UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners,
`
`v.
`
`NANOCO TECHNOLOGIES LTD.,
`Patent Owner.
`
`Case No. IPR2021-00186
`U.S. Patent No. 8,524,365
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners,
`
`v.
`
`NANOCO TECHNOLOGIES LTD.,
`Patent Owner.
`
`Case No. IPR2021-00186
`U.S. Patent No. 8,524,365
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`Case No. IPR2021-00186
`U.S. Patent No. 8,524,365
`
`3.
`
`4.
`
`5.
`
`6.
`
`I.
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION AND SUMMARY OF ARGUMENT .............................. 1
`THE BOARD SHOULD DENY INSTITUTION UNDER 35 U.S.C. §
`314(a) ............................................................................................................... 4
`A.
`All of the factors considered under Fintiv support a
`discretionary denial in order to promote the most efficient and
`fair adjudication of the parties’ dispute. ................................................ 6
`1.
`The district court denied Petitioner’s motion for a stay ............. 6
`2.
`The district court’s trial date will precede the Board’s
`projected statutory deadline for a final written decision
`by approximately seven months.................................................. 7
`The parties have invested significant resources in the
`Parallel Proceeding ................................................................... 10
`There is substantial overlap between the issues raised in
`the petition and in the Parallel Proceeding ............................... 12
`The Petitioner and the Defendant in the Parallel
`Proceeding are the same party .................................................. 14
`Additional circumstances weigh in favor of the Board’s
`exercise of discretion ................................................................ 14
`III. OVERVIEW OF QUANTUM DOTS ........................................................... 15
`IV. OVERVIEW OF NANOPARTICLE SYNTHESIS METHODS ................. 21
`A.
`Nanorods and Nanowires .................................................................... 23
`1.
`The Vapor-Liquid-Solid Method .............................................. 23
`2.
`The Solution-Liquid-Solid Method .......................................... 25
`Quantum Dots ...................................................................................... 27
`1.
`The Solid-State Method ............................................................ 27
`
`B.
`
`i
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`The Hot-Injection Method ........................................................ 28
`2.
`The Heat-Up Method ................................................................ 30
`3.
`The Molecular Cluster-Assisted Method .................................. 32
`4.
`THE CHALLENGED ’365 PATENT ........................................................... 33
`V.
`VI. CLAIM CONSTRUCTION .......................................................................... 35
`A. Molecular Cluster Compound ............................................................. 35
`VII. THE PETITION SHOULD BE DENIED BECAUSE IT DOES NOT
`ESTABLISH THE REQUIRED REASONABLE LIKELIHOOD OF
`SUCCESS OF PROVING CHALLENGED CLAIMS
`UNPATENTABLE ........................................................................................ 37
`A.
`The Proposed Grounds 1-4: Banin ...................................................... 37
`1.
`Banin Does Not Disclose a Molecular Cluster Compound ...... 37
`2.
`Adding Herron to Banin Cannot Render Obvious Any of
`the Challenged ’365 Patent Claims ........................................... 42
`a.
`Banin and Herron (Ground 3) ......................................... 43
`Proposed Ground 5: Zaban in View of Farneth/Yu ............................ 48
`1.
`A Person of Skill in the Art Would Not Combine Zaban’s
`Group III-V Quantum Dot Process with Farneth’s Group
`II-VI Solid-state Intermediate ................................................... 48
`a.
`A Person of Skill in the Art Would Not Swap
`Zaban’s Zinc Acetate for Farneth’s 10-Zinc
`Precursor Because It Would Change the Nature of
`Zaban’s Quantum Dots ................................................... 49
`Petitioner’s purported motivation does not come
`from any of the references .............................................. 52
`Proposed Grounds 6 and 7: Lucey in View of Ahrenkiel ................... 54
`
`B.
`
`b.
`
`C.
`
`ii
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`1.
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`Case No. IPR2021-00186
`U.S. Patent No. 8,524,365
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`2.
`
`Lucey Uses the Hot-Injection Method to make Quantum
`Dots, While Ahrenkiel Uses the SLS Method to Make
`Quantum Rods ........................................................................... 54
`Even Replacing Lucey’s Precursor with Ahrenkiel’s
`Multiple Precursors Would Not Practice the Claims of
`the ’365 Patent Because Both of Ahrenkiel’s Precursors
`Provide the Ions to Be Incorporated into the
`Semiconductor Core .................................................................. 55
`Lucey’s Expressly Teaches Away from Ahrenkiel’s
`Chlorine-Based Precursors ........................................................ 57
`There Is No Motivation to Combine Lucey and
`Ahrenkiel, and No Reasonable Expectation of Success ........... 58
`VIII. CONCLUSION .............................................................................................. 61
`
`3.
`
`4.
`
`iii
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc., v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB March 20, 2020) ...................................passim
`Apple Inc. v. Fintiv,
`IPR2020-00019, Paper 15 (PTAB May 13, 2020) ......................................... 7, 10
`Apple Inc. v. Seven Networks, LLC,
`IPR2020-00235, Paper 10 (PTAB July 28, 2020) ................................................ 8
`In re Am. Acad. of Sci. Tech Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) .......................................................................... 45
`In re Fine,
`837 F.2d 1071 (Fed. Cir. 1988) .......................................................................... 53
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) .......................................................................... 53
`In re NuVasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) .......................................................................... 53
`Kinetic Concepts, Inc. v. Smith Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .......................................................................... 42
`Nanoco Technologies Ltd. v. Samsung Electronics Co., Ltd.,
`No. 2:20-cv-00038 (E.D. Tex.) ......................................................................... 5, 6
`NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8, 20 (PTAB Sept. 12, 2018)................................. 5, 7, 15
`Otsuka Pharmaceutical Co., Ltd. v. Sandoz, Inc.,
`678 F.3d 1280 (Fed. Cir. 2012) .......................................................................... 47
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................... 35
`
`iv
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`
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`U.S. Patent No. 8,524,365
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`Samsung Electronics Co., Ltd. et al v. Red Rock Analytics, LLC,
`IPR2018-00555, Paper 16 (PTAB Aug. 30, 2018) ............................................. 47
`Sand Revolution II, LLC v. Cont’l Intermodal Grp.-Trucking LLC,
`IPR2019-01393, Paper 24 (PTAB June 16, 2020) ............................................... 8
`Sanofi-Synthelabo v. Apotex, Inc.,
`550 F.3d 1075 (Fed. Cir. 2008) .......................................................................... 53
`Snap, Inc. v. SRK Technology LLC,
`IPR2020-00820, Paper 15 (PTAB Oct. 21, 2020) ................................................ 5
`Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-01018, Paper 12 (PTAB Dec. 1, 2020) ........................................... 5, 13
`Statutes
`35 U.S.C. § 314(a) ....................................................................................... 4, 7, 8, 15
`35 U.S.C. § 315 ........................................................................................................ 13
`Other Authorities
`37 CFR § 42.100(b) ................................................................................................. 35
`37 CFR § 42.100(c) .................................................................................................... 7
`37 CFR § 42.24(d) ................................................................................................... 62
`37 CFR § 42.65 ........................................................................................................ 45
`MPEP § 2143.01 ...................................................................................................... 47
`
`v
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`Case No. IPR2021-00186
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`Exhibit
`2001
`2002
`2003
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`TABLE OF EXHIBITS
`
`Description
`Declaration of Michael C. Newman
`Declaration of Thomas H. Wintner
`Declaration of Matthew S. Galica
`Periodic table of the elements, Encyclopaedia Britannica, Inc.,
`available at https://www.britannica.com/science/periodic-table (last
`visited Feb. 18, 2021)
`Samsung Global Newsroom. Quantum Dot Artisan: Dr. Eunjoo Jang,
`Samsung Fellow, November 30, 2017
`ACS Energy Lett. 2020, 5, 1316-1327. “Environmentally Friendly
`InP-Based Quantum Dots for Efficient Wide Color Gamut Displays”
`Wang, F., Dong, A. and Buhro, W.E., Solution–liquid–solid
`synthesis, properties, and applications of one-dimensional colloidal
`semiconductor nanorods and nanowires. Chemical
`Reviews, 116(18):10888-10933 (2016).
`Wang, F., et al., Solution− liquid− solid growth of semiconductor
`nanowires. Inorganic chemistry, 45(19):7511-7521 (2006).
`Madkour, L.H., Synthesis Methods For 2D Nanostructured
`Materials, Nanoparticles (NPs), Nanotubes (NTs) and Nanowires
`(NWs). In Nanoelectronic Materials (pp. 393-456). Springer, Cham.
`(2019)
`Mushonga, P., et al., Indium phosphide-based semiconductor
`nanocrystals and their applications. Journal of Nanomaterials, 1-11
`(2012).
`Luo, H., Understanding and controlling defects in quantum confined
`semiconductor systems, Doctoral dissertation, Kansas State
`University (2016).
`Sinatra, L., et al. Methods of synthesizing monodisperse colloidal
`quantum dots. Material Matters, 12:3-7 (2017)
`Pu, Y., et al., Colloidal synthesis of semiconductor quantum dots
`toward large-scale production: a review. Industrial & Engineering
`Chemistry Research, 57(6):1790-1802 (2018).
`Rao, C. N. R.; Gopalakrishnan, J., Chapter 3: Preparative Strategies
`from New Directions in Solid State Chemistry; Cambridge University
`Press: Cambridge, UK (1986).
`
`vi
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`
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`Case No. IPR2021-00186
`U.S. Patent No. 8,524,365
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`Exhibit
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`2026
`
`Description
`Glossary of Common Wafer Related Terms, BYU Electrical &
`Computer Engineering Integrated Microfabrication Lab, definition of
`degenerate semiconductor, available at
`https://cleanroom.byu.edu/ew_glossary (last visited Feb. 19, 2021)
`October 22, 2006 email between Eunjoo Jang and Nigel Pickett Re:
`Cd free quantum dots
`Weare, W.W., Reed, S.M., Warner, M.G. and Hutchison, J.E.,
`Improved synthesis of small (d core≈ 1.5 nm) phosphine-stabilized
`gold nanoparticles. Journal of the American Chemical
`Society, 122(51):12890-12891 (2000).
`Samsung’s Motion to Stay Pending Inter Partes Review of the
`Asserted Patents in Case 2:20-cv-00038-JRG, filed on November 30,
`2020
`Order denying Samsung’s Motion to Stay Pending Inter Partes
`Review in Case 2:20-cv-00038-JRG, filed on January 8, 2021
`Standing Order Regarding the Novel Coronavirus (Covid-19) for the
`Eastern District of Texas Marshall Division, signed March 3, 2020
`Standing Order Regarding Pretrial Procedures In Civil Cases
`Assigned to Chief District Judge Rodney Gilstrap During the
`Present Covid-19 Pandemic, signed April 20, 2020
`Samsung’s Preliminary Invalidity Contentions and Disclosures
`Pursuant To Patent Rules 3-3 and 3-4 (served November 9, 2020)
`Merriam-Webster Dictionary, online edition. Definition of
`“Halogen”, available at https://www.merriam-
`webster.com/dictionary/halogen (last visited Feb. 23, 2021)
`Illustrated Glossary of Organic Chemistry, UCLA. Illustration of
`Halide, available at
`http://www.chem.ucla.edu/~harding/IGOC/H/halide.html (last
`visitied Feb. 23, 2021)
`Mortvinova, N.E., Vinokurov, A.A., Lebedev, O.I., Kuznetsova,
`T.A., and Dorofeev, S.G., Addition of Zn during the phosphine-based
`synthesis of indium phospide quantum dots:doping and surface
`passivation, Beilstein J Nanotechnol. 2015; 6: 1237-1246.
`Samsung’s Proposed Claim Constructions (served December 11,
`2020)
`
`vii
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`
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`Case No. IPR2021-00186
`U.S. Patent No. 8,524,365
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`Exhibit
`2027
`
`2028
`2029
`
`Description
`He, Z., Yang, Y., Liu, J.W. and Yu, S.H., Emerging tellurium
`nanostructures: controllable synthesis and their
`applications. Chemical Society Reviews, 46(10): 2732-2753 (2017)
`INTENTIONALLY LEFT BLANK
`Makkar, M. and Viswanatha, R., Frontier challenges in doping
`quantum dots: synthesis and characterization. Rsc
`Advances, 8(39):22103-22112 (2018).
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`viii
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`I.
`
`INTRODUCTION AND SUMMARY OF ARGUMENT
`For at least the following independent reasons, Samsung Electronics Co., Ltd.
`
`and Samsung Electronics America, Inc.’s (collectively, “Samsung” or “Petitioner”)
`
`Petition should be denied institution.
`
`First, the Board should deny institution of the Petition in view of its
`
`precedential NHK and Fintiv decisions because Nanoco Technologies Ltd. (“Patent
`
`Owner” or “Nanoco”) and Petitioner are scheduled to try the validity of the
`
`challenged patent in a district court jury trial seven months before the deadline of a
`
`Final Written Decision in this requested inter partes review. All six Fintiv factors
`
`weigh in favor denying institution.
`
`Second, Samsung’s Petition fails to establish the required likelihood that it
`
`will prove that any challenged claim of Nanoco’s U.S. Patent No. 8,524,365 (Ex.
`
`1001) (the “’365 patent”) is unpatentable.
`
`The ’365 patent claims are directed to quantum dots and methods of producing
`
`quantum dots. Quantum dots are man-made semiconductor nanoparticles that can
`
`emit light at very particular wavelengths. Quantum dots were traditionally made of
`
`compounds such as cadmium selenide (CdSe). But cadmium is highly toxic, so there
`
`was a push to create cadmium-free quantum dots out of material such as indium
`
`phosphide (InP). And while it is difficult to make any quantum dot in commercially
`
`viable quantities, these problems are compounded when cadmium is not used. The
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`claims of the ’365 patent are directed toward commercial quantities of quantum dots,
`
`including indium phosphide quantum dots, which are a viable cadmium-free option
`
`as a result.
`
`The claimed nanoparticles and ways of preparing them involve a core
`
`semiconductor material disposed on a molecular cluster compound where the core
`
`material contains elements that are not in the molecular cluster compound. Ex. 1001
`
`at 10:9-13. A molecular cluster compound is a small cluster of 3 or more metal or
`
`nonmetal atoms and their associated ligands of sufficiently well-defined chemical
`
`structure such that all molecules of the cluster compound possess the same relative
`
`molecular mass. Id. at 5:19-25. Thus, for example, molecular clusters are identical
`
`to one another in the same way that one H2O molecule is identical to another H2O.
`
`Id. at 5:25-28.
`
`Petitioner’s proposed Grounds 1-4 rely on Banin as a primary reference.
`
`Banin does not disclose a molecular cluster compound. Banin’s alleged “clusters”
`
`are simply melted gold droplets that have up to a 25% variation in their composition,
`
`and contain impurities. These metal droplets lack the sufficiently well-defined
`
`chemical structure of a molecular cluster compound. See Section VII.A infra.
`
`Moreover, Petitioner’s secondary reference, Herron (Ground 3), discloses bulk metal
`
`intermediates that show no evidence of being able to liquefy (i.e., melt) and function
`
`as a catalyst in Banin’s Solution-Liquid-Solid (“SLS”) method for growing
`
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`nanorods. And Treadway which is added to Banin in Ground 4 for the purposes of
`
`accounting for shells with ternary and quaternary semiconductor materials, does not
`
`remedy Banin’s deficiencies.
`
`Petitioner’s Ground 5 relies on Zaban as a primary reference. While Zaban
`
`makes indium phosphide quantum dots, Petitioner does not even allege that Zaban
`
`uses any “clusters” at all. And the cluster disclosed by the secondary reference,
`
`Farneth, is an intermediate isolated during a solid state reaction for making bulk
`
`metal zinc sulfide (ZnS). This bulk metal zinc sulfide process is very different from
`
`the process for growing indium phosphide quantum dots discussed in Zaban.
`
`Moreover, using Farneth’s cluster in combination with Zaban, would not work.
`
`Zaban very deliberately adds a single zinc atom to each of its quantum dots.
`
`Applying Farneth’s zinc-based clusters would result in up to 10 times the amount of
`
`zinc in Zaban’s quantum dots, fundamentally changing their properties. And Yu, has
`
`little to do with either Farneth or Zaban and thus is a singularly poor choice for
`
`Petitioner’s proposed combination. See Section VII.B infra.
`
`The Petition’s Grounds 6 and 7 are weaker still. These Grounds rely upon
`
`Lucey as a primary reference. Petitioner merely waves its hands at the critical claim
`
`element requiring a “core semiconductor material that comprises one or more
`
`elements not comprised within the molecular cluster compound” as required by all
`
`claims in the ’365 patent. Lucey teaches the exact opposite of this. The alleged
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`“cluster compound” in Lucey is a precursor that contribute atoms to the
`
`semiconductor core. Therefore the “cluster compound” and “core semiconductor”
`
`have the same elements. Same with the Ahrenkiel secondary reference. Both of
`
`Ahrenkiel’s precursors provide indium phosphide to a growing indium phosphide
`
`semiconductor core. That both Lucey and Ahrenkiel provide exactly the same
`
`elements comprised in the core, not different ones. What’s more, Lucey actually
`
`teaches away from Ahrenkiel which uses precursors containing chlorine atoms in
`
`them—expressly what Lucey states should not be used in a precursor. See Section
`
`VII.C infra.
`
`Because Petitioner’s grounds fail to disclose critical claim elements, and there
`
`is no reason to combine Banin with Herron or Treadway, Zaban with Farneth/Yu or
`
`Lucey with Ahrenkiel/Treadway other than Petitioner’s improper hindsight effort to
`
`assemble portions of divergent references to create something that might
`
`approximate the invention of the ’365 patent, there is no reasonable likelihood of
`
`success that Petitioner will prove any of the challenged claims are unpatentable, and
`
`the Board should thus deny institution.
`
`II.
`
`THE BOARD SHOULD DENY INSTITUTION UNDER 35 U.S.C. §
`314(a)
`The ’365 patent is owned by Nanoco, a leading pioneer in the development of
`
`nanomaterials and quantum dots for use in TV displays. Nanoco sued Petitioner for
`
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`infringement of the ’365 patent in the District Court for the Eastern District of Texas,
`
`captioned Nanoco Technologies Ltd. v. Samsung Electronics Co., Ltd., No. 2:20-cv-
`
`00038 (E.D. Tex.), filed February 14, 2020 (“Parallel Proceeding”). Petition at 66.
`
`In that Parallel Proceeding, Petitioner has raised a plethora of invalidity defenses,
`
`including all of the ones presented in the Petition. Ex. 2022 at 184-199. As Petitioner
`
`concedes, the district court has scheduled a trial to begin in October 2021, more than
`
`seven months before any final written decision deadline will become due in the
`
`requested IPR. Petition at 62. In light of the overlapping invalidity issues presented,
`
`as well as the resources required by both parties in the Parallel Proceeding, a
`
`discretionary denial of the Petition under the Board’s controlling precedent is
`
`appropriate. See, e.g., Apple Inc., v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB
`
`Mar. 20, 2020) (precedential) (“Fintiv”); NHK Spring Co., Ltd. v. Intri-Plex Techs.,
`
`Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018).1
`
`1 See also Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01018, Paper 12 (PTAB
`
`Dec. 1, 2020) (precedential); Snap, Inc. v. SRK Technology LLC, IPR2020-00820,
`
`Paper 15 (PTAB Oct. 21, 2020) (precedential).
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`A.
`
`All of the factors considered under Fintiv support a discretionary
`denial in order to promote the most efficient and fair adjudication
`of the parties’ dispute.
`1.
`The district court denied Petitioner’s motion for a stay
`The first factor favors denying the Petition in light of the earlier-scheduled
`
`district court trial and the district court’s denial of a motion to stay. As noted in
`
`Patent Owner’s Mandatory Notice, both Petitioner and the Patent Owner are
`
`involved in the Parallel Proceeding, filed over a year ago, involving the same patent:
`
`Nanoco Technologies Ltd. v. Samsung Electronics Co., Ltd., No. 2:20-cv-00038
`
`(E.D. Tex.). See Petition at 71. Petitioner discusses Fintiv factor 1 by contending
`
`that the Board “finding the Challenged Claim unpatentable will relieve the district
`
`court of the need to continue with the District Court case,” and that Petitioner would
`
`move to stay the district court proceeding to further promote “simplification.” Id. at
`
`67. Petitioner brought a motion to stay and similarly argued to the district court that
`
`“[a] stay would save precious judicial and party resources.” Ex. 2018 at 6.
`
`Petitioner’s arguments about efficiency and simplification are greatly
`
`diminished by the unnecessary duplication and overlap between the grounds
`
`presented in the Petition and the all-inclusive grounds in the invalidity contentions
`
`served in the Parallel Proceeding. See Section II.A.4, infra (discussing the fourth
`
`Fintiv factor). Moreover, since the district court promptly denied Petitioner’s motion
`
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`for a stay, this factor weighs in favor of the Board exercising discretion to deny the
`
`Petition. Ex. 2019 at 3.
`
`2.
`
`The district court’s trial date will precede the Board’s
`projected statutory deadline for a final written decision by
`approximately seven months
`Factor two weighs in favor of denying institution, and Petitioner does not
`
`argue otherwise. Petition at 68 (“[T]his factor is neutral or weighs at most only
`
`slightly in favor of PO.”) (emphasis added). Indeed, as Petitioner acknowledges, the
`
`district court has scheduled jury selection for October 4, 2021. Petition at 67; Ex.
`
`1018. This is more than seven months earlier than the projected statutory deadline
`
`for a final written decision of the requested IPR, which would issue sometime in
`
`May 2022. See Ex. 1018; IPR2021-00186 at Paper 4; 35 U.S.C. § 314(a); 37 CFR §
`
`42.100(c).
`
`This factor is nowhere close to being “neutral.” The circumstances here are
`
`even more compelling than those in Fintiv, where the trial was scheduled to begin
`
`only two months before the final written decision was due, or those of NHK, where
`
`the Board determined that an inter partes review that would not conclude until
`
`almost six months after a district court trial “would be an inefficient use of Board
`
`resources.” See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 13 (PTAB
`
`May 13, 2020); NHK, IPR2018-00752, Paper 8 at 20. The circumstances of this
`
`proceeding are also the exact opposite of what Fintiv identified as those in which
`
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`“the Board may be less likely to deny institution under 35 U.S.C. § 314(a) based on
`
`district court trial timing,” i.e., where “the district court has set a date after the
`
`Board’s deadline to issue a final written decision.” Fintiv at 3 (emphasis in original).
`
`Despite acknowledging that this factor is not favorable to them, Petitioner
`
`attempts to cast doubt on the anticipated trial date due to the Covid-19 pandemic.
`
`While short-citing to non-precedential Board institution decisions, Petitioner
`
`represents that the Board has recognized that Fintiv factor 2 is diminished by
`
`uncertainties due to the ongoing pandemic. Petition at 67-68 (citing Apple Inc. v.
`
`Seven Networks, LLC, IPR2020-00235, Paper 10 at 8-9 (PTAB July 28, 2020) and
`
`Sand Revolution II, LLC v. Cont’l Intermodal Grp.-Trucking LLC, IPR2019-01393,
`
`Paper 24 at 9-10 (PTAB June 16, 2020)). Petitioner’s cited cases are inapposite. In
`
`both, the Board relied heavily on the fact that the parties had previously agreed to
`
`extend scheduled dates, including the trial date. See Sand Revolution, IPR2019-
`
`01393, Paper 24 at 9-10 (relying in particular on “the number of times the parties
`
`have jointly moved for and the district court agreed to extend the scheduling order
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`dates.”); see also Apple, IPR2020-00235, Paper 10 at 9 (noting the parties’
`
`agreements to move the trial date while determining that Fintiv factor 2 still weighs
`
`in favor of Patent Owner).
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`Here, there have been no extensions of the trial schedule in the Parallel
`
`Proceeding, nor has Judge Gilstrap indicated that he has any intention of moving the
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`trial date until after the deadline for a final written decision. In addition to rejecting
`
`Petitioner’s motion to stay in the Parallel Proceeding, Judge Gilstrap issued a
`
`standing order on March 3, 2020 that counsels the parties to come together to
`
`minimize the impact of any potential issues related to Covid-19, including exploring
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`any “appropriate means to conduct the hearing, trial, or deposition,” such as by
`
`videoconference. Ex. 2020; see also Ex. 2021 (Standing Order Regarding Pretrial
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`Procedures). Notably, in Google LLC, Samsung Electronics Co., Ltd., and Samsung
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`Electronics America, Inc. v. AGIS Software Development LLC, which also involved
`
`a parallel proceeding before Judge Gilstrap, the petitioners similarly argued that the
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`trial date was uncertain, but the Board rejected the argument:
`
`On the record before us at this time, the only persuasive facts that we
`have regarding the proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision is an Order by
`the District Court that sets trial for April 5, 2021, which will require
`“good cause” to be changed, and our projected statutory deadline,
`which would be toward the end of November 2021. While we
`appreciate that the trial date is susceptible to change if and when the
`District Court determines good cause exists to do so, we decline to
`speculate whether such a contingency will occur. Instead, we must base
`our evaluation on the existing facts supported by the evidence of record.
`This factor, therefore, significantly favors the exercise of discretionary
`denial.
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`IPR2020-00870, Paper 16 at 11 (PTAB Nov. 25, 2020) (denying institution)
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`(emphasis in original).2
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`The outcome should be the same here. The seven month gap between the start
`
`of trial and a final written decision from the Board should control in the absence of
`
`any evidence demonstrating that the trial will be postponed. See Apple, IPR2020-
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`00019, Paper 15 at 13 (“We generally take courts’ trial schedules at face value absent
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`some strong evidence to the contrary.”) (emphasis added). Fintiv factor 3 weighs in
`
`favor of the Board exercising its discretion to deny the Petition.
`
`3.
`
`The parties have invested significant resources in the
`Parallel Proceeding
`The Parallel Proceeding is already well underway. The parties began
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`producing documents and serving their infringement and invalidity contentions3 last
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`year. Ex. 1018. The parties have already substantially completed discovery. Id. Well
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`before the Board decides whether or not to institute, the parties will have filed and
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`2 The Board offered the same analysis while denying institution of the other IPR
`
`petitions brought by the same petitioners in IPR2020-00871, Paper 16 at 11 (PTAB
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`Nov. 25, 2020), IPR2020-00872, Paper 16 at 9-10 (PTAB Nov. 25, 2020), and
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`IPR2020-00873, Paper 16 at 9-10 (PTAB Nov. 25, 2020).
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`3
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`exchanged claim construction briefs and conducted the Markman hearing, which is
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`scheduled for March 26, 2021. Id. Moreover, by the time the Board issues its
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`decision on whether to institute the requested IPR, the parties will have served initial
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`expert exports, fact discovery will have closed, and dispositive motions will be a
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`month out. Id. This will require immense time and effort for both sides. Petitioner’s
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`argument that “[t]he parties and district court will have invested limited resources in
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`the District Court case” prior to the deadline for the Board’s institution decision,
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`(Petition at 68), simply does not hold water.
`
`Petitioner applauds its purported efforts to file the Petition “promptly,”
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`Petition at 68-69, it was served concurrently with Petitioner’s invalidity contetnions
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`in the Parallel Proceeding. Petitioner’s statement that “Here, Petitioner filed its
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`Petition before serving its invalidity contentions,” is untrue or even if technically
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`true, highly misleading. See Petition at 69. The Petition was filed and served on the
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`same day that Petitioner served its Invalidity Contentions in the Parallel Proceeding.
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`Compare Petition at Certificate of Service with Ex. 2022 at 204 (Certificate of
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`Service). Given how far along the Parallel Proceeding will be by the time of an
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`institution decision and the resources both Parties will have to expend before that
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`time, this factor strongly favors denial.
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`4.
`
`There is substantial overlap between the issues raised in the
`petition and in the Parallel Proceeding
`Factor four also weighs in favor of denying the Petition. Petitioner does not
`
`deny the nearly complete overlap between the invalidity issues raised in the Petition
`
`and in the Parallel Proceeding. Petition at 69. All of the grounds raised in the Petition
`
`are being raised, or are reserved to be raised, in the Parallel Proceeding. Petitioner
`
`notes that it has represented that “if this IPR proceeding is instituted, [Petitioners]
`
`will not pursue invalidity on the same grounds or grounds based on the same primary
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`references in the District Court case.” Petition at 69. But this is an empty promise.
`
`Petitioner’s representation that it will forgo pursuing the proposed grounds,
`
`or grounds based on the same primary references if the Board institutes a trial, is
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`meaningless given that the primary references (Banin, Zabin and Lucey) identified
`
`in the Petition are just two of many references that Petitioner contends, through its
`
`district court invalidity contentions, either anticipate or render obvious the ’365
`
`Patent claims. Ex. 2022 at 184-199. Petitioner’s kitchen-sink approach to invalidity
`
`in the district court demonstrates that Petitioner intends to litigate validity issues in
`
`both forums, no matter what. See, e.g., Google and Samsung, IPR2020-00870, Paper
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`16 at 15-16 (noting that such ambiguously worded “conditional stipulations” that
`
`limit any waiver to the conditional grounds in the petition do not alleviates the
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`concerns of potential inefficiencies and conflicting decisions).
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`Petitioner’s proposal gives up far less than the statutory estoppel to which
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`Petitioner would already be subject after a final written decision. Compare Petition
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`at 69 (representing that Petitioners will not pursue invalidity on the same grounds
`
`or grounds based on the same primary references in the District Court case”) with
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`35 U.S.C. § 315 (barring a Petitioner from asserting in district court proceeding that
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`a claim “is invalid on any ground that the petitioner raised or reasonably could have
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`raised during that inter partes review”); see also Ex. 1022. Petitioner’s carefully
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`worded stipulation also falls far short of the standard created by the precedential
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`Sotera decision, where the Board cited and relied upon a stipulation from the
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`Petitioner that
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