UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`Case PGR2020-00052
`U.S. Patent No. 10,335,682
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.207
`
`

`

`ii.
`
`iii.
`
`iv.
`
`I.
`II.
`
`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`The Petition Should Be Denied Under § 324(a). ............................................. 2
`A.
`NHK Spring and Its Progeny. ................................................................ 5
`B. Analysis of the Fintiv Factors Compels Denial. ................................... 8
`i.
`Factor 1: whether the court granted a stay or
`evidence exists that one may be granted if a
`proceeding is instituted ............................................................... 9
`Factor 2: proximity of the court’s trial date to the
`Board’s projected statutory deadline for a final
`written decision ......................................................................... 10
`Factor 3: investment in the parallel proceeding by
`the court and the parties ............................................................ 14
`Factor 4: overlap between issues raised in the
`petition and in the parallel proceeding ...................................... 19
`Factor 5: whether the petitioner and the defendant
`in the parallel proceeding are the same party ........................... 24
`Factor 6: other circumstances that impact the
`Board’s exercise of discretion, including the merits ................ 24
`III. Petitioner Has Not Demonstrated a Reasonable Likelihood of
`Success for the Grounds Advanced in the Petition. ...................................... 28
`A.
`Petitioner’s Proposed Claim Construction of “Template”
`Is Incorrect and Has Been Rejected By the District Court ................. 28
`Petitioner Has Not Demonstrated a Reasonable
`Likelihood of Success for Ground 1 (Patent Eligibility) .................... 30
`Petitioner Has Not Demonstrated a Reasonable
`Likelihood of Success for Grounds 2 and 3
`(Obviousness) ...................................................................................... 32
`
`v.
`
`vi.
`
`B.
`
`C.
`
`

`

`i.
`
`ii.
`
`Petitioner Has Failed to Demonstrate That GSB
`(Ex. 1010) Is a “Printed Publication” That Was
`“Publicly Accessible” Prior to the Critical Date. ...................... 34
`Petitioner’s Alleged Motivation to Combine Is
`Insufficient. ............................................................................... 44
`IV. Conclusion ..................................................................................................... 49
`CERTIFICATE OF WORD COUNT ...................................................................... 50
`CERTIFICATE OF SERVICE ................................................................................ 51
`
`ii
`
`

`

`TABLE OF AUTHORITIES
`
`Cases
`Adobe Sys. Inc. v. Grecia,
`IPR2018-00418, Paper 7 (P.T.A.B. June 21, 2018) .................................... 42, 43
`Adobe Sys. Inc. v. Grecia,
`IPR2018-00418, Paper 9 (P.T.A.B. Sept. 7, 2018).............................................41
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ................................. passim
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 15 (P.T.A.B. May 13, 2020) .......................... 4, 7, 12, 20
`Apple Inc. v. Maxell, Ltd.,
`IPR2020-00203, Paper 12 (P.T.A.B. July 6, 2020) ............................... 11, 13, 27
`Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331 (Fed. Cir. 2016) .................................................................. passim
`Celltrion, LLC v. Biogen, Inc.,
`IPR2017-01230, Paper 10 (P.T.A.B. Oct 12, 2017) .............................. 39, 41, 42
`Cisco Systems, Inc. v. Ramot at Tel Aviv University Ltd.,
`IPR2020-00122, Paper 14 (P.T.A.B. May 15, 2020) .....................................6, 11
`Edwards Lifesciences Corp. v. Evalve, Inc.,
`IPR2019-01479, Paper 7 (P.T.A.B. Feb. 26, 2020) ............................. 5, 8, 11, 22
`E-One, Inc. v. Oshkosh Corp.,
`IPR2019-00161, Paper 16 (P.T.A.B. May 15, 2019) .....................................8, 14
`Ethicon, Inc. v. Bd. of Regents,
`IPR2019-00406, Paper 27 (P.T.A.B. June 10, 2020) .........................................12
`Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017)............................................. 3
`Google LLC v. IPA Techs. Inc.,
`IPR2018-00384, Paper 11 (July 3, 2018) ........................................ 39, 40, 42, 43
`
`iii
`
`

`

`GREE, Inc. v. Supercell Oy,
`No. 2:19-cv-00200 (E.D. Tex. filed May 28, 2019) .......................................4, 24
`GREE, Inc. v. Supercell Oy,
`Nos. 2019-1864, -1960 (Fed. Cir.) .............................................................. 28, 32
`Hulu, LLC v. Sound View Innovations, LLC,
`IPR2018-01039, Paper 29 (P.T.A.B. Dec. 20, 2019) ................................. passim
`In re Hall,
`781 F.2d 897 (Fed. Cir. 1986) ............................................................................36
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ............................................................. 33, 45, 47
`Intel Corp. v. VLSI Tech. LLC,
`IPR2020-00106, Paper 17 (P.T.A.B. May 5, 2020) ................................ 7, 13, 20
`Intel Corp. v. VLSI Tech. LLC,
`IPR2020-00113, Paper 15 (P.T.A.B. May 19, 2020) ........................................... 7
`Intel Corp. v. VLSI Tech. LLC,
`IPR2020-00141, Paper 16 (P.T.A.B. June 4, 2020) ............................................. 7
`Intel Corp. v. VLSI Tech. LLC,
`IPR2020-00142, Paper 16 (P.T.A.B. June 4, 2020) ............................................. 7
`Intel Corp. v. VLSI Tech. LLC,
`IPR2020-00158, Paper 16 (P.T.A.B. May 20, 2020) ........................................... 7
`Kinetic Techs., Inc. v. Skyworks Solutions, Inc.,
`IPR2014-00529, Paper 8 (P.T.A.B. Sept. 23, 2014)...........................................47
`Kingston Tech. Co., Inc. v. Memory Techs., LLC,
`IPR2019-00654, Paper 9 (P.T.A.B. Aug. 13, 2019) .............................. 39, 40, 43
`KSR Int'l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ......................................................................... 33, 44, 45, 46
`Laird Techs. Inc. v. A.K. Stamping Co., Inc.,
`IPR2017-02038, Paper 6 (P.T.A.B. Mar. 14, 2018) ...........................................37
`
`iv
`
`

`

`Maxstick Prods. Ltd. v. Iconex, LLC,
`IPR2019-01542, Paper 11 (P.T.A.B. Mar. 9, 2020) ...........................................30
`Next Caller Inc. v. TrustID, Inc.,
`IPR2019-00961, -00962, Paper 10 (P.T.A.B. Oct. 16, 2019) ........................8, 17
`NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (P.T.A.B. Sept. 12, 2018)................................... passim
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ............................................................................ 5
`Power Integrations, Inc. v. Semiconductor Components Indus., LLC,
`IPR2017-01975, Paper 9 (P.T.A.B. Mar. 12, 2008) .................................... 34, 37
`Realtime Data LLC v. Actian Corporation,
`No. 6:15-CV-463-RWS-JDL, 2016 WL 9340796 (E.D. Tex. Nov.
`29, 2016) .............................................................................................................10
`RetailMeNot, Inc. v. Honey Science Corp.,
`PGR2019-00060, Paper 17 (P.T.A.B. Mar. 10, 2020) .......................................31
`Saint Lawrence Commc’ns LLC v. ZTE Corp.,
`No. 2:15-CV-349-JRG, 2016 WL 7338600 (E.D. Tex. July 15,
`2016) ...................................................................................................................10
`Samsung Elecs. Am., Inc. v. Uniloc 2017 LLC,
`IPR2019-01218, Paper 7 (P.T.A.B. Jan. 7, 2020) ..........................................8, 11
`Samsung Elecs. Co. v. Infobridge Pte. Ltd.,
`929 F.3d 1363 (Fed. Cir. 2019) ..........................................................................36
`Sand Revolution II, LLC v. Continental Intermodal Gr.,
`IPR2019-01393, Paper 18 (P.T.A.B. Apr. 6, 2020) .................................... 26, 27
`Sandoz Inc. v. AbbVie Biotechnology Ltd.,
`IPR2018-00156, Paper 11 (P.T.A.B. June 5, 2018) ...........................................38
`Seabery North America Inc. v. Lincoln Global, Inc.,
`IPR2016-00840, Paper 11 (P.T.A.B. Oct. 6, 2016) ............................................38
`Securus Technologies, Inc. v. Global Tel*Link Corp.,
`701 F. App’x 971 (Fed. Cir. 2017) .............................................................. 45, 46
`
`v
`
`

`

`Shenzhen Zhiyi Technology Co. v. iRobot Corp.,
`IPR2017-02133, Paper 8 (P.T.A.B. Mar. 28, 2018) .................................... 42, 43
`SRI Int’l, Inc. v. Internet Sec. Sys., Inc.,
`511 F.3d 1186 (Fed. Cir. 2008) ..........................................................................36
`Supercell Oy v. GREE, Inc.,
`IPR2020-00215, Paper 10 (P.T.A.B. June 10, 2020) ................................. passim
`Supercell Oy v. GREE, Inc.,
`IPR2020-00310, Paper 13 (P.T.A.B. June 18, 2020) ................................. passim
`Supercell Oy v. GREE, Inc.,
`IPR2020-00513, Paper 11 (P.T.A.B. June 24, 2020) ................................. passim
`Supercell Oy v. GREE, Inc.,
`PGR2018-00008, Paper 42 (P.T.A.B. Jan. 2, 2019) .............................. 28, 29, 31
`Syncro Soft SRL v. Altova GmbH,
`IPR2018-00660, Paper 6 (P.T.A.B. Sept. 5, 2018).............................................38
`Teva Pharmaceuticals USA, Inc., v. Corcept Therapeutics, Inc.,
`PGR2019-00048, Paper 19 (P.T.A.B. Nov. 20, 2019) .....................................3, 4
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) ..........................................................................44
`Vizio, Inc. v. Polaris PowerLED Technologies, LLC,
`IPR2020-00043, Paper 30 (P.T.A.B. May 4, 2020) ................................... passim
`Statutes
`35 U.S.C. § 101 ................................................................................................ passim
`35 U.S.C. § 102 ................................................................................................. 35, 36
`35 U.S.C. § 103 ..................................................................................... 20, 21, 33, 34
`35 U.S.C. § 282(b) ...................................................................................................29
`35 U.S.C. § 314 ........................................................................................................17
`35 U.S.C. § 315(b) ...................................................................................................27
`
`vi
`
`

`

`35 U.S.C. § 321(c) ...................................................................................................18
`35 U.S.C. § 324(a) ........................................................................................... passim
`35 U.S.C. § 325(d) ...................................................................................................31
`35 U.S.C. § 326(a)(11) ...................................................................................... 10, 11
`Rules & Regulations
`37 C.F.R. § 42.100(b) ................................................................................................ 5
`37 C.F.R. § 42.200(b) ..........................................................................................5, 29
`
`vii
`
`

`

`LIST OF EXHIBITS
`
`Exhibit No.
`2001
`
`Description
`Amended Docket Control Order, GREE, Inc. v. Supercell Oy, Civil
`Action No. 2:19-cv-00200, Document 113 (E.D. Tex. May 14,
`2020)
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`Supercell Oy’s Motion for Relief in View of Governmental/Public
`Health Restrictions in Response to COVID-19 Virus Impact,
`GREE, Inc. v. Supercell Oy, Civil Action No. 2:19-cv-00200,
`Document 100 (E.D. Tex. April 23, 2020)
`
`Third Amended Complaint, GREE, Inc. v. Supercell Oy, Civil
`Action No. 2:19-cv-00200, Document 18 (E.D. Tex. July 2, 2019)
`
`Defendant Supercell Oy’s Preliminary Ineligibility Contentions,
`GREE, Inc. v. Supercell Oy, Civil Action No. 2:19-cv-00200 (E.D.
`Tex.), dated November 13, 2019.
`
`Defendant Supercell Oy’s Invalidity Contentions and Disclosures
`Under Local Patent Rules 3-3 and 3-4, GREE, Inc. v. Supercell Oy,
`Civil Action No. 2:19-cv-00200 (E.D. Tex.), dated December 6,
`2019
`
`Exhibit G-3 to Defendant Supercell Oy’s Invalidity Contentions
`and Disclosures Under Local Patent Rules 3-3 and 3-4, GREE, Inc.
`v. Supercell Oy, Civil Action No. 2:19-cv-00200 (E.D. Tex.),
`dated December 6, 2019
`
`Exhibit G-7 to Defendant Supercell Oy’s Invalidity Contentions
`and Disclosures Under Local Patent Rules 3-3 and 3-4, GREE, Inc.
`v. Supercell Oy, Civil Action No. 2:19-cv-00200 (E.D. Tex.),
`dated December 6, 2019
`
`Exhibit G-10 to Defendant Supercell Oy’s Invalidity Contentions
`and Disclosures Under Local Patent Rules 3-3 and 3-4, GREE, Inc.
`v. Supercell Oy, Civil Action No. 2:19-cv-00200 (E.D. Tex.),
`dated December 6, 2019
`
`viii
`
`

`

`Exhibit No.
`2009
`
`Description
`Merriam-Webster’s Collegiate Dictionary, Eleventh Edition
`(2007)
`
`ix
`
`

`

`I.
`
`Introduction
`This Petition should be denied. First, the Board should exercise its discretion
`
`under 35 U.S.C. § 324(a) to deny the Petition because Petitioner raises the same prior
`
`art and arguments in a parallel district court proceeding filed more than one year ago
`
`and scheduled for trial in less than five months. See NHK Spring Co., Ltd. v. Intri-
`
`Plex Techs., Inc., IPR2018-00752, Paper 8, at 19–20 (P.T.A.B. Sept. 12, 2018)
`
`(precedential); accord Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, at 6
`
`(P.T.A.B. Mar. 20, 2020) (precedential). Indeed, the Board recently denied
`
`institution on three different petitions filed by this same Petitioner against this same
`
`Patent Owner in view of nearly identical circumstances. Supercell Oy v. GREE, Inc.,
`
`IPR2020-00215, Paper 10, at 6–19 (P.T.A.B. June 10, 2020); Supercell Oy v. GREE,
`
`Inc., IPR2020-00310, Paper 13, at 6–20 (P.T.A.B. June 18, 2020); Supercell Oy v.
`
`GREE, Inc., IPR2020-00513, Paper 11, at 5–18 (P.T.A.B. June 24, 2020).
`
`Like those cases, here the district court will have addressed all of the issues
`
`raised in the Petition long before this Board has the opportunity to do so. Indeed, the
`
`district court proceeding is already at an advanced state, and a jury trial is set to
`
`begin in December 2020—approximately ten months before the Board would be
`
`statutorily required to issue a final written decision in this proceeding. Pursuant to
`
`NHK Spring, and on a balancing of the Fintiv factors, it would be an inefficient use
`
`of Board, party, and judicial resources to institute the present proceeding under these
`
`

`

`circumstances. Indeed the possibility of duplication of efforts here is high, as is the
`
`potential for inconsistent results, due to both tribunals considering overlapping
`
`issues. See, e.g., Supercell, IPR2020-00215, Paper 10, at 6–19.
`
`Second, even if the Board declines to so exercise its discretion, the instant
`
`Petition should be denied because it fails to establish a reasonable likelihood that
`
`any of the challenged claims is unpatentable. Indeed, the whole of the Petition is
`
`based on Petitioner’s incorrect claim construction of the term “template,” which has
`
`already been rejected by the district court in the parallel proceeding. Moreover,
`
`Petitioner’s challenge under § 101 fails because the patent eligibility of the
`
`challenged claims was already evaluated during original prosecution. And with
`
`respect to Petitioner’s obviousness challenge, Petitioner has failed to demonstrate
`
`that one of the primary references is in fact prior art. Petitioner’s alleged motivation
`
`to combine the asserted references is also insufficient to meet Petitioner’s burden.
`
`For all these reasons, the instant Petition should be denied because it fails to
`
`establish a reasonable likelihood that any of the challenged claims is unpatentable.
`
`II.
`
`The Petition Should Be Denied Under § 324(a).
`Institution of post grant review is discretionary with the Director of the U.S.
`
`Patent and Trademark Office. See 35 U.S.C. § 324(a) (“The Director may not
`
`authorize a post-grant review to be instituted unless the Director determines … that
`
`it is more likely than not that at least 1 of the claims challenged in the petition is
`
`2
`
`

`

`unpatentable.”). It is thus well established that the Board has discretion regarding
`
`whether to institute trial under § 324(a). See id.
`
`Here, the Board should exercise its discretion under § 324(a) and deny the
`
`Petition because institution of this proceeding would not be consistent with the
`
`objective of the AIA to “provide an effective and efficient alternative to district court
`
`litigation.” NHK Spring, IPR2018-00752, Paper 8, at 20 (emphasis added) (quoting
`
`Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19,
`
`at 16–17 (P.T.A.B. Sept. 6, 2017) (precedential)).
`
`While the precedential NHK Spring decision expressly concerns the Board’s
`
`discretion under § 314(a), it applies equally to § 324(a), because both statutes include
`
`the statement “[t]he Director may not authorize …,” which is the basis of the Board’s
`
`discretionary authority in each. Indeed, § 314(a) governing the threshold showing
`
`for a petition for inter partes review is essentially identical to § 324(a) concerning
`
`petitions for post grant review. And, in fact, the Board has previously applied the
`
`NHK Spring analysis in determining whether to exercise the Board’s discretion
`
`under § 324(a) to deny institution of post grant review. See, e.g., Teva
`
`Pharmaceuticals USA, Inc., v. Corcept Therapeutics, Inc., PGR2019-00048, Paper
`
`19, at 8–12 (P.T.A.B. Nov. 20, 2019).
`
`Pursuant to the precedential decision in NHK Spring, “a parallel proceeding
`
`in an advanced state implicates considerations of efficiency and fairness, which can
`
`3
`
`

`

`serve as an independent reason to apply discretion to deny institution.” Apple Inc. v.
`
`Fintiv, Inc., IPR2020-00019, Paper 15, at 11 (P.T.A.B. May 13, 2020). Indeed, in
`
`NHK Spring, the Board held that the state of a parallel district court proceeding may
`
`be an additional factor (beyond those identified in General Plastic) that weighs in
`
`favor of denying a petition under § 314(a). IPR2018-00752, Paper 8, at 20; see, e.g.,
`
`Teva, PGR2019-00048, Paper 19, at 8–12.
`
`Here, there exists a parallel district court proceeding between the same parties
`
`(Petitioner and Patent Owner) regarding the same subject patent (the ’682 Patent):
`
`GREE, Inc. v. Supercell Oy, No. 2:19-cv-00200 (E.D. Tex. filed May 28, 2019). Pet.
`
`at 1; see Ex. 2003. And the advanced state of that parallel district court proceeding
`
`favors denial of the Petition in accordance with the Board’s precedential decisions
`
`in NHK Spring and Fintiv. In fact, a jury trial regarding the validity of the subject
`
`patent is currently set to begin on December 7, 2020, while trial before the Board on
`
`the same prior art and arguments will not conclude until October 2021—ten
`
`months later. The totality of these circumstances is contrary to the AIA’s goal of
`
`providing for an effective and efficient means to resolve questions of validity. See
`
`NHK Spring, IPR2018-00752, Paper 8, at 20; see, e.g., Supercell, IPR2020-00215,
`
`Paper 10, at 6–19; Supercell, IPR2020-00310, Paper 13, at 6–20.
`
`4
`
`

`

`NHK Spring and Its Progeny.
`A.
`In the precedential NHK Spring decision, the Board exercised discretion under
`
`§ 314(a) to deny a petition upon determining that institution would be an “inefficient
`
`use of Board resources.” IPR2018-00752, Paper 8, at 19–20. The Board determined
`
`that denial of institution was appropriate in view of a parallel district court
`
`proceeding—involving the same patent, the same parties, the same claim
`
`construction standard1, and “the same prior art and arguments”—which was
`
`scheduled to be completed before a final written decision would be due in the Board
`
`proceeding. Id. In particular, a jury trial was set to begin in the parallel district court
`
`proceeding approximately six months before the trial before the Board “on the same
`
`asserted art” would conclude. Id. The Board determined that the circumstances
`
`1 Since the NHK Spring decision, the claim construction standard to be employed in
`
`an inter partes review changed from broadest reasonable interpretation to “the same
`
`claim construction standard used by Article III federal courts … which follow
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and its progeny.”
`
`Edwards Lifesciences Corp. v. Evalve, Inc., IPR2019-01479, Paper 7, at 8 n.7
`
`(P.T.A.B. Feb. 26, 2020) (citing 37 C.F.R. § 42.100(b) (2019)). The same is true
`
`with respect to the claim construction standard to be employed in a post grant review.
`
`37 C.F.R. § 42.200(b) (2019).
`
`5
`
`

`

`supported denial of the petition under § 314(a), considering the AIA’s objective “to
`
`provide an effective and efficient alternative to district court litigation.” Id. at 20.
`
`Since the precedential NHK Spring decision, the Board has continued to
`
`exercise its discretion to deny petitions submitted in circumstances similar to those
`
`presented in NHK Spring. For example—and notably—the Board recently denied
`
`institution of a petition filed by this same Petitioner against this same Patent Owner
`
`in view of the advanced state of a parallel district court proceeding—one that is
`
`scheduled for trial on the same date, and also on the same schedule, as the parallel
`
`district court proceeding regarding the ’682 Patent. Supercell, IPR2020-00310,
`
`Paper 13, at 6–20. The Board denied institution in view of the “substantial overlap
`
`in the issues raised in the Petition and in the parallel proceeding” and given that a
`
`jury trial was “set to begin six months before the statutory deadline” for the Board
`
`to issue a final written decision. Id. at 18; see also Supercell, IPR2020-00215, Paper
`
`10, at 6–19 (denying institution for similar reasons); Supercell, IPR2020-00513,
`
`Paper 11, at 5–18 (same).
`
`In Cisco Systems, Inc. v. Ramot at Tel Aviv University Ltd., IPR2020-00122,
`
`Paper 14, at 5–11 (P.T.A.B. May 15, 2020), the Board, relying on NHK Spring,
`
`denied institution where the Petitioner’s invalidity contentions in a parallel district
`
`court proceeding “contain[ed] substantially similar assertions to those in the
`
`6
`
`

`

`Petition” and the district court trial was scheduled to begin “six months” before a
`
`final decision would be due in the Board proceeding, if the Board were to institute.
`
`Similarly, in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15, at 7–17
`
`(P.T.A.B. May 13, 2020), the Board, relying on NHK Spring, denied institution
`
`where “[t]he same art” was presented in the Petition as Petitioner’s final invalidity
`
`contentions in a parallel district court proceeding and jury trial in the district court
`
`proceeding was set to begin “approximately two months before a final written
`
`decision would be due in [the Board] proceeding.”
`
`In Intel Corp. v. VLSI Tech. LLC, IPR2020-00106, Paper 17, at 4–13
`
`(P.T.A.B. May 5, 2020), the Board, relying on NHK Spring, likewise denied
`
`institution based on “the advanced stage of the [parallel] Western District of Texas
`
`litigation, a currently scheduled trial date approximately seven months before the
`
`would-be deadline for a final written decision, and the overlap between the issues
`
`presented there and in the Petition.” And the Board subsequently reached the same
`
`conclusions, for the same reasons, in denying institution on a related, later-filed
`
`petitions before the Board. Intel Corp. v. VLSI Tech. LLC, IPR2020-00113, Paper
`
`15, at 6–16 (P.T.A.B. May 19, 2020); Intel Corp. v. VLSI Tech. LLC, IPR2020-
`
`00158, Paper 16, at 4–14 (P.T.A.B. May 20, 2020); Intel Corp. v. VLSI Tech. LLC,
`
`IPR2020-00141, Paper 16, at 7–16 (P.T.A.B. June 4, 2020); Intel Corp. v. VLSI
`
`Tech. LLC, IPR2020-00142, Paper 16, at 7–16 (P.T.A.B. June 4, 2020).
`
`7
`
`

`

`In Vizio, Inc. v. Polaris PowerLED Technologies, LLC, IPR2020-00043,
`
`Paper 30, at 6–12 (P.T.A.B. May 4, 2020), the Board, relying on NHK Spring, denied
`
`institution given “the similarity between the evidence and grounds of unpatentability
`
`in the Petition and the evidence and grounds of invalidity asserted in the California
`
`District Court proceeding” where “the District Court’s trial is scheduled to precede
`
`[the Board’s] final written decision by more than seven months.” See also Edwards
`
`Lifesciences Corp. v. Evalve, Inc., IPR2019-01479, Paper 7, at 6–13 (P.T.A.B. Feb.
`
`26, 2020; Samsung Elecs. Am., Inc. v. Uniloc 2017 LLC, IPR2019-01218, Paper 7,
`
`at 7–10 (P.T.A.B. Jan. 7, 2020); Next Caller Inc. v. TrustID, Inc., IPR2019-00961, -
`
`00962, Paper 10, at 8–16 (P.T.A.B. Oct. 16, 2019); E-One, Inc. v. Oshkosh Corp.,
`
`IPR2019-00161, Paper 16, at 6–9 (P.T.A.B. May 15, 2019).
`
`Analysis of the Fintiv Factors Compels Denial.
`B.
`The facts of the present case are analogous to those in NHK Spring, as well as
`
`its progeny, and thus warrant exercise of the Board’s discretion to deny institution
`
`under § 324(a) for the same reasons. Indeed, the Board has identified factors relating
`
`to “whether efficiency, fairness, and the merits support the exercise of authority to
`
`deny institution in view of an earlier trial date in the parallel proceeding” in line with
`
`NHK Spring—each of which supports denial here. Apple Inc. v. Fintiv, Inc.,
`
`IPR2020-00019, Paper 11, at 6 (P.T.A.B. Mar. 20, 2020) (precedential).
`
`8
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`

`

`The Fintiv 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. As set forth below, a balancing of these factors demonstrates that efficiency and
`
`integrity of the AIA are best served by denying institution. Cf. Supercell, IPR2020-
`
`00215, Paper 10, at 6–19.
`
`i.
`
`Factor 1: whether the court granted a stay or evidence
`exists that one may be granted if a proceeding is instituted
`“A district court stay of the litigation pending resolution of the PTAB trial
`
`allays concerns about inefficiency and duplication of efforts,” and thus “weigh[s]
`
`against exercising the authority to deny institution under NHK.” Fintiv, IPR2020-
`
`00019, Paper 11, at 6. But here, Petitioner has not filed any motion to stay the parallel
`
`district court proceeding in view of the instant Petition. And while, overall, a judge
`
`9
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`

`

`determines whether to grant a stay based on the facts of each case, there is little
`
`evidence here to suggest that the district court will grant a stay.
`
`In fact, any stay of the parallel district court proceeding in view of the instant
`
`Petition is extremely unlikely. The district court “has a consistent practice of denying
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`motions to stay when the PTAB has yet to institute post-grant proceedings.” Saint
`
`Lawrence Commc’ns LLC v. ZTE Corp., No. 2:15-CV-349-JRG, 2016 WL 7338600,
`
`at *1 (E.D. Tex. July 15, 2016). And, as noted above, any decision from this Board
`
`regarding institution is not due until a couple months before the jury trial in the
`
`parallel district court proceeding. See 35 U.S.C. § 326(a)(11); Ex. 2001. And, at that
`
`time, the “late stage” of the district court proceeding will “weigh[] against a stay.”
`
`Realtime Data LLC v. Actian Corporation, No. 6:15-CV-463-RWS-JDL, 2016 WL
`
`9340796, at *4–5 (E.D. Tex. Nov. 29, 2016) (denying motion to stay “[g]iven the
`
`advanced stage of litigation”).
`
`Accordingly, this factor weighs in favor of the Board exercising its discretion
`
`to deny institution pursuant to § 324(a)—or, at a minimum, is neutral. See Supercell,
`
`IPR2020-00215, Paper 10, at 9; Supercell, IPR2020-00310, Paper 13, at 10;
`
`Supercell, IPR2020-00513, Paper 11, at 7–8.
`
`ii.
`
`Factor 2: proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision
`As demonstrated above by NHK Spring and its progeny, “[i]f the court’s trial
`
`date is earlier than the projected statutory deadline, the Board generally has weighed
`
`10
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`

`

`this fact in favor of exercising authority to deny institution under NHK.” Fintiv,
`
`IPR2020-00019, Paper 11, at 9. Such is the case here. A jury trial in the parallel
`
`district court proceeding is set to begin on December 7, 2020. Ex. 2001 at 1.
`
`Accordingly, trial in that proceeding is scheduled to conclude approximately ten
`
`months before a final written decision would be due in this proceeding (i.e., October
`
`2021), if the Board were to institute. See 35 U.S.C. § 326(a)(11).
`
`As noted above, the Board has consistently denied institution in similar—and,
`
`in fact, even less similar—factual circumstances. See, e.g., Supercell, IPR2020-
`
`00215, Paper 10, at 10–12 (ten-month gap between trial and deadline for final
`
`written decision); Edwards Lifesciences, IPR2019-01479, Paper 7, at 7 (nine-month
`
`gap); Apple Inc. v. Maxell, Ltd., IPR2020-00203, Paper 12, at 10 (P.T.A.B. July 6,
`
`2020) (eight-month gap); Intel, IPR2020-00106, Paper 17, at 7 (seven-month gap);
`
`Vizio, IPR2020-00043, Paper 30, at 8 (seven-month gap); NHK Spring, IPR2018-
`
`00752, Paper 8, at 20 (six-month gap); Supercell, IPR2020-00310, Paper 13, at 10–
`
`12 (six-month gap); Cisco, IPR2020-00122, Paper 14, at 7 (six-month gap);
`
`Samsung, IPR2019-01218, Paper 7, at 10 (six-month gap).
`
`Patent Owner acknowledges that concerns and precautions with respect to the
`
`novel coronavirus (COVID-19) have very recently impacted many aspects of the
`
`legal system, including both before this Board and before district courts. But the
`
`district court has already adjusted the trial date in view of that impact in response to
`
`11
`
`

`

`Petitioner’s recent request (Ex. 2002). In particular, in an order dated May 14, 2020,
`
`the district court adjusted the trial date in the parallel district court proceeding from
`
`October 5, 2020 to December 7, 2020. Ex. 2001, at 1; see Ethicon, Inc. v. Bd. of
`
`Regents, IPR2019-00406, Paper 27, at 10 (P.T.A.B. June 10, 2020) (finding factor
`
`“weighs strongly in favor of discretionary denial” where district court has
`
`emphasized that the parties “should proceed as if still set for June 22, 2020 [trial
`
`date]” despite COVID-19 concerns).
`
`This Board takes the Court’s current schedule at “face value.” See Fintiv,
`
`IPR2020-00019, Paper 15, at 13 (“We generally take courts’ trial schedules at face
`
`value absent some strong evidence to the contrary. We have no reason to believe that
`
`the [] trial date, which already has been postponed by several months due to
`
`complications stemming from the COVID-19 pandemic, will be postponed again.”).
`
`And any “generalized speculation as to trial dates universally (e.g., due to impacts
`
`of COVID-19), are outweighed by the fact that the jury trial in this case is scheduled
`
`to occur approximately ten months before the Board’s statutory deadline.” Supercell,
`
`IPR2020-00215, Paper 10, at 11; see also Supercell, IPR2020-00310, Paper 13, at
`
`12 (“[T]he fact that the jury trial in this case is scheduled to occur approximately six
`
`months before the Board’s statutory deadline outweighs, albeit narrowly, a
`
`combination of generalized speculation as to trial dates universally (e.g., due to
`
`impacts of COVID-19) and the one specific fact of record that the jury trial is in
`
`12
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`

`

`doubt at this time due to the recent movement of the trial date from October 5, 2020
`
`to December 7, 2020.”).
`
`Further, should any delay of the trial date in fact become necessary, any such
`
`delay is not likely to impact the Board exercising its discretion to deny institution
`
`under § 324(a). See id. As discussed above, trial in the parallel district court
`
`proceeding is currently scheduled to conclude approximately ten months before a
`
`final written decision would be due in this proceeding, if the Board were to institute.
`
`As such, even if trial is ultimately delayed by a few months, it will still likely
`
`conclude w