Case 5:20-cv-06128-EJD Document 54 Filed 11/09/20 Page 1 of 23
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`DANIEL T. SHVODIAN (CA SBN 184576)
`DShvodian@perkinscoie.com
`PERKINS COIE LLP
`3150 Porter Drive
`Palo Alto, CA 94304
`Telephone: (650) 838-4300
`Facsimile: (650) 737-5461
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`Attorney for Plaintiff Google LLC
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`JOHN B. SGANGA (CA SBN 116211)
`John.Sganga@knobbe.com
`KNOBBE MARTENS OLSON & BEAR LLP
`2040 Main St. 14th Floor
`Irvine, CA 92614
`Telephone: (949) 760-0404
`Facsimile: (949) 760-9502
`
`Attorney for Plaintiffs Edwards Lifesciences
`Corporation and Edwards Lifesciences LLC
`
` A
`
` complete list of parties and counsel appears
`on the signature page per Local Rule 3-4(a)(1)
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`MARK D. SELWYN (CA SBN 244180)
`mark.selwyn@wilmerhale.com
`WILMER CUTLER PICKERING
` HALE AND DORR LLP
`2600 El Camino Real, Suite 400
`Palo Alto, California 94306
`Telephone: (650) 858-6000
`Facsimile: (650) 858-6100
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`CATHERINE M.A. CARROLL (pro hac vice)
`catherine.carroll@wilmerhale.com
`WILMER CUTLER PICKERING
` HALE AND DORR LLP
`1875 Pennsylvania Avenue NW
`Washington, DC 20006
`Telephone: (202) 663-6000
`Facsimile: (202) 663-6363
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`Attorneys for Plaintiffs Apple Inc., Cisco
`Systems, Inc., and Intel Corporation
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`UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`
`Case No. 20-cv-6128-EJD
`
`AMENDED COMPLAINT FOR
`DECLARATORY AND INJUNCTIVE
`RELIEF
`
`Administrative Procedure Act Case
`
`APPLE INC., CISCO SYSTEMS, INC.,
`GOOGLE LLC, INTEL CORPORATION,
`EDWARDS LIFESCIENCES
`CORPORATION, and EDWARDS
`LIFESCIENCES LLC,
`Plaintiffs,
`
`v.
`
`ANDREI IANCU, in his official capacity as
`Under Secretary of Commerce for Intellectual
`Property and Director, United States Patent and
`Trademark Office,
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`Defendant.
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`No. 20-cv-6128-EJD
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`AMENDED COMPLAINT FOR DECLARATORY AND INJUNCTIVE RELIEF
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`Case 5:20-cv-06128-EJD Document 54 Filed 11/09/20 Page 2 of 23
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`INTRODUCTION
`1.
`This action under the Administrative Procedure Act (“APA”) challenges a rule
`adopted by the Director of the U.S. Patent and Trademark Office (“PTO”) governing that agency’s
`consideration of petitions to institute inter partes review (“IPR”)—an administrative proceeding for
`determining the patentability of previously issued patent claims.
`2.
`A strong patent system is vital to protecting the massive research and development
`investments that fuel Plaintiffs’ innovative products and services. And a crucial element of any
`strong patent system is a mechanism for “weeding out” weak patents that never should have been
`granted because the claimed invention was not novel or would have been obvious in light of prior art.
`Thryv, Inc. v. Click-To-Call Techs., LP, 140 S. Ct. 1367, 1374 (2020). Such patents threaten
`innovation—particularly in the hands of non-practicing entities that use the patent system not to spur
`their own inventions, but to extract monetary returns by asserting weak patents in infringement suits.
`As frequent targets of such tactics, Plaintiffs have a strong interest in having an efficient and
`accessible means for challenging weak patents that should never have issued to ensure that such
`patents cannot hamper innovation.
`3.
`IPR was a centerpiece of Congress’s efforts to strengthen the U.S. patent system in the
`Leahy-Smith America Invents Act (“AIA”). In enacting the AIA in 2011, Congress recognized that
`innovation is inhibited when invalid patents are issued and then deployed in litigation against
`technology inventors and developers. And Congress found existing procedures for challenging
`already-issued patents, including litigation, to be insufficient to protect the patent system. Congress
`accordingly created IPR to provide a more efficient and streamlined administrative alternative to
`litigation for determining patentability before specialized patent judges. IPR has served to enhance
`the U.S. patent system and strengthen U.S. technology and innovation by weeding out thousands of
`invalid patent claims.
`4.
`To ensure that IPR fulfills its purpose as a superior alternative to litigation over patent
`validity, the AIA specifically contemplates that IPR will be available to determine the patentability of
`patent claims that are also the subject of pending patent infringement litigation.
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`No. 20-cv-6128-EJD
`AMENDED COMPLAINT FOR DECLARATORY AND INJUNCTIVE RELIEF
`1
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`Case 5:20-cv-06128-EJD Document 54 Filed 11/09/20 Page 3 of 23
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`5.
`In the agency action challenged in this suit (referred to here as the “NHK-Fintiv rule”),
`however, the Director determined that the PTO could deny a petition for IPR based on a balancing of
`discretionary factors relating to the pendency of parallel patent infringement litigation—factors that
`appear nowhere in the AIA. The agency’s application of that rule has dramatically reduced the
`availability of IPR, regardless of the weakness of the patent claims being challenged, thereby
`undermining IPR’s central role in protecting a strong patent system.
`6.
`The NHK-Fintiv rule violates the AIA, which allows IPR to proceed in tandem with
`infringement litigation involving the same patent claims so long as the IPR petition is filed within one
`year after the petitioner was served with the complaint in the infringement suit. Congress dictated in
`the AIA exactly when litigation should take precedence over IPR and vice versa, and the NHK-Fintiv
`rule contravenes Congress’s judgment. Indeed, the NHK-Fintiv rule defeats the purpose of IPR,
`which is to provide a streamlined and specialized mechanism for clearing away invalid patents that
`never should have issued, and to do so without the substantial costs, burdens, and delays of litigation.
`7.
`The NHK-Fintiv rule is also arbitrary and capricious because its vague factors lead to
`speculative, unpredictable, and unfair outcomes and will not advance the agency’s stated goal of
`promoting administrative efficiency.
`8.
`Finally, even if it were not contrary to law, the NHK-Fintiv rule is procedurally invalid
`because it was not adopted through notice-and-comment rulemaking. Both the APA and the AIA
`obligated the Director to follow that procedure, yet the Director instead propounded the NHK-Fintiv
`rule through an internal process within the PTO for establishing binding rules by designating select
`decisions of the Patent Trial and Appeal Board as “precedential”—a process that provides for no
`opportunity for or consideration of public input.
`9.
`The Court should therefore declare the NHK-Fintiv rule unlawful and set it aside under
`the APA. The Court should further permanently enjoin the Director from applying the rule or the
`non-statutory factors it incorporates to deny institution of IPR.
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`No. 20-cv-6128-EJD
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`AMENDED COMPLAINT FOR DECLARATORY AND INJUNCTIVE RELIEF
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`Case 5:20-cv-06128-EJD Document 54 Filed 11/09/20 Page 4 of 23
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`JURISDICTION AND VENUE
`10.
`This case arises under the Administrative Procedure Act (“APA”), 5 U.S.C. § 701 et
`seq. This Court has subject matter jurisdiction under 28 U.S.C. § 1331.
`11.
`Pursuant to 5 U.S.C. § 702, Defendant has waived sovereign immunity for purposes of
`this suit.
`12.
`Plaintiffs’ claims for declaratory and injunctive relief are authorized by 28 U.S.C.
`§§ 2201 and 2202, by 5 U.S.C. §§ 702-706, by Federal Rules of Civil Procedure 57 and 65, and by
`the inherent equitable powers of this Court.
`13.
`Venue is proper in this District under 28 U.S.C. § 1391(e) and 5 U.S.C. § 703 because
`at least one Plaintiff maintains its headquarters in this District.
`14.
`The NHK-Fintiv rule is final agency action subject to judicial review under 5 U.S.C.
`
`§ 704.
`
`INTRADISTRICT ASSIGNMENT
`15.
`This action arises in the San Jose Division because a substantial part of the events
`giving rise to Plaintiffs’ claims occurred in Santa Clara County, California, where all Plaintiffs
`maintain their headquarters.
`
`PARTIES
`16.
`Plaintiff Apple Inc. (“Apple”) is a California corporation having its principal place of
`business at One Apple Park Way, Cupertino, California, 95014.
`17.
`Plaintiff Cisco Systems, Inc. (“Cisco”) is a California corporation having its principal
`place of business at 170 West Tasman Drive, San Jose, California, 95134.
`18.
`Plaintiff Google LLC (“Google”) is a Delaware limited liability company having its
`principal place of business at 1600 Amphitheatre Parkway, Mountain View, California, 94043.
`19.
`Plaintiff Intel Corporation (“Intel”) is a Delaware corporation having its principal
`place of business at 2200 Mission College Boulevard, Santa Clara, California, 95054.
`20.
`Plaintiffs Edwards Lifesciences Corp. and Edwards Lifesciences LLC (collectively
`“Edwards”) are Delaware corporations having their principal place of business at One Edwards Way,
`
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`No. 20-cv-6128-EJD
`AMENDED COMPLAINT FOR DECLARATORY AND INJUNCTIVE RELIEF
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`Irvine, California, 92614. Edwards Lifesciences Corp. owns numerous patents that it exclusively
`licenses to Edwards Lifesciences LLC, which is an operating company that has been sued for patent
`infringement in the past.
`21.
`Defendant Andrei Iancu is the Under Secretary of Commerce for Intellectual Property
`and Director of the PTO. The Director oversees the operations of the PTO and is statutorily vested
`with the authority to decide whether to institute IPR of a patent claim. 35 U.S.C. § 314. Defendant
`Iancu is being sued in his official capacity. His principal place of business is in Alexandria, Virginia.
`FACTUAL ALLEGATIONS
`The Patent System
`22.
`“To promote the progress of science and useful arts,” the Constitution empowers
`Congress to “secur[e] for limited times to … inventors the exclusive right to their … discoveries.”
`U.S. Const., art. I, § 8, cl. 8. The U.S. patent system has long fueled American economic growth and
`innovation. Plaintiffs each strongly support and rely on a strong patent system that lends robust legal
`protection to meritorious patent claims.
`23.
`Apple is an American success story and developer of iconic consumer devices and
`software that have transformed the American economy. With more than 90,000 employees in the
`United States, Apple is one of the country’s largest employers in the high-technology business sector.
`Overall, Apple supports 2.4 million jobs in all 50 states. Last year, Apple spent over $60 billion with
`more than 9,000 domestic suppliers across the country, including at manufacturing locations in 36
`states. Apple invests billions of dollars annually in U.S. research and development, and it owns more
`than 22,000 U.S. patents that protect that investment.
`24.
`Cisco is an American and worldwide leader in information technology, networking,
`communications, and cybersecurity solutions. Cisco is a strong supporter of the U.S. patent system,
`owning more than 16,000 U.S. patents, which protect more than $6 billion in annual spending on
`research and development. Cisco’s 20,000 worldwide engineers constantly invent new ways to better
`connect the world. As a result of its commitment to innovation and intellectual property, Cisco files
`more than 700 patent applications each year seeking protection for those inventions.
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`No. 20-cv-6128-EJD
`AMENDED COMPLAINT FOR DECLARATORY AND INJUNCTIVE RELIEF
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`Case 5:20-cv-06128-EJD Document 54 Filed 11/09/20 Page 6 of 23
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`25.
`Google is a diversified American technology company whose mission is to organize
`the world’s information and make it universally accessible and useful. Google offers leading web-
`based products and services that are used daily around the world. With over 100,000 employees,
`Google invests over $20 billion annually to invent and develop its products and services, and it relies
`on a strong and balanced patent system to protect them—owning more than 25,000 U.S. patents.
`26.
`Intel is a global leader in the design and manufacture of semiconductor products,
`including hardware and software products for networking, telecommunications, cloud computing,
`artificial intelligence, autonomous driving, and other applications. Intel’s chips power a large
`percentage of the world’s computers, from home-office desktops and laptops to the servers that
`support the digital economy. To develop and improve these products, Intel makes significant
`investments. Intel currently has more than 42,000 employees actively engaged in research and
`development worldwide; in the United States, Intel employs more than 52,000 workers. In 2019
`alone, Intel spent more than $13 billion on research and development and more than $16 billion on
`manufacturing. These investments are protected by more than 25,000 U.S. patents, with more than
`10,000 U.S. patent applications pending.
`27.
`Edwards is the global leader in patient-focused medical innovations for structural heart
`disease, as well as critical care and surgical monitoring. Driven by a passion to help patients, the
`company collaborates with the world’s leading clinicians and researchers to address unmet healthcare
`needs, working to improve patients’ outcomes and enhance lives. Because many patients remain
`underserved, Edwards strives for big, bold advancements that will fundamentally change the practice
`of medicine. In 2019, Edwards spent $753 million on research and development (up 21% from the
`previous year), which was 17% of its sales. Globally, Edwards employs over 14,000 workers and
`over 2,000 engineers. Headquartered in Southern California, the majority of Edwards’ sales occur in
`the United States. Edwards’ R&D investments and its patient-focused innovations are protected by
`almost 1,100 patents, with almost 800 U.S. patent applications pending.
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`No. 20-cv-6128-EJD
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`AMENDED COMPLAINT FOR DECLARATORY AND INJUNCTIVE RELIEF
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`28.
`Each Plaintiff’s success in developing transformative, cutting-edge technologies
`depends on a patent system that provides strong legal protections for meritorious patents while
`ensuring that weak patents cannot be exploited in litigation to inhibit innovation.
`Inter Partes Review
`29.
`The U.S. patent laws have long provided both administrative and judicial paths for
`challenging the validity of patent claims after a patent has been issued. By 2011, however, Congress
`rightly perceived a “growing sense that questionable patents [we]re too easily obtained” and “too
`difficult to challenge” through existing procedures. H.R. Rep. No. 98, at 39-40, 112th Cong., 1st
`Sess. (2011) (“House Report”). Congress responded by creating IPR in the AIA to strengthen the
`patent system. Pub. L. No. 112-29, § 6(a), 125 Stat. 284, 299 (2011).
`30.
`As a centerpiece of the AIA, IPR provides “an administrative process in which a
`patent challenger may ask the [PTO] to reconsider the validity of earlier granted patent claims.”
`Thryv, 140 S. Ct. at 1370; see 35 U.S.C. § 311 et seq. Congress intended IPR to provide an improved
`alternative to litigation over the validity of previously granted patents by “establish[ing] a more
`efficient and streamlined patent system that will improve patent quality and limit unnecessary and
`counterproductive litigation costs.” House Report at 39-40.
`31.
`Several features of IPR make it advantageous compared to litigation for determining
`whether an issued patent’s claims are patentable. IPR is conducted by the expert patent judges of the
`Patent Trial and Appeal Board (“Board”), who are appointed by the Secretary of Commerce and must
`be “persons of competent legal knowledge and scientific ability.” 35 U.S.C. § 6(a), (c). In contrast,
`patent validity disputes in court are resolved by lay jurors who need not have—and often lack—any
`specialized technical experience relevant to the patent claims at issue. Moreover, unlike jury trials,
`which typically end in general verdicts, IPR ends with the Board’s “final written decision,” id.
`§ 318(a), which enables more informed appellate review. And while bad patents can be held
`unpatentable in IPR by a preponderance of the evidence, id. § 316(e), those same patents will survive
`litigation unless the challenger proves invalidity by clear and convincing evidence, see Microsoft
`Corp. v. i4i Ltd. P’ship, 564 U.S. 91 (2011).
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`No. 20-cv-6128-EJD
`AMENDED COMPLAINT FOR DECLARATORY AND INJUNCTIVE RELIEF
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`32.
`IPR is also more streamlined and efficient than litigation. An IPR petitioner may
`challenge a claim’s patentability only on limited grounds. 35 U.S.C. § 311(b). The scope of
`discovery in IPR proceedings is more limited than in civil litigation. See id. § 316(a)(5); 37 C.F.R.
`§ 42.51. The AIA also limits how long the Director may take to decide whether to institute IPR, 35
`U.S.C. § 314(b), and, if IPR is instituted, how long the Board may take to issue its final decision on
`patentability, id. § 316(a)(11). As a result, the life-span of an IPR from the filing of a petition to a
`final written decision is typically only 18 months. See id. § 316(a)(11); 37 C.F.R. § 42.107.
`The Availability Of IPR In Parallel With Infringement Actions
`33.
`Given its purpose to provide an efficient alternative to litigation, Congress expected
`that IPR would often proceed in parallel with litigation in which the validity of the same patent
`claims is at issue—particularly in cases where a defendant accused of patent infringement in a lawsuit
`seeks to challenge the asserted patent claims through IPR. Several provisions of the AIA reflect that
`expectation and govern the interaction between IPR and litigation.
`34.
`The AIA permits a party accused of infringement to file a petition for IPR with regard
`to the same patent claims that are being asserted in the pending infringement suit, so long as the
`petition is filed within “1 year after the date on which the petitioner … is served with a complaint
`alleging infringement of the patent.” 35 U.S.C. § 315(b). And although the AIA forecloses IPR if
`the petitioner has previously “filed a civil action challenging the validity of a claim of the patent,” id.
`§ 315(a)(1), it expressly permits a petitioner to assert invalidity arguments in a counterclaim in
`litigation without forgoing IPR, id. § 315(a)(3).
`35.
`The AIA also removed statutory provisions that previously restricted the PTO’s
`review of patent claims that had been the subject of a challenge to the patent’s validity in district
`court. Before the creation of IPR, parties could challenge issued patents pursuant to an administrative
`procedure known as inter partes reexamination, but no such review could be maintained if a court
`entered “a final decision” concluding that the petitioner “ha[d] not sustained its burden of proving the
`invalidity” of the patent. 35 U.S.C. § 317(b) (2006). The AIA eliminated that rule and imposed no
`similar limitation on IPR, which replaced inter partes reexamination.
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`No. 20-cv-6128-EJD
`AMENDED COMPLAINT FOR DECLARATORY AND INJUNCTIVE RELIEF
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`36.
`Apart from the one-year deadline in § 315(b), and the prohibition in § 315(a)(1) on
`filing an IPR petition after filing a suit challenging patent validity, no provision in the AIA expressly
`requires or even permits the Director (or the Board as his delegee) to deny IPR petitions based on
`pending litigation involving the same patent claims.
`The NHK And Fintiv Decisions
`37.
`The AIA specifies several requirements that must be met for the Director of the PTO
`to grant a petition for, or “institute,” IPR, and enumerates discretionary grounds on which the
`Director may decline to institute IPR even if those preconditions are met. E.g., 35 U.S.C.
`§§ 311(c)(1)-(2), 312(a)(1)-(5), 315(a)(1)-(2). For example, the Director “may not” institute IPR
`“unless” he determines, based on the IPR petition, that “there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Id.
`§ 314(a). And the Director “may take into account whether, and reject the petition or request
`because, the same or substantially the same prior art or arguments previously were presented to the
`[Patent] Office.” Id. § 325(d).
`38.
`The Director has delegated to the Board the authority to decide whether to institute
`IPR. 37 C.F.R. § 42.4(a); see id. §§ 42.2, 42.108.
`39.
`In two recent decisions, the Board articulated an additional standard, found nowhere in
`the AIA, under which the Board may decline to institute IPR based on the pendency of litigation over
`the validity of the same patent claims—even if the petition was timely filed within the one-year
`deadline set by 35 U.S.C. § 315(b).
`40.
`In NHK Spring Co. v. Intri-Plex Technologies, Inc., the Board declared that “the
`advanced state of [a parallel] district court proceeding … weighs in favor of denying the [IPR]
`Petition under § 314(a).” No. IPR2018-00752, Paper 8, at 20 (P.T.A.B. Sept. 12, 2018) (attached
`hereto as Ex. A; also available at 2018 WL 4373643).
`41.
`The Board explained in NHK that because a pending infringement lawsuit involving
`“the same prior art and arguments” as the IPR petition was “nearing its final stages,” with trial “set to
`begin” about six months before the IPR would end, IPR “would not be consistent with an objective of
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`No. 20-cv-6128-EJD
`AMENDED COMPLAINT FOR DECLARATORY AND INJUNCTIVE RELIEF
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`the AIA … to provide an effective and efficient alternative to district court litigation.” NHK, Paper 8
`at 20 (internal quotation marks omitted).
`42.
`In Apple Inc. v. Fintiv, Inc., the Board elaborated on NHK, explaining how it would
`consider the pendency of a parallel infringement lawsuit when deciding whether to institute IPR. No.
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) (attached hereto as Ex. B; also available at 2020
`WL 2126495). The Board declared it would “weigh[]” various “non-dispositive factors” to decide
`whether to institute IPR when parallel litigation is pending “as part of a balanced assessment of all
`relevant circumstances of the case, including the merits,” to promote “system efficiency, fairness, and
`patent quality.” Id. at 5 (internal quotation marks omitted).
`43.
`Accordingly, the Board enumerated six such “factors,” none of which appears in the
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`AIA:
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`1.
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`2.
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`whether the court granted a stay or evidence exists that one may be
`granted if [an IPR] proceeding is instituted;
`proximity of the court’s trial date to the Board’s projected statutory
`deadline for a final written decision;
`investment in the parallel proceeding by the court and the parties;
`overlap between issues raised in the petition and in the parallel
`proceeding;
`whether the petitioner and the defendant in the parallel proceeding are
`the same party; and
`other circumstances that impact the Board’s exercise of discretion,
`including the merits.
`Fintiv, Paper 11 at 5-6.
`44.
`Although the Board offered general guidance on how it might apply some of these
`factors, the Fintiv decision did not clearly “instruct [the Board] how to weigh the factors.” Cisco
`Sys., Inc. v. Ramot at Tel Aviv Univ. Ltd., No. IPR2020-00122, 2020 WL 2511246, at *5 (P.T.A.B.
`May 15, 2020) (Crumbley, APJ, dissenting).
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`Case 5:20-cv-06128-EJD Document 54 Filed 11/09/20 Page 11 of 23
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`Designation Of The Board’s Decisions As Precedential
`45.
`“[B]y default,” the Board’s decisions in IPR proceedings have no precedential force in
`future cases. Patent Trial and Appeal Board, Standard Operating Procedure 2 (Rev. 10) (“SOP-2”), at
`3, 8-9 (Sept. 20, 2018).
`46.
`The PTO, however, has established a procedure for designating select Board decisions
`as “precedential.” SOP-2 at 1-2, 8-12. Decisions designated as precedential are “binding” on the
`Board “in subsequent matters involving similar factors or issues.” SOP-2 at 11.
`47.
`Under this procedure, the Director decides whether to designate a Board decision as
`precedential. SOP-2 at 11.
`48.
`Although members of the public (in addition to members of the Board) may nominate
`a Board decision for designation as precedential, SOP-2 at 9, the designation procedure otherwise
`does not allow for public notice of, or any opportunity for public comment on, whether a Board
`decision should be designated as precedential. SOP-2 at 8-11.
`The Director designated NHK as precedential on May 7, 2019.
`49.
`50.
`The Director designated Fintiv as precedential on May 5, 2020.
`51.
`By designating these decisions as precedential, the Director propounded a rule (the
`“NHK-Fintiv rule”) that the Board is legally bound to apply in all its institution decisions.
`52.
`The Director adopted the NHK-Fintiv rule without notice-and-comment rulemaking.
`53.
`Having been established as a binding rule through the designation of the NHK and
`Fintiv decisions as precedential, the NHK-Fintiv rule constitutes final agency action.
`The Board’s Application Of The NHK-Fintiv Rule
`54.
`The Board has applied the NHK-Fintiv rule to deny institution of numerous IPR
`proceedings, including many petitions brought by Plaintiffs.
`55.
`Following NHK, the Board relied on that decision to deny several IPR petitions. See
`Magellan Midstream Partners L.P. v. Sunoco Partners Marketing & Terminals L.P., No. IPR2019-
`01445, 2020 WL 373335 (P.T.A.B. Jan. 22, 2020); Next Caller Inc. v. TRUSTID, Inc., No. IPR2019-
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`Case 5:20-cv-06128-EJD Document 54 Filed 11/09/20 Page 12 of 23
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`00962, 2019 WL 5232627 (P.T.A.B. Oct. 16, 2019); Next Caller Inc. v. TRUSTID, Inc., No.
`IPR2019-00961, 2019 WL 5232627 (P.T.A.B. Oct. 16, 2019).
`56.
`The Board applied NHK to deny two IPR petitions timely filed by Plaintiff Edwards
`based upon the “advanced stage” of the litigation. Edwards Lifesciences Corp. v. Evalve, Inc., No.
`IPR2019-01479, 2020 WL 927867 (P.T.A.B. Feb. 26, 2020); Edwards Lifesciences Corp. v. Evalve,
`Inc., No. IPR2019-01546, 2020 WL 1486766 (P.T.A.B. Mar. 19, 2020). The Board relied on the trial
`date, substantial overlap with arguments in the district court litigation, a view that the district court had
`“already resolved” critical issues presented in the IPR petitions, and a perception that the parties and
`the district court had already invested “substantial time and energy” in the district court litigation.
`Edwards had timely filed both IPR petitions approximately six months after being served with an
`infringement complaint. The Board, however, denied the petitions under NHK in part because the
`district court’s scheduling order set the trial date to occur before a final written decision would issue,
`and the Board speculated that the court intended to preserve the trial date. Two weeks later, the district
`court vacated the trial date and eventually reset it for three months later, before vacating it once again.
`57.
`In another example, on March 27, 2020, the Board denied institution in Google LLC v.
`Uniloc 2017, LLC, No. IPR2020-00115, 2020 WL 1523248 (Mar. 27, 2020). Although Google
`timely filed the IPR petition in that proceeding less than nine months after being served with a related
`infringement complaint, the Board denied the petition under NHK based on the trial date set in the
`district court’s scheduling order. Id. at *1, *4. Google requested rehearing, but its request was
`denied. Soon thereafter, the district court action was ordered to be transferred, and the trial date was
`vacated. Uniloc 2017, LLC v. Google LLC, No. 18-cv-00504, 2020 WL 3064460, at *6 (E.D. Tex.
`June 8, 2020).
`58.
`On the same day that Fintiv was designated as precedential, the Board applied the
`NHK-Fintiv rule to deny Intel’s IPR petition in Intel Corp. v. VLSI Technology LLC, No. IPR2020-
`00106, 2020 WL 2201828 (P.T.A.B. May 5, 2020). The petition had been timely filed, but the Board
`concluded that the “advanced stage” of related district court litigation, overlap in the issues, and the
`timing of trial—which was scheduled to begin approximately seven months before IPR would have
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`Case 5:20-cv-06128-EJD Document 54 Filed 11/09/20 Page 13 of 23
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`ended, but which was subsequently rescheduled—meant that IPR would have been “an inefficient use
`of Board, party, and judicial resources.” Id. at *6.
`59.
`Eight days later, the Board applied the NHK-Fintiv rule to deny Apple’s IPR petition
`in Fintiv. Apple Inc. v. Fintiv, Inc., No. IPR2020-00019, 2020 WL 2486683, at *3-4, *7 (P.T.A.B.
`May 13, 2020) (Paper 15). In Fintiv, Apple had filed an IPR petition challenging the patentability of
`certain patent claims that had been asserted against Apple in a patent infringement suit. Apple timely
`filed the IPR petition less than ten months after the infringement suit began. After Apple filed its IPR
`petition, the district court in the infringement lawsuit held a Markman hearing (to consider evidence
`relevant to the interpretation of the patent claims) and then set a trial date, which it later rescheduled.
`Id. at *3-4, *7. In declining to institute IPR, the Board explained that
`the District Court case is ongoing, trial is scheduled to begin two months before
`we would reach a final decision in this proceeding, the District Court has
`expended effort resolving substantive issues in the case, the identical claims are
`challenged based on the same prior art in both the Petition and in the District
`Court, and the defendant in District Court and the Petitioner here are the same
`party.
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`Id. at *7.
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`60.
`The Board subsequently applied the NHK-Fintiv rule to deny IPR petitions filed five
`months after service of the complaint in the pending infringement action in Cisco Systems, Inc. v.
`Ramot at Tel Aviv University Ltd. No. IPR2020-00122, 2020 WL 2511246 (P.T.A.B. May 15, 2020);
`No. IPR2020-00123, 2020 WL 2511247 (P.T.A.B. May 15, 2020). Based on the scheduled trial date
`in pending infringement litigation, overlap in substantive issues, and the absence of a stay in the
`district court, the Board assumed that proceeding with IPR would “duplicate effort” in the litigation,
`Ramot, No. IPR2020-00122, 2020 WL 2511246, at *4—even though the district court had denied a
`stay “without prejudice” in light of its “established practice” to entertain stay requests only after the
`Board institutes IPR, id. at *3—and denied Cisco’s IPR petitions to avoid “an inefficient use of
`Board, party, and judicial resources,” id. at *5; see also Ramot, No. IPR2020-00123, 2020 WL
`2511247, at *5.
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`No. 20-cv-6128-EJD
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