Paper 12
`Trials@uspto.gov
`Date: August 14, 2020
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SEVEN NETWORKS, LLC,
`Patent Owner.
`____________
`
`IPR2020-00180
`Patent 9,648,557 B2
`____________
`
`
`
`Before THU A. DANG, KARL D. EASTHOM, and
`JONI Y. CHANG, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
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`IPR2020-00180
`Patent 9,648,557 B2
`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`an inter partes review of claims 1–28 (the “challenged claims”) of U.S.
`Patent No. 9,648,557 B2 (Ex. 1001, “the ’557 patent”). Petitioner filed a
`Declaration of Patrick Traynor, Ph.D. (Ex. 1003) with its Petition. Patent
`Owner, Seven Networks, LLC (“Patent Owner”), filed a Preliminary
`Response (Paper 8, “Prelim. Resp.”). The parties filed additional briefing to
`address the Board’s discretionary authority to deny a petition based on a
`parallel district court proceeding under 35 U.S.C. § 314(b). Paper 10 (“Pet.
`Prelim. Reply”); Paper 11 (“PO Prelim. Sur-reply”).
`We have authority to determine whether to institute an inter partes
`review (“IPR”). See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35
`U.S.C. § 314(a), we may not authorize an inter partes review unless the
`information in the Petition and the Preliminary 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.” For the reasons that follow,
`we institute an inter partes review as to the challenged claims of the ’557
`patent on all grounds of unpatentability presented.
`I. BACKGROUND
`Real Parties-in-Interest
`Petitioner identifies Apple Inc. as the real party-in-interest. Pet. 70.
`Related Proceedings
`The parties identify SEVEN Networks, LLC v. Apple Inc., No. 2:19-
`cv-00115 (E.D. Tex.) (“District Court Action” or “District Court”) as a
`related matter involving the ’557 patent. Pet. 70; Paper 5.
`The ’557 patent
`C.
`The ’557 patent describes “[a] method of selecting a network from a
`plurality of available access networks.” Ex. 1001, code (57). A user device
`
`B.
`
`A.
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`IPR2020-00180
`Patent 9,648,557 B2
`can execute multiple applications having different respective link metrics,
`including quality of service (QoS) requirements. Id. at 2:46–54; 6:36–63.
`“[A] profile of applications supported by the [user equipment (UE)] may be
`used for connectivity and handover decisions, for example latency
`requirements, [and] bandwidth requirements.” Id. at 7:4–7. “A radio link
`selection request/Indicator function based on priority parameters or profiles
`may be used to query which radio link should be used for a particular
`application” and “[t]he Indicator can also be event triggered and can signal
`to the IMS services that a change of domain should be made for a certain
`application or for all applications.” Id. at 10:54–67.
`The ’557 patent provides for “connections to multiple access networks
`simultaneously depending upon handset use cases supported. For example,
`voice call via cellular services may be provided while email is downloading
`via WLAN.” Ex. 1001, 8:35–39 (emphasis added).
`Illustrative Claim 1
`D.
`Of the challenged claims, independent claim 1, recites a “[a] method
`of operating a mobile device,” and independent claim 14 recites “[a] mobile
`device.” Claims 1 and 14 recite materially similar limitations. Remaining
`challenged claims 2–14 and 15–28 depend or ultimately depend from claim
`1 or claim 14.
`Claim 1 illustrates the challenged claims at issue:
`1. [1.P] A method of operating a mobile device comprising:
`
`[1.1] connecting to a WIFI network and a cellular network;
`[1.2] displaying an indication of availability of the WIFI
`network and the cellular network;
`[1.3] accessing data through the WIFI network in response
`to an application request from an application executing on the
`mobile device;
`
`
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`IPR2020-00180
`Patent 9,648,557 B2
`[1.4] detecting a first condition indicative of a quality of
`the WIFI network;
`[1.5] detecting, in response to a subsequent application
`request and before or at a time of receiving a response to the
`subsequent application request, a second condition indicative of
`a time responsiveness of the WIFI network;
`[1.6] evaluating user settings, wherein the user settings
`include a roaming rule, a connectivity rule, and an application
`profile of the application;
`[1.7] in response to detecting the first condition and the
`second condition and evaluating the user settings, determining a
`time responsiveness of the cellular network; and
`[1.8] based on the detected first condition and detected
`second condition,
`the evaluated user settings,
`the
`time
`responsiveness of the cellular network, and the application
`executing on the mobile device, sending the subsequent
`application request through the cellular network in response to
`the [subsequent] application request executing on the mobile
`device,
`[1.9] wherein requests from another application executing
`on the mobile device continue to access data through the WIFI
`network.
`Ex. 1001, 14:1–34.1
`
`
`1 See Ex. 1001 (Certificate of Correction inserting subsequent before
`“application” in claims 1 and 14).
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`IPR2020-00180
`Patent 9,648,557 B2
`The Asserted Grounds
`E.
`Petitioner challenges claims 1–28 of the ’557 patent on the following
`grounds (Pet. 2):
`
`Claims Challenged
`
`1–27
`
`6, 19
`
`7, 20
`
`8, 9, 21, 22
`
`11, 24
`
`28
`
`
`
`35 U.S.C.
`§
`1032
`
`References
`
`White,3 Falardeau4
`
`103
`
`103
`
`103
`
`103
`
`103
`
`White, Falardeau, Chitrapu5
`
`White, Falardeau, Li6
`
`White, Falardeau, Zehavi7
`
`White, Falardeau, Shell8
`
`White, Falardeau, Konicek9
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. For purposes of
`institution, the ’557 patent contains a claim with an effective filing date
`before March 16, 2013 (the effective date of the relevant amendment), so the
`pre-AIA version of § 103 applies.
`3 White et al., US 7,539,175 B2, issued May 26, 2009 (Ex. 1004).
`4 Falardeau, US 7,620,065 B2, issued Nov. 17, 2009 (Ex. 1005).
`5 Chitrapu, US 2003/0223395 A1, published Dec. 4, 2003 (Ex. 1006).
`6 Li et al., US 2004/0192312 A1, published Sept. 30, 2004 (Ex. 1007).
`7 Zehavi et al., US 7,613,171 B2, issued Nov. 3, 2009 (Ex. 1008).
`8 Shell et al., US 6,826,762 B2, issued Nov. 30, 2004 (Ex. 1009).
`9 Konicek et al., US 8,880,047 B2, issued Nov. 4, 2014 (Ex. 1010).
`
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`IPR2020-00180
`Patent 9,648,557 B2
`II. DISCRETION TO DENY INSTITUTION UNDER § 314(a)
`Regarding the parallel District Court Action (supra Section I.B),
`Patent Owner argues “[t]he circumstances here present an even clearer case
`for non-institution under 35 U.S.C. § 314(a) than the circumstances that
`warranted it in NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752,
`Paper 8 [at] 20 (PTAB Sept. 12, 2018) (‘NHK’) (precedential).” Prelim.
`Resp. 6.
`In NHK, the Board declined to institute inter partes review, in part,
`because “under the facts and circumstances,” a review “would be an
`inefficient use of Board resources,” given the status of a parallel district
`court proceeding between the same parties. NHK, Paper 8 at 20. The Board
`considered the following factors in NHK: (1) based on the district court’s
`schedule, the district court’s trial would conclude “before any trial on the
`[p]etition concludes”; and (2) the petitioner relied on the “same prior art and
`arguments” as its district court invalidity contentions, so the Board would
`“analyze the same issues” as the district court. Id. at 19–20.
`As with other non-dispositive factors considered for institution under
`§ 314(a), the Board weighs an early trial date as part of a “balanced
`assessment of all relevant circumstances in the case, including the merits.”
`Patent Trial and Appeal Board Consolidated Trial Practice Guide 58 & n.2
`(Nov. 2019), https://www.uspto.gov/TrialPracticeGuideConsolidated
`(“CTPG”) (discussing follow-on petitions and parallel proceedings, citing
`NHK and General Plastic Co. v. Canon Kabushiki Kaisha, IPR2016-01357,
`Paper 19 (PTAB Sept. 6, 2017) (precedential)); see Abbott Vascular, Inc. v.
`FlexStent, LLC, IPR2019-00882, Paper 11 at 31 (PTAB Oct. 7, 2019)
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`IPR2020-00180
`Patent 9,648,557 B2
`(declining to adopt a bright-line rule that an early trial date alone requires
`denial in every case).
`Non-dispositive factors relate 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. See Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (Order analyzing
`NHK issues) (precedential) (“Fintiv”). Overlap among these factors often
`exists and some facts may be relevant to more than one factor. See id.
`Therefore, in evaluating the factors, the Board holistically views whether
`denying or instituting review best serves the efficiency and integrity of the
`system. See CTPG at 58 (quoting 35 U.S.C. § 316(b)); Fintiv, Paper 11 at 6.
`The precedential Fintiv order lists the following factors for
`consideration “when the patent owner raises an argument for discretionary
`denial under NHK due to an earlier trial date”: 1) whether a stay exists or is
`likely to be granted if a proceeding is instituted; 2) proximity of the court’s
`trial date to the Board’s projected statutory deadline; 3) investment in the
`parallel proceeding by the court and 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. See Fintiv, Paper 11 at 5–16.
`Factor 1–Likelihood of Stay
`1.
`The parties do not present persuasive record evidence or argument
`that the parties requested a stay or as to the District Court’s input regarding
`the likelihood of a stay. Petitioner cites decisions from the Eastern District
`of Texas and asserts that institution “greatly increases the likelihood of a
`
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`IPR2020-00180
`Patent 9,648,557 B2
`District Court stay.” See Pet. Prelim. Reply 4. Patent Owner relies on other
`decisions from the Eastern District of Texas denying stays in an attempt to
`demonstrate a likelihood of a denial of a motion to stay. See PO Prelim.
`Sur-reply 2–4. The cases cited by the parties show that judges grant stays
`based on the facts of each specific case as presented in the briefs by the
`parties. See Pet. Prelim. Reply 4; PO Prelim. Sur-reply 2–4. The parties fail
`to show sufficiently how any of the cited decisions impact any potential stay
`decision for the instant District Court Action. Accordingly, Fintiv factor 1
`weighs evenly for each party.
`Factor 2–Trial Date Versus FWD Due Date
`2.
`Patent Owner notes that “[t]he trial is scheduled to begin on
`November 2, 2020, 9½ months before the August 18, 2021 [final written
`decision (FWD)] deadline, and that is after the parties already pushed back
`the trial date due to COVID-19.” PO Prelim. Sur-Reply 4; see also Ex.
`1040, 1 (District Court scheduling order granting joint motion to extend due
`dates by forty-five days because of the “COVID-19” “pandemic,” including
`extending jury trial date to November 2, 2020).
`Petitioner contends “there are eighteen . . . cases scheduled to begin
`jury selection on November 2” in the Eastern District of Texas, wherein,
`“given the inevitability of further COVID-19 outbreaks, further scheduling
`issues cannot be ruled out.” Pet. Prelim. Reply 5 (citing Ex. 1050, 1–9; Ex.
`1047, 1); see Ex. 1047, 1.
`When a district court’s trial date occurs before the projected statutory
`deadline, the Board generally weighs this factor in favor of exercising
`authority to deny institution under § 314(a). Fintiv, Paper 11 at 9. However,
`other variables here contribute to the uncertainty that the jury trial will occur
`
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`IPR2020-00180
`Patent 9,648,557 B2
`on November 2, 2020. First, as Petitioner points out, the Eastern District of
`Texas currently lists eighteen separate trials scheduled to begin on
`November 2, 2020. Pet. Prelim. Reply 5; Ex. 1050, 1–9. Second, the
`coronavirus pandemic already has disrupted the trial date once, and the
`situation continually evolves. See Ex. 1040 (District Court scheduling order
`moving the trial date from September 14, 2020 to November 2, 2020 due to
`COVID-19, based on a joint motion by the parties); Ex. 2002 (same); Ex.
`1047, 1.
`This parties’ previous agreement to extend scheduling order dates and
`uncertainty as to whether the trial will actually go forward on the presently
`scheduled date diminishes the extent to which this factor weighs in favor of
`exercising discretion to deny institution. See Sand Revolution II, LLC v.
`Continental Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at
`9–10 (June 16, 2020) (informative) (“because of the number of times the
`parties have jointly moved for and the district court agreed to extend the
`scheduling order dates . . . and the uncertainty that continues to surround the
`scheduled trial date, we find that this factor weighs marginally in favor of
`not exercising discretion to deny institution under 35 U.S.C. § 314(a)”).
`Even so, given the substantial gap of approximately nine and a half months
`between the trial date and the expected final written decision deadline in this
`proceeding, it is unclear, based on the present record, that the trial date
`would be delayed to a date after a final written decision in this proceeding as
`a result of COVID-19.
`Therefore, given that the District Court’s currently scheduled trial date
`falls roughly nine and half months prior to the projected statutory deadline
`for a final written decision, but accounting for the previous agreement to
`
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`IPR2020-00180
`Patent 9,648,557 B2
`extend scheduling order dates and uncertainty as to whether the trial actually
`will start on the currently scheduled date, Fintiv factor 2 weighs moderately
`in favor of Patent Owner.10
` Factor 3–Investment in Proceedings
`3.
`Patent Owner contends that in the District Court Action, the claim
`construction hearing order issued on March 31, 2020, the parties filed final
`claim and validity assertions, and discovery will close and service of pretrial
`disclosures will be filed before the institution deadline. See Prelim. Resp.
`6–8, 24–25. According to Patent Owner, “Petitioner’s delay in bringing the
`present petition further weighs against institution.” Id. at 25. Patent Owner
`also argues that the prior art references supporting the Petition “were not
`newly discovered.” PO Prelim. Sur-reply 6. Patent Owner also asserts
`“[t]he parties and district court have . . . invested incredible amounts of time
`and effort.” Id. at 6
`The District Court’s scheduling order shows the following deadlines
`passed: fact discovery and filing of motions to compel discovery, service of
`
`
`10 Fintiv does not necessarily decide whether the length of time between the
`relative trial dates plays a binary or sliding-scale role in weighing this factor.
`See id. However, a sliding scale for each factor aids the panel’s analysis in
`weighing the factors holistically. Petitioner could have filed the Petition on
`the statutory deadline of April 11, 2020, instead of December 18, 2019,
`pushing the relative trial dates almost four months farther apart. See Pet.
`Prelim. Reply 5–7 (discussing reasons for some delay as based on filing
`twenty-one petitions and analyzing 550 claims across sixteen patents
`asserted against Petitioner); Prelim. Resp. 22–23 (discussing timing); Ex.
`1052, 194 (listing April 10, 2019 on the Complaint); Pet. 69 (referring to
`“the statutory bar date of April 11, 2020”). Without explicitly considering
`the Petition’s filing date as a fairness consideration under factor 2,
`considering the filing date relative to potential filing dates helps to analyze
`factor 2 on a sliding scale based on relative trial dates.
`
`10
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`IPR2020-00180
`Patent 9,648,557 B2
`disclosures for expert witnesses by the party with the burden of proof,
`service of disclosures for rebuttal expert witnesses, expert discovery, filing
`of dispositive motions, and filing of motions to strike expert testimony,
`including Daubert motions, and response to dispositive motions and Daubert
`motions (August 6, 2020), and service of pretrial disclosures (August 13,
`2020). See Ex. 1040. Upcoming deadlines include the following: service of
`objections to disclosures and rebuttal disclosures (August 24, 2020), service
`of objections to rebuttal disclosures (September 3, 2020), filing of motions
`in limine (September 3, 2020), filing of a joint pretrial order (September 17,
`2020), the pretrial conference (September 24, 2020), and jury trial
`(November 2, 2020). Id.
`The record shows that the parties and courts invested significant
`resources in the parallel district court litigation albeit with respect to ten
`patents, with some portion of the work relevant to patent validity of the ’557
`patent. However, the District Court did not construe any claim terms for the
`’557 patent. See Ex. 1039. Also, as determined in the next section, based on
`Petitioner’s stipulation here, no further overlap or investment exists in terms
`of the grounds in the IPR here and the invalidity challenges in the District
`Court Action. See Ex. 1045 (Petitioner stipulating that it will not pursue the
`grounds based on White and Falardeau in the District Court).
`Petitioner’s timing in filing the Petition also bears on this factor. See
`supra note 10. If a 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
`
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`IPR2020-00180
`Patent 9,648,557 B2
`aware of the claims being asserted, this fact has weighed against exercising
`the authority to deny institution.” Id.
`Here, the timing of the filing of this Petition mitigates somewhat the
`investment in the District Court litigation by the parties. Petitioner filed the
`Petition a week shy of four months before the statutory deadline for filing an
`inter partes review under 35 U.S.C. § 315(b). See Prelim Resp. 24
`(asserting Petitioner waited “over eight months after the complaint was
`served on April 11, 2019” to file its Petition) (citing Ex. 2009 (Complaint));
`supra note 10.
`With sixteen patents and over five-hundred fifty claims asserted
`against Petitioner, and with Petitioner responding with fourteen petitions,
`including this Petition, filed prior to Patent Owner’s initial identification
`narrowing the number of asserted claims, and six of the remaining seven
`petitions filed within one month of it, Petitioner filed the instant Petition in a
`reasonably timely fashion. See Pet. Prelim. Reply 6 (“It is no wonder that
`Apple needed the time taken to prepare its twenty-one petitions, as it was
`faced with the immense burden of understanding the five-hundred fifty
`claims contained in these patents and the potential prior art that might be
`relevant to them.”); Ex. 1048, Ex. 1052 (Complaint). In other words, even
`though the parties invested time and effort in the District Court Action,
`Petitioner acted diligently and without much delay in exercising its statutory
`right to file a Petition and other petitions, mitigating against the investment
`(which a District Court stay otherwise could have diminished). See Fintiv,
`Paper 11 at 11.
`Considering the above-noted facts, including the time invested in the
`by the parties and court in the District Court Action, the extent to which the
`
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`IPR2020-00180
`Patent 9,648,557 B2
`investment in the district court proceeding relates to issues of patent validity,
`and the timing of the filing of the Petition, this factor weighs slightly in
`favor of Patent Owner.
`Factor 4–Overlap of Issues
`4.
`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.
`Patent Owner argues that Petitioner relies upon substantially the same
`art and arguments in both the Petition and the District Court Action under
`the same claim construction standard. Prelim. Resp. 5, 8–11. Petitioner
`“asks the Board to consider the unique challenges raised in the Petition.”
`Pet. Prelim. Reply 8.
`Petitioner argues that only two claims overlap between the district
`court proceeding and the instant IPR proceeding. Pet. Prelim. Reply 8 &
`n.3. The District Court will not address the validity of the 26 dependent
`claims challenged in this IPR proceeding, because Patent Owner limited its
`infringement allegations based on the ’557 patent to independent claims 1
`and 14. Id.; Ex. 2008 (Patent Owner’s claim reduction notice); PO Prelim.
`Sur-reply 9.
`Patent Owner counters that the twenty-six additional dependent claims
`challenged here but not in the District Court do not justify institution
`because Patent Owner “stipulates that if the Board declines to institute
`[under Fintiv], Patent Owner will not assert any of the IPR-only claims of
`the ’557 patent against [Petitioner] if the asserted ’557 claims are finally
`
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`IPR2020-00180
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`adjudicated to be invalid or not infringed in the District Court Action.” PO
`Prelim. Sur-reply 9.
`However, Petitioner asserts that it “will continue to create innovative
`new products, and desires Board review of these claims, so as to prevent
`their future assertion by [Patent Owner] in potential serial litigation.” Pet.
`Prelim. Reply 8 n.3. Patent Owner’s stipulation does not apply to
`Petitioner’s customers that may use those new products. See PO Prelim.
`Sur-reply 9. Therefore, even though Patent Owner’s stipulation may weigh
`in favor of denial in some instances, it bears little weight here because the
`District Court will not address the twenty-six dependent claims challenged
`in this IPR proceeding and Petitioner asserts a colorable interest in resolving
`these twenty-six claims.
` Regarding independent claims 1 and 14, Petitioner argues that it “has
`eliminated any risk of duplicated effort by stipulating to counsel for [Patent
`Owner] that, if the Board institutes the pending Petition, [Petitioner] will not
`pursue district court invalidity challenges based on the pending Petition’s
`asserted grounds.” Pet. Prelim. Reply 8 (citing Ex. 1045, 1). Petitioner’s
`stipulation states “[Petitioner] hereby stipulates that if the Patent Trial and
`Appeal Board (PTAB) institutes one or more IPR petitions on the exact
`same grounds presented (a table of which is reproduced below), then
`[Petitioner] will not pursue those same instituted grounds in the above-
`captioned litigation, 2:19-cv-115.” Ex. 1045, 1, 2 (specifying, inter alia,
`“§103: White and Falardeau” with respect to claims 1–28 as asserted in the
`IPR).
`Patent Owner responds that Petitioner’s stipulation “actually
`increase[s] the overlap between the District Court Action and the IPRs”
`
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`IPR2020-00180
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`because “[a]ny difference, no matter how trivial, falls outside this
`‘stipulation.’” PO Prelim. Sur-reply 8.
`However, Petitioner’s stipulation is similar to the stipulation in Sand
`Revolution, which states “if the IPR is instituted, Petitioner will not pursue
`the same grounds in the district court litigation” Compare Ex. 1045, 1–3,
`with Sand Revolution, Paper 24 at 11–12. Like in Sand Revolution,
`Petitioner’s stipulation here “mitigates to some degree the concerns of
`duplicative efforts between the district court and the Board, as well as
`concerns of potentially conflicting decisions.” Sand Revolution, Paper 24 at
`12. In addition, the District Court substantially limited Petitioner’s
`opportunity to increase or add invalidity grounds there by its order requiring
`the parties to “streamline the issues” and limiting Petitioner to “no more than
`a total of forty-five (45) references” across the ten asserted patents. Ex.
`2007 (“Order Focusing Patent Claims and Prior Art”), 1. Petitioner already
`reached the limit of forty-five references imposed by the District Court. Ex.
`1041. Accordingly, Petitioner cannot simply add another reference to its
`White and Falardeau ground as an attempted end-around to its clear
`stipulation abandoning the White and Falardeau ground without deleting
`another reference from what appears to be a carefully tailored invalidity
`defense across ten patents-in-suit and thirty-six asserted claims. See id.
`Therefore, Petitioner’s stipulation minimizes the chance of potentially
`conflicting findings in the two proceedings.
`Also, as noted in the previous section, the District Court did not
`construe any claim terms for the ’557 patent. Ex. 1039. In addition, Patent
`Owner raises what amounts to a different claim construction issue here (i.e.,
`based on prosecution history, see infra Section III.D.3) that it did not pursue
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`IPR2020-00180
`Patent 9,648,557 B2
`in the District Court. See Ex. 1039, 4 (“The parties note that they submit no
`disputed terms as to the . . . the ’557 Patent.”); Prelim. Resp. 35 (essentially
`arguing prosecution history narrows the scope of challenged claim 1 (citing
`Ex. 1002 (prosecution history related to challenged claim 1)).11 Therefore,
`even though the District Court issued a claim construction order for twelve
`other patents-in-suit (Ex. 1039), any claim construction for the ’557 patent
`also does not raise a colorable chance of conflicting findings in the two
`proceedings.
`Accordingly, Fintiv factor 4 weighs moderately in favor of Petitioner.
`Factor 5–Identity of Parties
`5.
`The District Court Action and the trial here involve the same parties.
`See Pet. Prelim. Reply 10–11; PO Prelim. Sur-reply 9–10. “If a petitioner is
`unrelated to a defendant in an earlier court proceeding, the Board has
`weighed this fact against exercising discretion to deny institution under
`NHK.” Fintiv, Paper 11 at 13–14 (emphasis added).12
`Accordingly, Fintiv factor 5 weighs slightly in favor of Patent Owner.
`
`
`11 Petitioner construes the same two terms (“roaming rule” and “connectivity
`rule”) according to their “plain and ordinary meaning[s]” that Patent Owner
`initially construed in the District Court but then did not pursue further. See
`Pet. 2–3; Ex. 1014, 12; Ex. 1039, 3.
`12 At least one Board member observed that Fintiv “says nothing about
`situations in which the petitioner is the same as, or is related to, the district
`court defendant.” Cisco Sys., Inc. v. Ramot at Tel Aviv Univ. Ltd., IPR2020-
`00122, Paper 15 at 10 (PTAB May 15, 2020) (APJ Crumbley, dissenting).
`According to the dissent in Cisco, if “the factor weighs in favor of denial if
`the parties are the same,” this could “tip the scales against a petitioner
`merely for being a defendant in the district court.” Id. at 11. This “would
`seem to be contrary to the goal of providing district court litigants an
`alternative venue to resolve questions of patentability.” Id.
`
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`Factor 6–Other Circumstances
`6.
`This final Fintiv factor represents a catch-all for any other relevant
`circumstances. Whether to exercise discretion to deny institution under
`§ 314(a) involves “a balanced assessment of all relevant circumstances in the
`case, including the merits.” CTPG 58.
`First, we take into account the fact that the Office already has
`instituted proceedings challenging other patents in dispute in the co-pending
`parallel litigation— IPR2020-00156 (instituted June 18, 2020), IPR2020-
`00157 (instituted June 18, 2020), IPR2020-00188 (instituted June 11, 2020),
`IPR2020-00235 (instituted July 28, 2020), IPR2020-00255 (instituted July
`28, 2020), and IPR2020-00285 (instituted July 28, 2020). It would be
`inefficient to exercise discretion to deny institution of this Petition, which
`we determine meets the statutory threshold for institution, after having
`instituted petitions challenging other patents in dispute in the parallel
`proceeding.
`Second, based on the analysis above, including consideration of the
`parties’ arguments in deciding the merits of the Petition and the Preliminary
`Response, Petitioner presents a strong showing on the merits here. In
`summary, on this preliminary record, Petitioner shows that most of the
`independent claim 1 and 14 limitations read on White’s system and include
`routine network data gathering functions to allow a mobile user to access
`well-known WiFi and cellular networks depending on network conditions
`and application requirements. See infra Section III.D.3; Pet. 9–38.
`To the extent White does not disclose certain limitations, the claims
`largely involve a “combination of familiar elements according to known
`methods . . . yield[ing] predictable results.” KSR Int’l Co. v. Teleflex Inc.,
`
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`IPR2020-00180
`Patent 9,648,557 B2
`550 U.S. 398, 416 (2007) (“The combination of familiar elements
`according to known methods is likely to be obvious when it does no more
`than yield predictable results.”).
`By way of summary as to the combination, on this preliminary record,
`Petitioner provides good reasons for implementing the teachings of
`Falardeau’s similar user settings, display features, and WiFi and cellular
`network teachings, in White’s system, including to enhance user experience
`by allowing the user to trouble shoot, monitor and track changes, control
`costs, provide smooth data flows without interruption, and manually select
`desired networks, using known techniques to yield predictable results. See
`infra Section III.D.3; Pet. 8, 10–12, 22–24.
`Another circumstance tilts in favor of institution. As indicated above,
`the District Court ordered the parties to reduce issues, including the number
`of claims asserted and the number of prior art challenges to the asserted
`claims. See Ex. 2007. The District Court Action initially involved sixteen
`patents-in-suit and multiple issues, including all twenty-eight claims of the
`’557 patent. Ex. 1052 (complaint); Ex. 1043 (invalidity contentions). After
`its complaint, pursuant to the District Court order, Patent Owner narrowed
`its infringement assertions to seventy-five claims and sixteen patents-in-suit,
`including three claims of the ’557 patent. Ex. 1048. Thereafter, pursuant to
`the District Court’s order, Patent Owner narrowed its infringement
`assertions further to thirty-six claims and ten patents-in-suit, including two
`claims of the ’557 patent. Ex. 2008. Accordingly, pursuant to the District
`Court’s order, Petitioner narrowed its prior art challenges to forty-five prior
`art references to challenge the ten patents-in-suit. Ex. 1041.
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`IPR2020-00180
`Patent 9,648,557 B2
`This narrowing of issues, including the number of patents-in-suit,
`claims, and prior art invalidity challenges, evidences the complexity of
`multiple patents and issues in the District Court Action. An IPR trial here
`avoids potentially complicated and overlapping jury issues of ten patents,
`while allowing the panel to focus on multiple issues in depth that involve
`only the ’557 patent. Therefore, this inter partes trial will provide the
`parties with an in-depth analysis of the ’557 patent, providing a full record
`that will enhance the integrity of the patent system.
`Accordingly, factor 6 weighs strongly in favor of Petitioner.
`7. Conclusion on § 314(a) Discretionary Denial
`Under Fintiv, the Board takes “a holistic view of whether efficiency
`and integrity of the system are best served by denying or instituting review.”
`Fintiv, Paper 11 at 6. As discussed above, factors 2, 3, and 5, respectively,
`moderately, slightly, and slightl