Trials@uspto.gov
`571-272-7822
`
` Paper 11
` Entered: January 5, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`IPR2020-01184
`Patent 6,411,941 B1
`____________
`
`Before THU A. DANG, JONI Y. CHANG, and KEVIN W. CHERRY,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
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`IPR2021-01406
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`571-272-7822
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` Paper 11
` Entered: January 5, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`IPR2020-01184
`Patent 6,411,941 B1
`____________
`
`Before THU A. DANG, JONI Y. CHANG, and KEVIN W. CHERRY,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`IPR2021-01406
`ANCORA EX2016
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`IPR2020-01184
`Patent 6,411,941 B1
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`INTRODUCTION
`I.
`Samsung Electronics Co., Ltd. and Samsung Electronics America,
`Inc. (collectively, “Petitioner”) filed a Petition requesting an inter partes
`review (“IPR”) of claims 1−3 and 6−17 (“the challenged claims”) of
`U.S. Patent No. 6,411,941 B1 (Ex. 1001, “the ’941 patent”). Paper 1
`(“Pet.”), 1. Ancora Technologies, Inc. (“Patent Owner”) filed a Preliminary
`Response (Paper 7, “Prelim. Resp.”). Pursuant to our authorization,
`Petitioner filed a Reply (Paper 8, “Reply”), and Patent Owner filed a
`Sur-reply (Paper 10, “Sur-reply”).
`For the reasons stated below, we exercise our discretion under
`§ 314(a) and deny institution of inter partes review in the instant proceeding.
`
`A. Related Matter
`The parties indicate that the ’941 patent is involved in Ancora Tech.,
`Inc. v. LG Electronics, Inc., No. 1-20-cv-00034-ADA (W.D. Tex.), in which
`Petitioner is a co-defendant. Pet. 1; Paper 4, 2. 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).
`
`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, code (57). According to the ’941 patent, the
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`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.
`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
`
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`(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, claim 1 is independent. Claims 2, 3, and
`6−17 directly or indirectly depend from claim 1. Claim 1 is illustrative:
`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, 6:59–7:4.
`
`1. Prior Art Relied Upon
`Petitioner relies upon the references listed below (Pet. 3−4):
`Exhibit
`No.
`1005
`
`
`
`Reference
`
`Schwartz, US 6,153,835
`
`Hasebe, US 5,935,243
`
`Shipman, US 5,852,736
`
`Date
`issued Nov. 28, 2000,
`filed June 7, 1995
`issued Dec. 22, 1998,
`filed Mar. 28, 1996
`issued Dec. 22, 1998,
`filed Mar. 28, 1996
`
`1007
`
`1008
`
`4
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`Reference
`Yee, “Using Secure
`Coprocessors,” Carnegie-Mellon
`University, CMU-CS-94-149
`(1994).
`
`Date
`
`1994
`
`Exhibit
`No.
`
`1006
`
`2. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 3):
`
`Claims
`
`Basis
`
`References
`
`1−2, 6−17
`
`1−3, 6−15, 17
`
`§ 1031 Schwartz, Yee
`
`§ 103 Hasebe, Shipman
`
`II. ANALYSIS
`A. Discretionary Denial Under 35 U.S.C. § 314(a)
`Institution of an inter partes review is discretionary. Section 314(a)
`of title 35 of the United States Code provides that “[t]he Director may not
`authorize an inter partes review to be instituted unless the Director
`determines that the information presented in the petition . . . and any
`
`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, effective March 16,
`2013. Because the application from which the ’941 patent issued was filed
`before this date, the pre-AIA version of § 103 applies.
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`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” The 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 (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.”).
`
`In this proceeding, Patent Owner argues that we should exercise
`discretion to deny institution under § 314(a) because institution of a trial
`here “would be an inefficient use of Board resources in light of the
`‘advanced state’ of the parallel district court litigation in which Petitioner
`has raised the same invalidity challenges and a verdict will be reached in
`April 2021.” Prelim. Resp. 35. Patent Owner contends 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
`discretionary denial here. Prelim. Resp. 35. Patent Owner avers that this
`Petition also resembles the circumstances of NHK Spring Co. v. Intri-Plex
`Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential).
`Prelim. Resp. 36.
`
`In Fintiv, the Board ordered supplemental briefing on a nonexclusive
`list of factors for consideration in analyzing whether the circumstances of a
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`parallel district court action are a basis for discretionary denial of trial
`institution under NHK. 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 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. Fintiv, Paper 11 at 6.
`
`Factor 1: whether the court granted a stay or evidence exists
`that one may be granted if a proceeding is instituted
`Petitioner states that the U.S. District Court of Western District of
`Texas (“WDTX”) “has not granted a stay” nor “indicated whether it would
`grant a stay if an IPR proceeding is instituted.” Pet. 66. Petitioner argues
`that it “intends to seek a stay if the Board institutes trial.” Id.
`Patent Owner counters that “there is no indication that, even if IPR
`were instituted, a stay would be granted given the advanced stage of the
`case.” Prelim. Resp. 36. Patent Owner indicates that the “trial is scheduled
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`to begin in WDTX on April 19, 2021,” and that “U.S. District Court Judge
`Alan Albright is presiding over the parallel proceeding and has previously
`denied a motion to stay when an IPR was instituted after claim construction
`was fully briefed and shortly before the claim construction hearing.” Id. at
`36−37 (citing MV3 Partners LLC v. Roku Inc., No. 6:18-cv-00308 (W.D.
`TX); Ex. 2005, 53). Patent Owner also contends that the parallel litigation
`“is much further along than the proceeding in MV3 Partners at the time
`Judge Albright denied the motion to stay.” Id. at 37. According to Patent
`Owner, “the Markman hearing occurred in May 2020” and “the Court’s
`Markman Order issued on June 2, 2020.” Id. (citing Ex. 1011 (the District
`Court’s Claim Construction Order)).
`In its Reply, Petitioner argues that “[t]his factor may be neutral
`because Patent Owner . . . points to no specific evidence in this case of how
`the district court will rule on the intended motion.” Reply 1.
`In its Sur-reply, Patent Owner argues that Petitioner’s Reply fails to
`rebut Patent Owner’s evidence that a stay is unlikely even if the inter partes
`review were instituted. Sur-reply 1.
`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. Petitioner’s assertion that it “intends to seek a stay if the
`Board institutes trial” (Pet. 66) is not sufficient evidence that a stay will
`likely be granted. A court determines whether to grant a stay based on the
`facts and circumstances of each specific case. Although Patent Owner cites
`to two cases in which the District Court denied stays (Prelim. Resp. 37;
`Sur-reply 1−2), we decline to infer, based on actions taken in a different case
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`with different facts, how the District Court would decide a stay should one
`be requested by the parties in the parallel related case.
`Therefore, we find that this factor does not weigh for or against
`exercising our discretion to deny institution under § 314(a).
`
`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 trial is scheduled to begin on April 19,
`2021. Pet. 67; Prelim. Resp. 36; Reply 1; Ex. 2001, 2. Nevertheless,
`Petitioner argues that “the Covid-19 pandemic has created substantial
`uncertainty as to the tentative trial date” and that “the Board has found this
`factor to be in favor of not exercising its discretion to institute under
`§ 314(a).” Pet. 67 (citing Sand Revolution II, LLC v. Continental Intermodal
`Group – Trucking LLC, IPR2019-01393, Paper 24 at 9–10 (June 16, 2020)
`(informative)).
`Patent Owner counters that, even though the District Court in the
`parallel litigation has amended its Scheduling Order several times, “it has
`never ordered a change in the final fact or expert discovery deadlines and
`has never indicated any willingness to move the trial date.” Prelim. Resp. 39
`(citing Ex. 2019). Patent Owner argues that the circumstances here are
`different from those in Sand Revolution, where “the Board pointed to the
`district court’s express inclusion of the qualifier ‘or as available’ for each
`calendared trial date as a factor weighing against discretionary denial.” Id.
`Patent Owner contends that “[t]he Petition should also be denied because the
`parallel WDTX trial will occur nine months before a Final Written Decision
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`is due,” and that even if the trial date were to be delayed, e.g., by three
`months, “the trial still would precede a final written decision by six months.”
`Id. at 37−38 (citing Ex. 2001).
`In its Reply, Petitioner advances two main arguments. First,
`Petitioner argues that, “even if the related litigation proceeds on schedule
`and the jury verdict occurs approximately nine months before the [Final
`Written Decision], the related litigation is expected to continue for another
`several months until post-trial motions are briefed and decided.” Reply 1
`(emphasis added).
`Second, Petitioner argues that the Board “has recognized that district
`court trial dates, including in the WDTX, are uncertain given the ongoing
`COVID-19 pandemic.” Id. at 2 (citing Ex. 1038 (The WDTX Tenth
`Supplemental Order Regarding Court Operations under the Exigent
`Circumstances Created by the COVID-19 Pandemic issued on November
`18, 2020 (“WDTX Supplemental Order”)); Ex. 1039 (Forth Standing Order
`Relating to Entry into the United States Courthouse Waco, Texas, issued on
`October 27, 2020, by Judge Albright (“Standing Order Relating to Entry into
`Waco Courthouse”)). As support, Petitioner argues that “Chief Judge
`Gilstrap recently postponed patent trials in the Eastern District of Texas until
`March 2021,” and that “[i]n the WDTX, Judge Albright will not resume
`patent jury trial until mid-January 2021.” Id. (citing Ex. 1040 (“With
`Infections ‘Dangerously Rising,’ East Texas Federal Judge Halts Jury Trials
`Through March 2021”); Ex. 1041 (Order entered in Solas Oled Ltd. v.
`Samsung Display Co., Ltd., 2:19-cv-00152-JRG (E.D. Tex.)); Intri-Plex
`Technologies v. NHK International Corp., 3:17-cv-01097-EMC (N.D. Cal);
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`Exs. 1042, 1043) (emphasis added). Petitioner also avers that “Judge
`Albright has held only one patent jury trial, and that occurred after delays,”
`so that “that trial did not begin until nearly two years after the complaint was
`filed.” Id. (citing Ex. 1045 (setting trial for June 2020, but rescheduling for
`October 5, 2020, due to pandemic and litigants’ concerns)). Petitioner
`argues that “Judge Albright currently has ten patent cases that are currently
`scheduled to go to trial before the trial in the related litigation.” Id. at 3.
`Petitioner further contends that “according to one study, in ‘70% of trial
`dates . . . relied upon by the [Board] to [discretionarily] deny petitions’ in
`view of WDTX litigation, the trial dates were continued after the Board’s
`denial.” Id.
`In its Sur-reply, Patent Owner argues that Petitioner’s “Reply fails to
`rebut [Patent Owner’s] evidence that the scheduled trial date precedes by 9
`months the Board’s projected statutory deadline for a final written decision.”
`Sur-reply 2. Patent Owner also contends that “Petitioner states, generically,
`that COVID-19 is causing delays, without providing any evidence of the
`likely impact on the particular litigation at issue,” and that “Judge Albright
`has not changed the April 2020 trial date.” Id. at 3.
`We agree with Patent Owner, and we are not persuaded by
`Petitioner’s arguments. At the outset, Petitioner’s argument that “the related
`litigation is expected to continue for another several months until post-trial
`motions are briefed and decided” is misplaced. Reply 1 (emphasis added).
`We do not speculate as to the schedule for the post-trial motions. As the
`Board explained in Fintiv, “[i]f the court’s trial date is earlier than the
`projected statutory deadline, the Board generally has weighed this factor in
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`favor of exercising authority to deny institution under NHK.” Fintiv,
`Paper 11 at 9 (emphasis added). Here, the parallel trial in the District Court
`is scheduled to begin on April 19, 2021, more than eight months before a
`Final Written Decision would be due in this IPR proceeding. Pet. 67;
`Prelim. Resp. 36; Ex. 2001, 2. Therefore, this factor weighs in favor of
`exercising our discretion to deny institution under § 314(a).
`Petitioner’s reliance on Sand Revolution also is misplaced. Pet. 67.
`In Sand Revolution, the district court’s trial date was changed several times.
`IPR2019-01393, Paper 24 at 8−9 (noting that “the parties have jointly
`moved the district court to extend schedule deadline twice; these motions
`were granted”); id. at 8 n.4 (noting that “it appears that the district court also
`amended its scheduling order at least two times”); IPR2019-01393, Ex. 1012
`(updated trial date of September 28, 2020 (or as available) changed to
`November 9, 2020 (as available)); IPR2019-01393, Ex. 2004 (original trial
`date was April 7, 2020, changed to July 20, 2020 (or as available));
`IPR2019-01393, Ex. 3003 (“Order Amending Scheduling Order” responding
`to a joint motion by the parties). In contrast here, Petitioner does not show
`that the trial date for the parallel litigation has been (or likely will be)
`changed. Indeed, as Patent Owner points out, the District Court “has never
`indicated any willingness to move the trial date” in this case. Prelim. Resp.
`39; Ex. 2019; Ex. 2001, 2. Therefore, Petitioner’s reliance on Sand
`Revolution is misplaced.
`We also are not persuaded by Petitioner’s argument that “the
`Covid-19 pandemic has created substantial uncertainty as to the tentative
`trial date.” Pet. 67; Reply 2−3. Although we acknowledge the possibility of
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`a Covid-19 related delay, we generally take courts’ trial schedules at face
`value absent some strong evidence to the contrary. See Apple Inc. v. Fintiv,
`Inc., IPR2020-00019, Paper 15, 12−13 (PTAB May 13, 2020) (informative)
`(“Fintiv DI”). Moreover, even accounting for the possibility of a Covid-19
`related delay, given the close proximity of the trial date to this Decision and
`the amount of time before our Final Written Decision (i.e., eight and a half
`months), we are unpersuaded that any such delay should materially alter our
`weighing of this factor. As Patent Owner points out (Prelim. Resp. 38−39;
`Sur-reply 2−3), Petitioner fails to provide sufficient evidence to show that
`the trial date has been changed or will be postponed. Exs. 2001, 2019 (the
`Scheduling Order still shows a trial date of April 19, 2021). Judge Albright
`has stated that he “definitely intend[s] to keep this case on track.” Ex. 2002
`(Telephonic Discovery Hearing, July 27, 2020) 39:6−12; see also Ex. 2003
`(Telephonic Discovery Hearing, September 9, 2020) 21:20−22.
`Furthermore, Petitioner’s evidence regarding other cases (e.g., Chief
`Judge Gilstrap’s cases in the Eastern District of Texas or other Judge
`Albright’s cases) does not support Petitioner’s position that the April 19,
`2021, trial date for the parallel litigation will be postponed. Reply 2−3. The
`evidence relied upon by Petitioner shows that the presiding judges in the
`WDTX determine whether to postpone a trial based on the facts and
`circumstances of each specific case. Ex. 1038.
`Notably, the WDTX Supplemental Order states that “[t]he court
`recognizes that not every division within the district is similarly situated”
`because “[t]he Western District of Texas is geographically large” and “[t]he
`public health situation related to the novel coronavirus in each division may
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`differ.” Id. at 2. The WDTX Supplemental Order also states that “judges in
`individual divisions may determine that the conditions in their communities
`safely allow for an adequate spectrum of jurors and sufficient availability of
`attorneys” so that “courts in the district may opt to conduct jury trials within
`their respective division.” Id. And “[a]ll civil and criminal jury trials
`scheduled to begin on any date from now through December 31, 2020, are
`continued to a date to be reset by each Presiding Judge.”
`Moreover, the Order Transferring Trial Venue in VLSI Tech. LLC, v.
`Intel Corp., 6:19-cv-00254 (W.D. Tex.) (Ex. 1043), relied upon by
`Petitioner, shows that the courthouse in Waco “is currently open—for the
`scheduled trial in January” and that “the Court ORDERS that if the Austin
`courthouse does not reopen in time for a January trial, the trial for the -0254
`case will be held in Waco.” Ex. 1043, 1; see also Ex. 1039 (Standing Order
`Relating to Entry into Waco Courthouse) (stating that the courthouse in
`Waco “will remain open for business, but access to the building will be
`restricted”).
`Therefore, Petitioner’s evidence regarding other cases does not
`support Petitioner’s position that the April 19, 2021 trial date for the parallel
`litigation will likely be postponed.
`In addition, we are not persuaded by Petitioner’s assertion that
`“according to one study, in ‘70% of trial dates . . . relied upon by the [Board]
`to [discretionarily] deny petitions’ in view of WDTX litigation, the trial
`dates were continued after the Board’s denial.” Reply 3 (citing Ex. 1044
`(An article entitled “District Court Trial Dates Tend to Slip After PTAB
`Discretionary Denials” by Scott McKeown on July 24, 2020)). That study
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`expressly states that “WDTX shows a lower average delay”—namely, an
`average of 23 days. Ex. 1044, 3. Even if we were to take that delay into
`account, this factor would still weigh in favor of exercising our discretion to
`deny institution under § 314(a) because the parallel trial in the District Court
`would begin more than six months before a Final Written Decision would be
`due in this proceeding. See NHK, Paper 8 at 20 (finding that “the advanced
`state of the district court proceeding . . . weighs in favor of denying the
`Petition under § 314(a)” because the district court trial was set to begin six
`months before the IPR proceeding concluded); see also Fintiv, Paper 15 at
`13 (finding that “[b]ecause the currently scheduled District Court trial is
`scheduled to begin two months before our deadline to reach a final decision,
`this factor weighs somewhat in favor of discretionary denial in this case).
`For the forgoing reasons, we are not persuaded by Petitioner’s
`argument that “the Covid-19 pandemic has created substantial uncertainty as
`to the tentative trial date.” Pet. 67; Reply 2−3.
`Because the currently scheduled District Court trial is scheduled to
`begin eight and a half months before our deadline to reach a final decision,
`we find that this factor weighs in favor of exercising our discretion to deny
`institution under § 314(a).
`
`Factor 3: investment in the parallel proceeding by the court
`and the parties
`In its Petition, Petitioner argues that “[a]side from the Court’s Claim
`Construction Order, much of the Court’s investment relates to matters
`untethered to validity.” Pet. 70. Petitioner contends that “[u]nder similar
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`circumstances, the Board found that this factor at most weighed marginally
`in favor of denial of institution or was possibly neutral.” Id. (citing Sand
`Revolution, Paper 24 at 10−11).
`In its Preliminary Response, Patent Owner counters that “the parties
`and the WDTX court have invested heavily in the district court litigation—to
`the point that claim construction, all fact discovery, and all expert work will
`be complete before an institution decision is even issued.” Prelim.
`Resp. 40−42 (citing Ex. 2018 (District Court’s Claim Construction Order);
`Ex. 2001, 1 (First Amended Scheduling Order, showing “Close of Fact
`Discovery” was due on November 13, 2020, and “Opening Expert Reports”
`were due on November 20, 2020)).
`In its Reply, Petitioner argues that its delay in filing the Petition “was
`reasonable and efficient in avoiding the submission of conflicting claim
`construction positions to the Board, and also reduces the likelihood of
`inconsistent claim construction findings.” Reply 3.
`In its Sur-reply, Patent Owner avers that “Petitioner admits
`intentionally waiting to file its Petition until after the Markman ruling” and
`that “Petitioner essentially admits strategically using the parallel litigation
`for purposes its future IPR petition.” Sur-reply 4. Patent Owner also argues
`that, because “Petitioner served four separate expert reports relating to
`invalidity on November 20, 2020” and Patent Owner’s “rebuttals to those
`reports are due December 18, 2020,” Patent Owner “and its experts will
`have spent considerable time and resources analyzing and responding to
`Petitioner’s Invalidity Contentions and invalidity reports long before the
`Board’s deadline to issue its institution decision.” Id.
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`We are not persuaded by Petitioner’s arguments. Petitioner’s reliance
`on Sand Revolution is misplaced. In Sand Revolution, the Board found that
`(1) “the district court’s two-page Markman Order . . . does not demonstrate
`the same high level of investment of time resources as the detailed Markman
`Order in Fintiv”; (2) fact discovery was still ongoing; and (3) expert reports
`were not yet due. Sand Revolution, Paper 24 at 10−11 (citing Fintiv DI
`(denied institution because Fintiv factors weighed in favor of exercising
`discretion to deny institution)). In contrast here, after the parties each filed
`three briefs addressing claim construction issues in the District Court, i.e.,
`opening, responsive, and reply briefs, the District Court issued a Final Claim
`Construction Order and a detailed Supplemental Claim Construction Order.
`Exs. 1011, 1019, 2018. In addition, the District Court’s Scheduling Order
`shows the following deadlines have passed: Final Infringement and
`Invalidity Contentions, amendment to pleadings, fact discovery, opening
`expert reports, and rebuttal expert reports. Exs. 1019, 2001, 2019.
`Therefore, we find that the parties have invested significant resources in the
`parallel litigation, with some of the work relevant to patent validity,
`including claim construction, fact discovery, opening expert reports, and
`rebuttal expert reports.
`Petitioner’s timing in filing the Petition is also relevant to this factor.
`If the petitioner, “faced with the prospect of a looming trial date, waits until
`the district court trial has progressed significantly before filing a petition,”
`that decision “may impose unfair costs to a patent owner.” Fintiv, Paper 11
`at 11. On the other hand, “[i]f the evidence shows that the petitioner filed
`the petition expeditiously, such as promptly after becoming aware of the
`17
`
`IPR2021-01406
`ANCORA EX2016
`
`
`
`IPR2020-01184
`Patent 6,411,941 B1
`
`claims being asserted, this fact has weighed against exercising the authority
`to deny institution.” Id.
`Here, the record does not show that Petitioner acted expeditiously in
`filing this Petition. As Patent Owner points out, “Petitioner served its
`preliminary invalidity contentions, which included the references in the
`Petition, in early February 2020, yet chose to wait until the very last day of
`the one-year period in late June 2020 to file the Petition.” Prelim. Resp.
`42−43. Petitioner also admits waiting until after the Markman ruling to file
`its Petition and using the District Court’s claim construction determination
`for purposes of its Petition. Sur-reply 4.
`Therefore, weighing the facts in this particular case, including the
`time invested by the parties and the District Court in the parallel litigation,
`the extent to which the investment in the District Court proceeding relates to
`issues of patent validity, and the timing of the filing of the Petition, we find
`that this factor weighs in favor of exercising our discretion to deny
`institution under § 314(a).
`
`Factor 4: overlap between issues raised in the petition and in
`the parallel proceeding
`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.
`In this regard, Petitioner argues that “[t]here will be no overlap
`between issues raised in this Petition and the related litigation” because
`
`18
`
`IPR2021-01406
`ANCORA EX2016
`
`
`
`IPR2020-01184
`Patent 6,411,941 B1
`
`“Petitioner stipulates that, should an IPR be instituted, the art used in the
`grounds in this Petition will not be raised during trial in the related
`litigation,” including Schwartz, Yee, Hasebe, Shipman, and the DMI
`specification. Pet. 70−71 & 71 n.9; Reply 4. Petitioner also argues that “the
`Petition asserts invalidity of claims 15 and 17, which are not being asserted
`in the litigation (and whose validity therefore cannot be challenged in the
`litigation).” Pet. 71. In its Reply, Petitioner further argues that “Petitioner
`challenges claims 3, 8, and 13−17, which are not asserted in the related
`litigation.” Reply 4.
`Patent Owner counters that Petitioner’s stipulation would not bind
`Petitioner’s co-defendants in the related litigation and Petitioner would
`benefit from its co-defendants’ continued pursuit of invalidity on these
`grounds. Prelim. Resp. 43; Sur-reply 5. Patent Owner further avers that
`“Petitioner does not argue that the non-overlapping claims differ
`significantly in some way or that it would be harmed if institution of the
`non-overlapping claims is denied.” Prelim. Resp. 44; Sur-reply 5.
`We agree with Patent Owner that there is a significant overlap
`between the issues raised in the Petition and in the related parallel
`proceeding. Prelim. Resp. 43. And we are not persuaded by Petitioner’s
`arguments.
`At the outset, Petitioner argues in its Petition (Pet. 71) that claims 15
`and 17 are not asserted in the related litigation, and then Petitioner argues in
`its Reply (Reply 4) that claims 3, 8, and 13−17 are not asserted in the related
`litigation. However, Petitioner submits no evidence to support either
`argument. “Attorney argument is not evidence.” Icon Health & Fitness,
`19
`
`IPR2021-01406
`ANCORA EX2016
`
`
`
`IPR2020-01184
`Patent 6,411,941 B1
`
`Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017). It is Petitioner’s
`burden (not the Board’s) to provide documents or other evidence that
`support Petitioner’s arguments. See Ericsson Inc. v. Uniloc 2017, LLC,
`IPR2020-00420, Paper 10, 3 (PTAB Sept. 9, 2020) (Decision Denying
`Petitioner’s Request for Rehearing) (noting that “the Board could not be
`faulted for not searching and reviewing every single document in the related
`litigation”).
`Also, the mere existence of non-overlapping claims does not support
`Petitioner’s assertion that “[t]here will be no overlap between issues raised
`in this Petition and the related litigation.” Pet. 70−71; Reply 4. Rather,
`“[t]he existence of non-overlapping claim challenges will weigh for or
`against exercising discretion to deny institution under NHK depending on
`the similarity of the claims challenged in the petition to those at issue in the
`district court.” Fintiv, Paper 11 at 13 & 13 n.25 (citing Next Caller, Inc. v.
`TRUSTID, Inc., IPR2019-00961, Paper 10 at 14 (PTAB Oct. 16, 2019)
`(denying institution, even though the petitions jointly involve all 52 claims
`of the patent and the district court parallel proceeding involves only 7
`claims, because the claims all are directed to the same subject matter and
`petitioner does not argue that the non-overlapping claims differ significantly
`in some way or argue that it would be harmed if institution of the
`non-overlapping claims is denied)).
`Here, Petitioner challenges the patentability of claims 1−3 and 6−17,
`which are directed to “restricting software operation within a license for use
`with a c
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