, Yu
`
`E. Real Parties in Interest
`The parties identify themselves as the real parties in interest. Pet. 87;
`Paper 4, 1.
`
`F. Related Proceedings
`The record reflects that currently Largan Precision Co., Ltd. v. Ability
`Opto-Electronics Technology Co., Ltd., No. 3:20-cv-06607-JD (N.D. Cal.
`Sept. 21, 2020) (the “Parallel Litigation”) is a related proceeding, which
`involves the ’796 patent. Paper 6, 1. The Parallel Litigation also involves,
`inter alia, U.S. Patent Nos. 8,395,691 and 9,146,378, also assigned to Patent
`
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. §§ 102 and 103 that became effective before the filing of the
`application for the ’796 patent. Therefore, we apply the AIA versions of
`these sections.
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`Owner, which are the subject of currently pending IPR2020-01345 and
`IPR2020-01545, respectively.
`
`III. ANALYSIS
`A. Level of Skill in the Art
`Petitioner relies on its expert to contend:
`A person of ordinary skill in the art (“POSITA”) as of
`October 29, 2013, would have had a bachelor’s degree in optical
`engineering, mechanical engineering, electrical engineering,
`optics, or physics with at least three years of experience working
`in optical engineering; a master’s degree in one of the above
`disciplines with at least two years of experience working in
`optical engineering; a Ph.D. in one of the above disciplines
`focusing on optical engineering; or equivalent experience..
`Pet. 7–8; Plummer Decl. ¶ 63.
`Patent Owner does not provide a description of a person of ordinary
`skill in the art. Based on our review of the record, we accept Petitioner’s
`description for the purposes of this Decision.
`
`B. Claim Construction
`The Petition was accorded a filing date of July 21, 2020. Paper 5, 1.
`In an inter partes review for a petition filed on or after November 13, 2018,
`a claim “shall be construed using the same claim construction standard that
`would be used to construe the claim in a civil action under
`35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). We apply the claim
`construction standard from Phillips v. AWH Corp., 415 F.3d 1303, 1312–13
`(Fed. Cir. 2005) (en banc).
`Under that standard, claim terms are generally given their ordinary
`and customary meaning, as would be understood by one with ordinary skill
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`in the art in the context of the specification, the prosecution history, other
`claims, and even extrinsic evidence including expert and inventor testimony,
`dictionaries and learned treatises, although extrinsic evidence is less
`significant than the intrinsic record. Phillips, 415 F.3d at 1312–17. Usually,
`the specification is dispositive, and it is the single best guide to the meaning
`of a disputed term. Id. at 1315.
`“Importantly, the person of ordinary skill in the art is deemed to read
`the claim term not only in the context of the particular claim in which the
`disputed term appears, but in the context of the entire patent, including the
`specification.” Id. at 1313. “In determining the meaning of the disputed
`claim limitation, we look principally to the intrinsic evidence of record,
`examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312–17). However, in construing the claims, care should be
`taken to avoid improperly importing a limitation from the specification into
`the claims. See Cont’l Circuits LLC v. Intel Corp., 915 F.3d 788, 797–98
`(Fed. Cir. 2019) (“[U]se of the phrase ‘present invention’ or ‘this invention’
`is not always . . . limiting, such as where . . . other portions of the intrinsic
`evidence do not support applying the limitation to the entire patent.”
`(citations omitted)). An inventor may provide a meaning for a term that is
`different from its ordinary meaning by defining the term in the specification
`with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
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`Claim terms need only be construed to the extent necessary to resolve
`the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017).
`Petitioner does not propose any claim terms for construction. Pet. 9.
`However, Patent Owner argues that Petitioner has in fact applied
`inconsistent constructions to the claim terms “aspheric” and “lens element,”
`and argues that the Petition should be denied for this reason. PO Resp. 17–
`29. We discuss these issues below.
`
`1. “aspheric”
`As described above in Section II.A, the lenses used in the disclosed
`embodiments of the ’796 patent are described as “aspheric” — e.g.,
`“surfaces of each lens element can be arranged to be aspheric, since the
`aspheric surface of the lens element is easy to form a shape other than
`spherical surface . . . .” Ex. 1001, 5: 61–63. Also, each of independent
`claims 1, 15, and 21 require the image-side surface of a fourth lens element
`to be aspheric. Id. at 30:60–61, 32:31–32, 33:25–26. Petitioner states:
`The ’796 patent discloses aspheric lenses. A spherical lens
`has a surface that has the shape of the surface of a sphere; an
`aspherical lens is non-spherical.
`Pet. 6 (citing Plummer Decl. ¶ 40). As set forth in Section II.A, the ’796
`patent provides an example of an equation for an aspheric surface, and
`provides parameters for that equation as applied to the different illustrative
`embodiments disclosed. Ex. 1001, 7:55–59, Tables 2, 4, 6, 8, 10, 12, 14, 16,
`18, 20.
`Patent Owner argues that Petitioner construes “aspheric”
`inconsistently, sometimes using its “plain and ordinary meaning,” and
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`sometimes narrowly limiting it to the specific aspheric surface equation
`disclosed in the ’796 patent. Prelim. Resp. 18–19. Patent Owner points out
`that, in the Parallel Litigation, Petitioner argued that “aspheric” must be
`narrowly limited to the equation disclosed in the ’796 patent. Id. at 19
`(citing Ex. 2017, 15–16). Patent Owner also cites Petitioner’s reliance on
`the disclosure in Yamaguchi, a reference relied on here, of an equation said
`to be the equivalent of the ’796 equation. Id. at 21 (citing Pet. 69). On the
`other hand, argues Patent Owner, Petitioner does not cite any equation in
`alleging that Yu (the other reference relied on) teaches the aspheric
`limitation. Id. at 22. Based on this, Patent Owner argues that the Petition
`should be dismissed for failure to properly construe “aspheric” as required
`by 37 C.F.R. § 42.104(b)(3). Id. at 17, 23–24, 28–29.
`We are not persuaded that the Petition is deficient on this basis. The
`Petition states that an “aspherical lens is non-spherical,” and relies on
`disclosures in the asserted references that show that the lens surfaces at issue
`are non-spherical, and thus aspheric. Pet. 6, 26–27, 69. The fact that
`Petitioner relies on a specific formula disclosed in Yamaguchi to show that
`lens surfaces are aspherical does not constitute an assertion that the term
`“aspheric” is limited to that formula. For present purposes, the fact that
`Petitioner allegedly asserts a narrow interpretation for “aspheric” in the
`Parallel Litigation has no effect on the issues here, because neither party is
`asserting that narrower interpretation in this proceeding. Therefore, we
`determine that it is not necessary to resolve potential disputes in the Parallel
`Litigation as to whether the scope of the claims is limited to surfaces defined
`by a specific equation, or more broadly encompasses non-spherical surfaces.
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`2. “lens element”
`All of the challenged claims use the term “lens element” when
`referring to a lens. E.g., Ex. 1001, 30:50 (“first lens element”). Similar to
`its arguments discussed above with respect to the term “aspheric,” Patent
`Owner argues that the Petition is deficient because Petitioner inconsistently
`construes “lens element” both under its “plain and ordinary meaning,” and
`as “the optical portion of a lens that refracts light to form an image, but
`excluding any mechanical or flange portion used to mount or attach the
`element.” PO Resp. 24. Again, Patent Owner refers to claim construction
`positions taken in the Parallel Litigation. Id. at 24–25. Patent Owner also
`alleges that Petitioner takes inconsistent positions here because, for the
`Yamaguchi reference, Petitioner cites paragraphs in that reference which
`discuss a figure which includes mechanical flanges. Id. at 25–27 (citing Pet.
`58, 60, which cites Yamaguchi ¶¶ 127, 129, which in turn cite Yamaguchi
`Fig. 2).
`Our review of Petitioner’s arguments does not reveal any
`inconsistencies in regard to the meaning of “lens element.” Petitioner’s
`indirect reliance on a flange-containing figure in Yamaguchi refers only to
`the optical properties of the lens, not to the mechanical flange portions. Pet.
`58, 60. There is no suggestion in the record that Petitioner is asserting an
`interpretation of “lens element” that either requires or excludes “mechanical
`or flange portions” of a lens.
`As is the case for “aspheric,” Petitioner’s alleged claim construction
`position in regard to “lens element” in the Parallel Litigation has no effect on
`the issues here — it is not necessary to resolve potential disputes concerning
`whether or not “lens element” does or does not include mechanical flanges.
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`C. Legal Standards
`A claim is unpatentable for obviousness if, to one of ordinary skill
`in the pertinent art, “the differences between the subject matter sought to
`be patented and the prior art are such that the subject matter as a whole
`would have been obvious at the time the invention was made.” KSR Int’l
`Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C.
`§ 103(a)). The question of obviousness is resolved on the basis of
`underlying factual determinations, including “the scope and content of
`the prior art”; “differences between the prior art and the claims at issue”;
`and “the level of ordinary skill in the pertinent art.”2 Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966).
`A patent claim “is not proved obvious merely by demonstrating that
`each of its elements was, independently, known in the prior art.” KSR,
`550 U.S. at 418. Rather, an obviousness determination requires finding
`“both ‘that a skilled artisan would have been motivated to combine the
`teachings of the prior art references to achieve the claimed invention, and
`that the skilled artisan would have had a reasonable expectation of success in
`doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d
`1359, 1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418
`(for an obviousness analysis, “it can be important to identify a reason that
`
`
`2 Additionally, secondary considerations, such as “commercial success, long
`felt but unsolved needs, failure of others, etc., might be utilized to give light
`to the circumstances surrounding the origin of the subject matter sought to
`be patented. As indicia of obviousness or nonobviousness, these inquiries
`may have relevancy.” Graham, 383 U.S. at 17–18. Neither party, however,
`has presented any such evidence for us to consider at this stage of the
`proceeding.
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`would have prompted a person of ordinary skill in the relevant field to
`combine the elements [in the way the claimed] new invention does”).
`“Although the KSR test is flexible, the Board ‘must still be careful not to
`allow hindsight reconstruction of references . . . without any explanation as
`to how or why the references would be combined to produce the claimed
`invention.’” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir.
`2016) (citation omitted).
`Further, an assertion of obviousness “cannot be sustained by mere
`conclusory statements; instead, there must be some articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988
`(Fed. Cir. 2006)); accord In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed.
`Cir. 2016) (stating that “‘conclusory statements’” amount to an “insufficient
`articulation[] of motivation to combine”; “instead, the finding must be
`supported by a ‘reasoned explanation’” (citation omitted)); In re Magnum
`Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its
`burden of proving obviousness, a petitioner cannot employ mere conclusory
`statements. The petitioner must instead articulate specific reasoning, based
`on evidence of record, to support the legal conclusion of obviousness.”).
`The motivation to combine must be “accompanied by a reasonable
`expectation of achieving what is claimed in the patent-at-issue.”
`Intelligent Bio-Sys, 821 F.3d at 1367. “The reasonable expectation of
`success requirement refers to the likelihood of success in combining
`references to meet the limitations of the claimed invention.” Id.
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`D. Discretionary Denial of Institution under 35 U.S.C. § 314(a)
`Patent Owner argues that the Board should exercise its discretion and
`deny institution pursuant to 35 U.S.C. § 314(a) due to the Parallel Litigation.
`Prelim. Resp. 3–17. Patent Owner brought that litigation in the Eastern
`District of Texas on September 25, 2019, asserting that Petitioner infringes
`the ’796 patent and three other patents. Ex. 2002 (Largan Precision Co. v.
`Ability Opto-Electronics Tech. Co., No. 4:19-cv-00696-ALM (E.D. Tex.)).
`That action was subsequently transferred to the Northern District of
`California on September 21, 2020. Paper 6, 2 (Largan Precision Co., Ltd. v.
`Ability Opto-Electronics Technology Co., Ltd., No. 3:20-cv-06607-JD (N.D.
`Cal.)).
`Under Section 314(a), the Director has discretion to deny institution.
`See 35 U.S.C. § 314(a) (stating “[t]he Director may not authorize an inter
`partes review to be instituted unless the Director determines that the
`information presented in the petition . . . 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); 37 C.F.R. § 42.208(a)
`(stating “the Board may authorize the review to proceed”) (emphasis added);
`cf. 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.”); Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356,
`1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to
`institute an IPR proceeding.”).
`In determining whether to exercise that discretion on behalf of the
`Director, we are guided by the Board’s precedential decision in NHK Spring
`Co. v. Intri-Plex Techs, Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12,
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`2018) (precedential). In NHK, the Board considered the “advanced state of
`the district court proceeding” as a “factor that weighs in favor of denying”
`the petition under § 314(a). NHK, Paper 8 at 20. More specifically, we
`consider an early trial date as part of a “balanced assessment of all relevant
`circumstances in the case, including the merits.” Consolidated Trial Practice
`Guide November 2019, available at https://www.uspto.gov/TrialPractice
`GuideConsolidated.
`The Board’s precedential decision in Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (“Fintiv”) sets forth six
`factors that we consider as part of this balanced assessment when
`determining whether to use our 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 apply these six factors to the facts and
`circumstances present here.
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`1. Factor 1
`A district court stay of the litigation pending resolution of the PTAB
`trial allays concerns about inefficiency and duplication of efforts, which fact
`strongly weighs against exercising the authority to deny institution. Fintiv,
`Paper 11 at 6. The district court in the Parallel Litigation has not granted a
`stay or been asked to do so. Prelim. Resp. 4–5. However, after the Parallel
`Litigation was transferred to California, at an initial case management
`conference held on January 7, 2021, the Court stated:
`If PTAB takes up all of the claims in two [of] those patents and
`most of the third patent, I think the odds of stay are fairly high.
`I’m not guaranteeing it, but I thinks it’s fairly likely.
`Ex.1018, 4:20–23.
`Patent Owner argues that the prospect of a stay remains speculative,
`because it has not yet been determined whether all three co-pending inter
`partes reviews will be instituted. Sur-Reply 1.
`With this Decision we institute inter partes review in this proceeding.
`We also instituted inter partes review in IPR2020-01345 via our Decision in
`that proceeding filed contemporaneously herewith. Our analysis of
`IPR2020-01545 is ongoing. In light of the above, we consider it likely that
`the Court in the Parallel Litigation would enter a stay if requested and if we
`institute in IPR2020-01545. We also consider it at least possible that the
`Court would enter a requested stay if we decline institution in IPR2020-
`01545. Therefore, on the whole, we consider the first Fintiv factor to be
`neutral.
`
`
`
`18
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`IPR2020-01339
`Patent No. 8,988,796 B1
`
`
`2. Factor 2
`If the district court’s trial date is earlier than the projected statutory
`deadline, the Board generally has weighed this fact in favor of exercising
`discretion to deny institution. If the court’s trial date is at or around the
`same time as the projected statutory deadline or even significantly after the
`projected statutory deadline, the decision whether to institute will likely
`implicate other Fintiv factors, such as the resources that have been invested
`in the parallel proceeding. Fintiv, Paper 11 at 9.
`At the January 7, 2021 initial case management conference, the Court
`did not set a trial date. Reply 2. As Patent Owner acknowledges, the
`parties’ schedules proposed at the case management conference “have trial
`beginning no earlier than May 2022.” Sur-Reply 1.
`Accordingly, trial in the Parallel Litigation will not take place until
`well after the February 2022 Final Decision in this proceeding. Therefore,
`we determine that factor two strongly weighs against invoking our discretion
`to deny institution.
`
`3. Factor 3
`“The Board also has considered the amount and type of work already
`completed in the parallel litigation by the court and the parties at the time of
`the institution decision.” Fintiv, Paper 11 at 9. Patent Owner argues that, in
`the Parallel Litigation, the parties have completed claim construction
`briefing, including expert declarations, have “collectively produced in
`excess of 37,000 documents totaling more than 216,000 pages and
`responded to over four dozen interrogatories,” and briefed numerous
`motions. Prelim. Resp. 8–9, Sur-Reply 2.
`
`
`
`19
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`IPR2020-01339
`Patent No. 8,988,796 B1
`
`
`Petitioner responds that no Markman Hearing has been held, and after
`transfer to California the Court “ordered the parties to ‘work out a new claim
`construction process,’” in accordance with the local patent rules. Reply 2–3.
`Also, Petitioner argues that the proposed case management schedules
`provide for most substantive actions to take place after the Institution
`Decision in this proceeding. Id. at 3 (citing Ex. 1019, 8).
`We agree with Petitioner that much activity remains. For example,
`the proposed dates for the close of fact discovery, the Markman hearing, and
`close of expert discovery are August 12, 2021; September 2, 2021; and
`January 10, 2022, respectively. Ex. 1019, 8.
`Based on the work already completed as of the time of this Decision,
`and the current schedule in the Parallel Litigation for future activities, we
`determine that factor three strongly weighs against invoking our discretion
`to deny institution of an inter partes review.
`
`4. Factor 4
`This factor evaluates “concerns of inefficiency and the possibility of
`conflicting decisions” when substantially identical prior art is submitted in
`both the district court and the inter partes review proceedings. Fintiv, Paper
`11 at 12.
`Patent Owner submits that “Petitioner is asserting the same
`obviousness grounds, arguments, and evidence” in this proceeding and in the
`Parallel Litigation, including relying on the same references to show
`obviousness, and challenging substantially the same claims (claims 5 and 10
`are challenged here but not in the Parallel Litigation). Prelim. Resp. 10
`(citing Ex. 2001 (Invalidity Contentions), 6–9; Ex. 2012 (Invalidity
`Contention Charts), 1–23, 25–33; Ex. 2013 (Invalidity Contention Charts),
`20
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`IPR2020-01339
`Patent No. 8,988,796 B1
`
`12–15, 17–20, 24, 25; Ex. 2014 (Patent Rule 3-1 and 3-2 Disclosures), 1, 9);
`Prelim. Sur-Reply 2.
`Petitioner responds by stipulating “that, if IPR is instituted, it will not
`pursue in the district court any ground raised or that could have been
`reasonably raised in the IPR.” Reply 3; see also id. (citing Sotera Wireless,
`Inc. v. Masimo Corp., IPR2020-01019, Paper 12, at 18–19 (Dec. 1, 2020))
`(precedential as to § II.A) (Petitioner arguing that its stipulation matches the
`stipulation in Sotera, which the Board found “mitigates any concerns of
`duplicative efforts between the district court and the Board”).
`Patent Owner argues that Petitioner’s proposed stipulation does not
`take into account the fact that HP Inc., another party to the Parallel
`Litigation, has asserted the same art and arguments that Petitioner raises
`here, resulting in likely duplication of effort. Sur-Reply 3; see Ex. 2001.
`We determine that the effect of Petitioner’s proposed stipulation
`weighs against invoking our discretion to deny institution. See Sotera
`Wireless at 13–14; Sand Revolution II, LLC v. Continental Intermodal
`Group – Trucking LLC, IPR2019-01393, Paper 24 at 12 (PTAB June 16,
`2020) (informative) (“Petitioner’s stipulation . . . mitigates to some degree
`the concerns of duplicative efforts between the [District Court Lawsuit] and
`the Board, as well as concerns of potentially conflicting decisions”). We
`find it speculative as to what invalidity contentions HP, Inc., a third party,
`will maintain, and whether those contentions would reach a trial.
`
`5. Factor 5
`Patent Owner is the plaintiff and Petitioner is a defendant in the
`Parallel Litigation. Prelim. Resp. 10. Accordingly, the fifth Fintiv factor
`weighs in favor of invoking our discretion to deny institution.
`21
`
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`IPR2020-01339
`Patent No. 8,988,796 B1
`
`
`6. Factor 6
`For the reasons set forth below, we determine that Petitioner has
`demonstrated a reasonable likelihood of prevailing as to at least the first
`ground of its challenge to the claims of the ’796 Patent. This does not weigh
`for or against invoking our discretion to deny institution.
`Patent Owner argues that Petitioner’s delay in bringing the Petition
`weighs against institution. Prelim. Resp. 11–12. However, as Patent Owner
`indicates, Petitioner filed the Petition three month after Patent Owner
`identified the allegedly infringing ’796 patent claims. Id. at 11. We do not
`consider this to be a significant delay for purposes of evaluation whether or
`not to invoke our discretion to deny institution. See Fintiv, Paper 11 at 11
`(“The Board recognizes . . . that it is often reasonable for a petitioner to wait
`to file its petition until it learns which claims are being asserted against it in
`the parallel proceeding”).
`In addition, we find unavailing Patent Owner’s argument that
`Petitioner’s delay starts from before the filing of the complaint in the
`Parallel Litigation to when Patent Owner notified Petitioner of Patent
`Owner’s ’796 patent and Petitioner’s allegedly infringing products. Prelim.
`Resp. 11–12 (citing Ex. 2016 (an Aug. 8, 2019 email allegedly from Patent
`Owner to Petitioner identifying the ’796 patent and allegedly infringing
`products)). Again, it is often reas
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