Trials@uspto.gov
`571-272-822
`
`Paper 20
`Date: June 10, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY MOBILE COMMUNICATIONS AB, SONY MOBILE
`COMMUNICATIONS, INC., SONY ELECTRONICS INC., and SONY
`CORPORATION,
`Petitioner,
`v.
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`IPR2021-00663
`Patent 6,411,941 B1
`____________
`
`Before THU A. DANG, JONI Y. CHANG, and KEVIN W. CHERRY,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`571-272-822
`
`Paper 20
`Date: June 10, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY MOBILE COMMUNICATIONS AB, SONY MOBILE
`COMMUNICATIONS, INC., SONY ELECTRONICS INC., and SONY
`CORPORATION,
`Petitioner,
`v.
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`IPR2021-00663
`Patent 6,411,941 B1
`____________
`
`Before THU A. DANG, JONI Y. CHANG, and KEVIN W. CHERRY,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`IPR2021-00663
`Patent 6,411,941 B1
`
`
`I. INTRODUCTION
`
`Sony Mobile Communications AB, Sony Mobile Communications,
`Inc., Sony Electronics Inc., and Sony Corporation (collectively, “Petitioner
`Sony”) filed a Petition requesting an inter partes review (“IPR”) of claims
`1−3, 6−14, and 16 (“the challenged claims”) of U.S. Patent No. 6,411,941
`B1 (Ex. 1001, “the ’941 patent”). Paper 1 (“Pet.”). Petitioner Sony also
`filed a Motion for Joinder (Paper 4, “Mot.”), seeking to join as a party to
`TCT Mobile (US) Inc. v. Ancora Technologies, Inc. IPR2020-01609
`(the “TCT IPR”), and a Reply (Paper 14, “Reply”). Ancora Technologies,
`Inc. (“Patent Owner”) filed an Opposition to Petitioner Sony’s Motion for
`Joinder (Paper 10, “Opp.”), a Preliminary Response (Paper 13, “Prelim.
`Resp.”), and a Sur-reply (Paper 16, “Sur-reply”).
`For reasons discussed below, we institute an inter partes review of the
`challenged claims and grant Petitioner Sony’s Motion for Joinder.
`
`A. Related Matters
`The parties indicate that the ’941 patent is involved in the following
`district court proceedings: Ancora Technologies, Inc. v. TCT Mobile (US)
`Inc., No. 8:19-cv-02192 (C.D. Cal.); Ancora Technologies, Inc. v. Lenovo
`Group Limited, No. 1:19-cv-01712 (D. Del.); Ancora Technologies, Inc. v.
`Sony Corp., No. 1:19-cv-01703 (D. Del.) (the “Sony case”); Ancora
`Technologies, Inc. v. LG Electronics, Inc., No. 1:20-cv-00034 (W.D. Tex.)
`(the “LG case”); Ancora Technologies, Inc. v. Samsung Electronics Co., No.
`6:19-cv-00385 (W.D. Tex.); and Ancora Technologies, Inc. v. HTC America,
`Inc., No. 2:16-cv-01919 (W.D. Wash.). Pet. 3−4; Paper 9, 1−2.
`
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`The ’941 patent also was involved in ex parte Reexamination No.
`90/010,560. Ex. 1001, 8−9 (Ex Parte Reexamination Certificate issued on
`June 1, 2010, confirming the patentability of claims 1−19 and indicating that
`no amendments have been made to the patent).
`In addition, the ’941 patent was involved in the following
`proceedings: Apple Inc. v. Ancora Technologies, Inc., CBM2016-00023
`(Institution Denied); HTC America, Inc. v. Ancora Technologies, Inc.,
`CBM2017-00054 (Institution Denied); and Samsung Electronics Co., Ltd. v.
`Ancora Technologies, Inc., IPR2020-01184 (Institution Denied).
`The ’941 patent is currently involved in the following: TCT Mobile
`(US) Inc. v. Ancora Technologies, Inc., IPR2020-01609; HTC Corporation
`v. Ancora Technologies, Inc., IPR2021-00570; LG Electronics, Inc. v.
`Ancora Technologies, Inc., IPR2021-00581; and Samsung Electronics Co. v.
`Ancora Technologies, Inc., IPR2021-00583.
`
`B. The ’941 patent
`The ’941 patent discloses a method of restricting software operation
`within a license limitation that is applicable for a computer having a first
`non-volatile memory area, a second non-volatile memory area, and a volatile
`memory area. Ex. 1001, (57). According to the ’941 patent, the method
`includes the steps of selecting a program residing in the volatile memory,
`setting up a verification structure in the non-volatile memories, verifying the
`program using the structure, and acting on the program according to the
`verification. Id.
`
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`Figure 1 of the ’941 patent is reproduced below.
`
`
`Figure 1 above shows a schematic diagram of computer processor 1
`and license bureau 7. Id. at 5:9−19. Computer processor 1 is associated
`with input operations 2 and output operations 3. Id. Computer processor 1
`contains first non-volatile memory area 4 (e.g., the ROM section of the
`Basic Input / Output System (“BIOS”)), second non-volatile memory area 5
`(e.g., the E2PROM section of the BIOS), and volatile memory area 6 (e.g.,
`the internal RAM memory of the computer). Id.
`
`C. Illustrative Claim
`Of the challenged claims, only claim 1 is independent. Claims 2, 3,
`6−14, and 16 directly or indirectly depend from claim 1. Claim 1 is
`illustrative:
`
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`1. A method of restricting software operation within a license for
`use with a computer including an erasable, non-volatile memory
`area of a BIOS of the computer, and a volatile memory area; the
`method comprising the steps of:
`selecting a program residing in the volatile memory,
`using an agent to set up a verification structure in the erasable,
`non-volatile memory of the BIOS, the verification structure
`accommodating data that includes at least one license record,
`verifying the program using at least the verification structure
`from the erasable non-volatile memory of the BIOS, and
`acting on the program according to the verification.
`Ex. 1001, 6:59:67–7:4 (emphasis added).
`
`D. Prior Art and Other Evidence Relied Upon
`Petitioner Sony relies upon the references listed below (Pet. 5):
`
`
`
`Reference
`Hellman, U.S. Patent No. 4,658,093
`
`Exhibit No.
`Date
`Apr. 14, 1987 Ex. 1004
`
`Chou, U.S. Patent No. 5,892,906
`
`Apr. 6, 1999 Ex. 1005
`
`Aug. 3, 1999 Ex. 1006
`
`Schneck, U.S. Patent No. 5,933,498
`
`Petitioner Sony also relies upon the Declaration of Erez Zadok, Ph.D.
`Ex. 1015. Dr. Zadok testifies that he agrees with the facts, analysis, and
`conclusions in the Declaration of Andrew Wolfe, Ph.D. (Ex. 1003), and he
`adopts the testimony in sections I.C−IV of Dr. Wolfe’s Declaration as his
`own for purposes of this proceeding. Ex. 1015 ¶ 33.
`
`
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`E. Asserted Grounds of Unpatentability
`Petitioner Sony asserts the following grounds of unpatentability
`(Pet. 6):
`
`Claims Challenged 35 U.S.C. §1
`
`References
`
`1, 2, 11, 13
`
`103(a)
`
`Hellman, Chou
`
`1−3, 6−14, 16
`
`103(a)
`
`Hellman, Chou, Schneck
`
`II. DISCRETIONARY DENIAL
`
`“To join a party to an instituted IPR, the plain language of § 315(c)
`requires two different decisions.” Facebook, Inc. v. Windy City Innovations,
`LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). First, we “determine whether
`the joinder applicant’s petition for IPR ‘warrants’ institution under § 314.”
`Id. Second, if the petition warrants institution, we then “decide whether to
`‘join as a party’ the joinder applicant.” Id. In short, before determining
`whether to join Petitioner Sony as a party to the TCT IPR, we first determine
`whether the petition warrants institution under § 314(a).
`Institution of an inter partes review is discretionary. 35 U.S.C.
`§ 314(a). The Supreme Court of the United States has explained that,
`because § 314 includes no mandate to institute review, “the agency’s
`decision to deny a petition is a matter committed to the Patent Office’s
`discretion.” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140
`
`
`1 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
`’941 patent was filed before March 16, 2013, the effective date of the
`relevant amendment, the pre-AIA version of § 103 applies.
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`(2016); see also Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367
`(Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is permitted, but
`never compelled, to institute an IPR proceeding”). The Director has
`delegated his authority under § 314(a) to the Board. 37 C.F.R. § 42.4(a)
`(“The Board institutes the trial on behalf of the Director.”).
`As the Consolidated Trial Practice Guide (“Consolidated Practice
`Guide”)2 at 56 noted, the AIA was “designed to establish a more efficient
`and streamlined patent system that will improve patent quality and limit
`unnecessary and counterproductive litigation costs.” H.R. Rep. No. 112−98,
`pt. 1, at 40 (2011), reprinted in 2011 U.S.C.C.A.N. 67, 69 (Post grant
`reviews were meant to be “quick and cost effective alternatives to
`litigation”); see also S. Rep. No. 110−259, at 20 (2008). The Board
`recognized these goals of the AIA, but also “recognize[d] the potential for
`abuse of the review process by repeated attacks on patents.” Gen. Plastic
`Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16−17
`(PTAB Sept. 6, 2017) (§ II.B.4.i designated precedential).
`
`A. General Plastic Factors
`In this proceeding, Patent Owner argues that we should exercise our
`discretion to deny this Petition by applying the General Plastic factors.
`Opp. 11−15; Sur-reply 2−3. For the reasons set forth below, we decline to
`exercise our discretion to deny institution under General Plastic factors.
`
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated; see
`also 84 Fed. Reg. 64,280 (Nov. 21, 2019).
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`In General Plastic, the Board articulated a list of non-exclusive
`
`factors to be considered in determining whether to exercise discretion under
`§ 314(a) to deny a petition:
`1. whether the same petitioner previously filed a petition directed
`to the same claims of the same patent;
`2. whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should
`have known of it;
`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision on
`whether to institute review in the first petition;
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the
`filing of the second petition;
`5. whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions directed to
`the same claims of the same patent;
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
`General Plastic, Paper 19 at 16 (citing NVIDIA Corp. v. Samsung Elec. Co.,
`IPR2016-00134, Paper 9 at 6−7 (PTAB May 4, 2016)). In our analysis
`below, we address each of these factors in turn.
`
`Factor 1: “whether the same petitioner previously filed a
`petition directed to the same claims of the same patent”
`The General Plastic analysis applies to multiple petitions filed by
`different petitioners that have a “significant relationship,” challenging the
`same claims of the same patent. Valve Corp. v. Elec. Scripting Prods., Inc.,
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`IPR2019-00062, Paper 11 at 9−10 (PTAB Apr. 2, 2019) (precedential)
`(holding that the petitioner and the prior petitioner have a “significant
`relationship” because they “were co-defendants in the District Court
`litigation and were accused of infringing the [challenged] patent based on
`the [same] devices”).
`Here, Patent Owner acknowledges that Petitioner Sony did not
`previously file a petition directed to the ’941 patent. Opp. 13. Nevertheless,
`Patent Owner argues that other accused infringers had filed prior petitions
`challenging the ’941 patent—namely, Apple in CBM2016-00023, HTC in
`CBM2017-00054, and Samsung in IPR2020-01184. Id. Patent Owner
`contends that “[t]hese accused infringers sell similar, competing products
`and are consequently motivated to pursue similar approaches to invalidating
`the ’941 patent—as evidenced by the flurry of me-too petitions filed after
`institution of IPR2021-01609.” Id.
`In its Reply, Petitioner Sony counters that this factor weighs in favor
`of institution because the number of petitions filed by other petitioners
`challenging the ’941 patent is the result of Patent Owner’s litigation activity.
`Reply 4. Petitioner Sony also argues that it “is neither a co-defendant with
`any other petitioners nor has it contributed to or coordinated with their IPR
`filings.” Id. at 3.
`In its Sur-reply, Patent Owner argues that this factor weighs against
`institution because Petitioner Sony did not timely file a petition within the
`one-year statutory deadline under § 315(b) and Petitioner Sony has had the
`benefit of reviewing several prior petitions. Sur-reply 2.
`Based on the evidence of record, we find that Factor 1 of General
`Plastic weighs against denying institution because Petitioner Sony did not
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`file a prior petition challenging the ’941 patent, nor does it have a significant
`relationship with any of the prior petitioners. As Patent Owner admits,
`Petitioner Sony did not previously file a petition directed to the ’941 patent.
`Opp. 13. The instant Petition is the first petition filed by Petitioner Sony
`challenging the ’941 patent, and Petitioner Sony has not filed a second
`petition challenging the same patent. There is no evidence on this record
`that Petitioner Sony has used the review process as tools for harassment
`through repeated attacks on the same patent. The efficiency and fairness
`concerns that underlie the General Plastic analysis are not implicated in this
`proceeding.
`Furthermore, unlike Valve, Petitioner Sony does not have a significant
`relationship with the prior petitioners (Apple, HTC, and Samsung)
`challenging the ’941 patent. Notably, Patent Owner sued Petitioner Sony
`separately from its competitors, Apple, HTC, and Samsung in different
`forums. Ex. 2007 (Complaint against Sony only). Patent Owner also admits
`that Petitioner Sony and the other prior petitioners sell “competing
`products,” not the same product. Opp. 13. Further, we agree with Petitioner
`Sony that the number of petitions filed by other petitioners challenging the
`’941 patent is the result of Patent Owner’s litigation activity in that it has
`sued more than ten different parties in lawsuits staggered over twelve years.
`Reply 4; Opp. 2−6. Each prior petitioner filed a petition in response to
`Patent Owner’s lawsuit for infringement. Opp. 2−6. A common desire to
`challenge the validity of the asserted patent without more is insufficient to
`establish that Petitioner Sony has a significant relationship with the other
`prior petitioners. As Petitioner Sony notes, it “is neither a co-defendant with
`any other petitioners nor has it contributed to or coordinated with their IPR
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`filings.” Reply 3. In short, we find that Petitioner Sony does not have a
`significant relationship with the other petitioners.
`In addition, we are not persuaded by Patent Owner’s argument that
`Petitioner Sony did not timely file a petition with the one-year statutory
`deadline under § 315(b). Sur-reply 2. That time limitation does not apply to
`this proceeding because the Petition is accompanied by a request for joinder
`and joinder is granted. See 35 U.S.C. § 315(b) (stating that “[t]he time
`limitation set forth in the preceding sentence shall not apply to a request for
`joinder”); 37 C.F.R. § 42.122(b); see also Facebook, 973 F.3d at 1333
`(“Beginning with the statutory language, § 315(b) articulates the time-bar for
`when an IPR ‘may not be instituted.’ 35 U.S.C. § 315(b). But § 315(b)
`includes a specific exception to the time bar. By its own terms, ‘[t]he time
`limitation . . . shall not apply to a request for joinder under subsection
`(c).’ Id.”). Unlike Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9
`at 2 (PTAB Oct. 28, 2020) (precedential) (“Uniloc”), where the petitioner
`had filed a prior petition before filing a joinder petition, Petitioner Sony here
`has not filed a prior petition challenging the ’941 patent.
`In light of the foregoing, we determine that Factor 1 of General
`Plastic weighs in favor of institution.
`
`Factor 2: “whether at the time of filing of the first petition the
`petitioner knew of the prior art asserted in the second petition
`or should have known of it”
`Patent Owner argues that “Sony knew or should have known long ago
`about the art” because the “public record from Ancora v. Apple makes clear
`that the Hellman and Chou references were publicly available and were
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`likely known when Sony served its invalidity contentions.” Opp. 13−14;
`Sur-reply 2−3.
`Patent Owner’s argument is unavailing. It is irrelevant that Petitioner
`Sony knew of the prior art asserted in this proceeding when Petitioner Sony
`served its invalidity contentions. This factor is based on whether the
`petitioner knew of the prior art asserted in the second petition at the time of
`filing of the first petition. General Plastic, Paper 19 at 16.
`Patent Owner improperly presumes the instant Petition is Petitioner
`Sony’s second petition challenging the ’941 patent. As discussed above, the
`instant Petition is Petitioner Sony’s first petition challenging the ’941 patent,
`not the second. Patent Owner admits that Petitioner Sony did not previously
`file a petition directed to the ’941 patent. Opp. 13. Unlike Valve, Petitioner
`Sony does not have a significant relationship with other prior petitioners
`challenging the same patent. Therefore, this case is distinguished on its facts
`from those facts decisive in General Plastic and Valve. See Netflix, Inc. v.
`Broadcom Corp., IPR2020-01423, Paper 7 at 5−6 (PTAB Mar. 11, 2021)
`(a prior petition filed by an unrelated petitioner is not a basis for denial of
`institution).
`In light of the foregoing, we find that Factor 2 of General Plastic
`weighs strongly in favor of institution.
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`Factor 3: “whether at the time of filing of the second petition
`the petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision
`on whether to institute review of the first petition”
`Patent Owner argues that this factor weighs against institution because
`Petitioner “Sony has benefitted from petitions and corresponding responses
`filed in prior proceedings.” Opp. 14; Sur-reply 2.
`Patent Owner’s argument is unavailing. This factor is based on
`whether the petitioner already received the patent owner’s preliminary
`response or the decision on institution to the first petition at the time of filing
`of the second petition. General Plastic, Paper 19 at 16. As discussed above,
`this instant Petition is Petitioner Sony’s first petition challenging the ’941
`patent, and Petitioner Sony has not filed a second petition challenging the
`same patent. Unlike Valve, Petitioner Sony does not have a significant
`relationship with other petitioners that filed prior petitions challenging the
`’941 patent. Patent Owner improperly presumes that the instant Petition is
`Petitioner Sony’s second petition challenging the ’941 patent. Patent Owner
`also improperly presumes that the prior petitions filed by other petitioners
`are Petitioner Sony’s first petition.
`In light of the foregoing, we find that Factor 3 of General Plastic
`weighs strongly in favor of institution.
`
`Factor 4: “the length of time that elapsed between the time the
`petitioner learned of the prior art asserted in the second
`petition and the filing of the second petition”
`Patent Owner argues that this factor weighs against institution.
`Opp. 14−15. According to Patent Owner, Petitioner Sony was first served
`with a complaint alleging infringement of the ’941 patent on September 11,
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`2019, more than 18 months before filing this Petition. Id. Patent Owner
`avers that the asserted prior art, Hellman and Chou, were available and
`known to accused infringers of the ’941 patent as early as August 2015. Id.
`(citing Ex. 2004 (Apple’s Invalidity Contentions)); Sur-reply 2−3.
`Again, Patent Owner improperly presumes that the instant Petition is
`Petitioner Sony’s second petition challenging the ’941 patent. This factor is
`based on the elapsed time between the time of the petitioner learned of the
`prior art asserted in the second petition and the filing of the second petition.
`As discussed above, this instant Petition is Petitioner Sony’s first petition
`challenging the ’941 patent, and there is no filing of a second petition
`challenging the same patent by Petitioner Sony. Unlike Valve, Petitioner
`Sony does not have a significant relationship with the other petitioners.
`In light of the foregoing, we find that Factor 4 of General Plastic
`weighs strongly in favor of institution.
`
`Factor 5: “whether the petitioner provides adequate
`explanation for the time elapsed between filings of multiple
`petitions directed to the same claims of the same patent”
`Patent Owner argues that this factor is neutral because the instant
`Petition is time barred. Opp. 15; Sur-reply 2. That argument is unavailing.
`As discussed above, the one-year statutory time period under § 315(b) does
`not apply to this proceeding because the Petition is accompanied by a
`request for joinder and joinder is granted. See 35 U.S.C. § 315(b); 37 C.F.R.
`§ 42.122(b); Facebook, 973 F.3d at 1333. Unlike Uniloc where the
`petitioner had filed a prior petition before filing a joinder petition, Petitioner
`Sony here did not file a prior petition challenging the ’941 patent. Uniloc,
`
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`Paper 9 at 2. In light of the foregoing, we determine that Factor 5 of
`General Plastic weighs strongly in favor of institution.
`
`Factor 6: “the finite resources of the Board”
`Patent Owner argues that the resources spent by the Board on the
`Petition would duplicate the district court’s efforts because the court’s trial
`in the Sony case is set to occur beginning October 17, 2022. Opp. 15−16
`(citing Ex. 2001 at 25). Patent Owner also contends that the Board “will
`have to address the contrasting positions Dr. Zadok (Sony’s expert) is
`attempting to take to support Sony’s joinder motion.” Sur-reply 3.
`We find Factor 6 of General Plastic weighs against exercising
`discretion to deny the Petition. Petitioner Sony filed a Motion for Joinder,
`seeking to join as a party to IPR2020-01609, the only prior petition that has
`been instituted. Other joinder petitions in IPR2021-00570, IPR2021-00581,
`and IPR2021-00583 also seek to join with IPR2020-01609. Other prior
`petitions in CBM2016-00023, CBM2017-00054, and IPR2020-01184 have
`been denied institution. The Board’s finite resources would not be strained
`to maintain only one proceeding challenging the ’941 patent. And we have
`addressed Patent Owner’s argument regarding the allegedly inconsistent
`testimonial evidence below. Moreover, unlike Uniloc where the petitioner
`had filed a prior petition before filing a joinder petition, Petitioner Sony here
`has not filed a prior petition challenging the ’941 patent.
`In addition, we instituted the trial in IPR2020-01609 on February 16,
`2021, and a Final Written Decision is currently due on February 16, 2022,
`more than eight months before the parallel district court trial begins.
`
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`Resolving the validity issue of the challenged claims of the ’941 patent in
`IPR2020-01609 would simplify the issues in the parallel district court trial.
`In light of the foregoing, we determine that Factor 6 of General
`Plastic weighs in favor of institution.
`
`Factor 7: “the requirement under 35 U.S.C. § 316(a)(11) to
`issue a final determination not later than 1 year after the date
`on which the Director notices institution of review”
`Patent Owner argues that this factor weighs against institution because
`“the only way to conduct a trial in this proceeding is to delay the Original
`Proceeding by at least two months and likely more.” Opp. 16; Sur-reply 3.
`As discussed above, Petitioner Sony filed a Motion for Joinder under
`§ 315(c), seeking to join as a party to IPR2020-01609. The one-year
`statutory requirement under § 316(a)(11) to issue a final determination may
`be adjusted in the case of joinder under § 315(c), as here. 35 U.S.C.
`§ 316(a)(11). As such, we determine that Factor 7 of General Plastic
`weighs in favor of institution.
`
`Conclusion on the General Plastic Factors
`As discussed above, all of the General Plastic factors weigh strongly
`in favor, or in favor, of institution. Based on the particular facts of this
`proceeding, we conclude that the General Plastic factors do not weigh in
`favor of exercising discretion to deny institution.
`
`B. Fintiv Factors
`In this proceeding, Patent Owner also argues that each of the factors
`identified in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB
`Mar. 20, 2020) (precedential) (“Fintiv”), weighs in favor of denying
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`institution. Opp. 16−22. For the reasons set forth below, we decline to
`exercise our discretion to deny institution under the Fintiv factors.
`
`In Fintiv, the Board ordered supplemental briefing on a nonexclusive
`list of factors for consideration in analyzing whether the circumstances of a
`parallel district court action are a basis for discretionary denial of trial
`institution under NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752,
`Paper 8 (PTAB Sept. 12, 2018) (precedential). 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;
`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. Here, we consider these Fintiv factors to determine whether we
`should exercise discretion to deny institution. 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. Id. at 6.
`
`Factor 1: whether the court granted a stay or evidence exists
`that one may be granted if a proceeding is instituted
`Patent Owner argues that this factor is neutral because no stay has
`been requested in the district court proceeding. Opp. 18; Sur-reply 3.
`17
`
`
`
`
`
`IPR2021-00663
`Patent 6,411,941 B1
`
`Petitioner Sony counters that the parallel district court proceeding is in an
`early stage such that there is a good chance a stay would be granted.
`Reply 5−6 (citing Ex. 2001 (Scheduling Order), 26−27). On the record
`before us, neither party has produced evidence that a stay has been requested
`or that the district court has considered a stay in the parallel litigation.
`Accordingly, we find that Factor 1 of Fintiv is neutral.
`
`Factor 2: proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision
`It is undisputed that the parallel district court trial will not occur until
`October 2022. Opp. 5. Nevertheless, Patent Owner argues that this factor
`weighs against institution because “the majority of the Sony’s validity
`arguments will happen in the district court litigation before a final written
`decision in this proceeding.” Opp. 18−19; Sur-reply 3−4. Petitioner Sony
`counters that the parallel district court trial is not scheduled until October 17,
`2022, and a final decision in this IPR proceeding would occur well before
`any trial. Reply 6. According to the Scheduling Order of the parallel
`litigation, the district court trial is scheduled to begin on October 17, 2022,
`which is about eight months after a Final Written Decision would be due on
`February 16, 2022 in the joined proceeding, IPR2020-01609. Ex. 2001, 27.
`Even assuming a modest schedule adjustment is needed to accommodate
`joinder, we do not foresee an adjustment more than eight months. Most
`likely, our Final Written Decision in the joined IPR proceeding will be
`entered before the district court trial begins on October 17, 2022, which will
`simplify or fully resolve the overlapping invalidity issues for the district
`court trial. Therefore, we find that Factor 2 of Fintiv weighs in favor of
`institution.
`
`18
`
`
`
`
`
`IPR2021-00663
`Patent 6,411,941 B1
`
`
`Factor 3: investment in the parallel proceeding by the court
`and the parties
`Patent Owner argues that the claim construction in the parallel district
`court proceeding will be fully briefed before a final decision in this IPR
`proceeding, and that the claim construction ruling will be issued before our
`issuance of an institution decision in this IPR proceeding. Opp. 19−20;
`Sur-reply 3−4. Petitioner Sony counters that the parallel district court
`proceeding is in an early stage in that the Markman hearing is four months
`away, no depositions have been noticed, fact discovery closes in October
`2021, and expert discovery closes April 1, 2022. Reply 6−7 (citing
`Ex. 2001).
`Based on the present record, we are persuaded by Petitioner Sony’s
`showing that the district court and the parties have not invested substantially
`in the merits of the invalidity positions. There is no indication in the record
`that the parties have completed significant discovery on the merits. We
`agree with Petitioner Sony that the district court proceeding remains at the
`very early stages and a significant portion of work still remains to be done in
`the district court proceeding—e.g., filing joint claim construction brief
`(June 29, 2021), Markman hearing (August 10, 2021), the completion of fact
`discovery (October 31, 2021), opening expert reports (December 21, 2021),
`expert discovery (April 1, 2022), and dispositive motion deadline (May 20,
`2022). Ex. 2001, 26−27. Therefore, weighing the facts in this particular
`case, including the time invested by the parties and the district court in the
`parallel litigation, and the extent to which the investment in the district court
`proceeding relates to issues of patent validity, we find that Factor 3 of Fintiv
`weighs in favor of institution.
`
`
`
`19
`
`
`
`IPR2021-00663
`Patent 6,411,941 B1
`
`
`Factor 4: overlap between issues raised in the petition and in
`the parallel proceeding
`Patent Owner argues that Petitioner Sony has “asserted grounds of
`invalidity based on Hellman in combination with Chou—just like its petition
`here.” Opp. 20 (citing Ex. 2002 (Sony’s Invalidity Contentions); Ex. 2003
`(Appendices A−E to Sony’s Invalidity Contentions), 14−15). Patent Owner
`also contends that Petitioner Sony has not entered any stipulation to mitigate
`the overlap between the Petition and the parallel district court proceeding.
`Id. at 20−21. Petitioner Sony counters that it asserted invalidity based on
`numerous additional, non-overlapping references in the parallel district court
`proceeding. Reply 7.
`As discussed above, the district court trial will begin about eight
`months after the due date for the Final Written Decision in the joined
`proceeding. Ex. 2001, 27. Most likely, we will address the overlapping
`validity issues prior to the district court trial, and our Final Written Decision
`will simplify or fully resolve the issues for the district court trial. See, e.g.,
`GAF Materials LLC v. Kirsch Research and Dev., LLC, IPR2021-00192,
`Paper 14 at 14−15 (PTAB May 25, 2021) (“[I]f the Board will address the
`overlapping validity issues prior to the district court reaching them at trial,
`the Board’s final written decision will simplify or fully resolve the issues for
`trial in the litigation.”); see also MED-EL Elektromedizinische Geraete
`GmbH v. Sonova AG, IPR2020-00176, Paper 13 at 15 (PTAB June 3, 2020)
`(“As to the fourth factor, the parties do not dispute that overlap exists
`between the invalidity issues in this case and in the district court. This
`overlap may inure to the district
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