`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`SEVEN NETWORKS, LLC,
`Patent Owner.
`____________
`
`Case IPR2020-00235
`Patent 10,091,734
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ......................................................................................... 1
`
`INSTITUTION SHOULD BE DENIED BECAUSE A JURY TRIAL
`BETWEEN THE PARTIES WILL TRY VALIDITY ON SIMILAR
`GROUNDS 9 MONTHS BEFORE THIS IPR WOULD CONCLUDE. . 3
`
`A.
`
`B.
`
`C.
`
`The District Court Action Is Well Advanced And Set To Be Tried
`Nine Months Before Any Final Written Decision Would Be Due. ...... 5
`
`Petitioner Relies Upon Substantially The Same References,
`Combinations, And Arguments, Under The Same Construction
`Standard, In Both The District Court Action And This IPR. ................ 6
`
`Institution Should Be Denied Under NHK Because The District
`Court Jury Will Decide Validity Just Six Months From Today. .......... 9
`
`D.
`
`The Apple v. Fintiv Factors Support Denial Of Institution. ................ 13
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Fintiv Factor # 1: no “evidence exists that” a stay in district
`court “may be granted if a proceeding is instituted” here. ....... 13
`
`Fintiv Factor # 2: “the court’s trial date” comes long before the
`“projected statutory deadline for a final written decision” ....... 18
`
`Fintiv Factor # 3: there is massive “investment in the parallel
`proceeding by the court and the parties” .................................. 18
`
`Fintiv Factor # 4: there is substantial “overlap between issues
`raised in the petition and in the parallel proceeding” ............... 19
`
`Fintiv Factor # 5: “the petitioner and the defendant in the
`parallel proceeding are the same party” ................................... 22
`
`Fintiv Factor # 6: “other circumstances that impact the Board’s
`exercise of discretion, including the merits” favor denial. ....... 23
`
` i
`
`
`
`
`
`III. PETITIONER FAILS TO SHOW THAT ITS PROPOSED GROUNDS
`SHOW A REASONABLE LIKELIHOOD OF
`UNPATENTABILITY. ............................................................................... 24
`
`A. A POSITA Would Not Have Been Motivated To Combine Douglis
`And Van Milligan As Proposed. ......................................................... 27
`
`1.
`
`2.
`
`3.
`
`4.
`
`Douglis And Van Milligan Function Based On Different
`Operating Principles. ................................................................ 28
`
`Petitioner Relies On The Combination Of Douglis And Van
`Milligan For Multiple Limitations. .......................................... 31
`
`The Ordinary Artisan Would Not Have Been Motivated To
`Combine These Outwardly Incompatible Systems
`As Proposed. ............................................................................. 33
`
`Absent Hindsight, The POSITA Would Not Have Combined
`These Two Systems That Efficiently Operate Based On
`Different Principles. ................................................................. 39
`
`B.
`
`Petitioner’s Proposed Combination Fails To Disclose Outgoing
`Application Data That Are Blocked On An Application-By-
`Application “When The Power Save Mode Is Exited.” ..................... 41
`
`IV. CONCLUSION ............................................................................................ 49
`
`
`
` ii
`
`
`
`
`
`
`COURT CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Aspex Eyewear, Inc. v. Marchon Eyewear, Inc.,
`672 F.3d 1335 (Fed. Cir. 2012) ............................................................................ 21
`
`Grit Energy Sols., LLC v. Oren Techs., LLC,
`--- F.3d ---- (Fed. Cir. 2020),
`2020 U.S. App. LEXIS 13875 ............................................................................. 47
`
`Intellectual Ventures I LLC v. T Mobile USA, Inc.,
`2:17-CV-00577-JRG, Dkt. 255 (E.D. Tex. Dec. 13, 2018) ............... 14, 15, 16, 17
`
`Intellectual Ventures II LLC v. FedEx Corp.,
`2017 U.S. Dist. LEXIS 176813 (E.D. Tex. Oct. 24, 2017) .................................. 14
`
`In re Katz Interactive Call Processing Pat. Litig.,
`639 F.3d 1303 (Fed. Cir. 2011) ............................................................................ 21
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) ...................................................................... 38, 40
`
`KSR Int’l Corp. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ............................................................................................. 33
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ............................................................................ 33
`
`Metalcraft of Mayville, Inc. v. Toro Co.,
`848 F.3d 1358 (Fed. Cir. 2017) ............................................................................ 27
`
`Nichia Corp. v. Everlight Ams., Inc.,
`855 F.3d 1328 (Fed. Cir. 2017) ............................................................................ 40
`
`Novo Nordisk A/S v. Caraco Pharm. Labs., Ltd.,
`719 F.3d 1346 (Fed. Cir. 2013) ............................................................................ 39
`
`Nuance Comm’ns, Inc. v. Abbyy USA Software House, Inc.
`813 F.3d 1368 (Fed. Cir. 2016) ............................................................................ 21
`
` iii
`
`
`
`
`
`Senju Pharm. Co. v. Apotex Inc.,
`746 F.3d 1344 (Fed. Cir. 2014) ............................................................................ 21
`
`St. Lawrence Communications LLC, v. ZTE Corp.,
`2017 U.S. Dist. LEXIS 84290 (E.D. Tex. Jan. 17, 2017) .............................. 14, 16
`
`WesternGeco LLC v. ION Geophysical Corp.,
`889 F.3d 1308 (Fed. Cir. 2018) .............................................................................. 3
`
`
`
`AGENCY DECISIONS
`
`Acclarent, Inc. v. Albritton,
`IPR2018-0068, Paper 12 (PTAB Jan. 31, 2019) ............................................ 34, 35
`
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`(precedential) ........................................................................ 1, 5, 13, 18, 19, 20, 23
`
`Celltrion, Inc. v. Biogen, Inc.,
`IPR2016-016141, Paper 65 (PTAB Feb. 21, 2018) ............................................. 49
`
`Comcast Cable Communications LLC v. Rovi Guides, Inc.,
`IPR2017-00217, Paper 40 (PTAB May 14, 2018) ............................................... 40
`
`Edwards Lifesciences Corp. v. Evalve, Inc.,
`IPR2019-01479, Paper 7 (PTAB Feb. 26, 2020) ............................................. 9, 22
`
`E-One, Inc. v. Oshkosh Corp.,
`IPR2019-00161, Paper 16 (PTAB May 15, 2019) ............................................... 11
`
`Intel Corp. v. VLSI Technology LLC,
`IPR2020-00106, Paper 17 (PTAB May 5, 2020) ................................................. 19
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00003, Paper 7 (PTAB Oct. 25, 2012)
`(representative) ....................................................................................................... 9
`
`Magellan Midstream Partners L.P. v. Sunoco Partners Mktg. & Terminals L.P.,
`IPR2019-01445, Paper 12 (PTAB Jan. 22, 2020) ................................................ 12
`
` iv
`
`
`
`
`
`Microsoft Corp. v. IpLearn-Focus LLC,
`IPR2015-00095, Paper 33 (PTAB Apr. 11, 2016) ............................................... 47
`
`Mylan Pharms., Inc., v. Bayer Intellectual Prop. GmbH,
`IPR2018-01143, Paper 13 (PTAB Dec. 3, 2018) ................................................. 12
`
`Next Caller Inc. v. TRUSTID Inc.,
`IPR2019-00961, Paper 10 (PTAB Oct. 16, 2019) ......................................... 11, 22
`
`NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018)
`(precedential) .......................................................................................... 5, 6, 10, 23
`
`Oticon Medical AB v. Cochlear Ltd.,
`IPR2019-00975, Paper 15 (PTAB Oct. 16, 2019)
`(precedential) .................................................................................................. 10, 11
`
`Samsung Elecs. Am., Inc., v. Uniloc 2017 LLC,
`IPR2019-01219, Paper 7 (PTAB Jan. 9, 2020) ............................................ 8, 9, 12
`
`Samsung Elecs. Co. Ltd. v. Kaist IP US LLC,
`IPR2017-01046, Paper 12 (PTAB Oct. 2, 2017) ........................................... 27, 34
`
`Samsung Elecs. Co. Ltd. v. Kaist IP US LLC,
`IPR2017-01046, Paper 14 (PTAB, Jan. 22, 2018) ......................................... 27, 34
`
`Sand Revolution II, LLC, v. Continental Intermodal Group–Trucking LLC,
`IPR2019-01393, Paper 12 (PTAB Feb. 5, 2020) ................................................. 12
`
`Thermo Fisher Scientific, Inc. v. Regents of Univ. of Cal.,
`IPR2018-01368, Paper 10 (PTAB Feb. 7, 2019) ................................................. 12
`
`Unified Patents Inc. v. Velocity Patent LLC,
`IPR2017-01723, Paper 10 (PTAB Jan. 19, 2018) ................................................ 24
`
`ZTE USA Inc. v. Fractus SA,
`IPR2018-01461, Paper 10 (PTAB Feb. 28, 2019) ......................................... 11, 22
`
`
`
`
`
` v
`
`
`
`
`
`STATUTES
`
`35 U.S.C. § 314(a) ........................................................................................... 5, 9, 25
`
`35 U.S.C. § 314(b) .................................................................................................. 17
`
`
`
`OTHER AUTHORITIES
`
`H. Rep. No. 112-98 (2011) ........................................................................................ 3
`
`
`
`
`
` vi
`
`
`
`
`
`2001
`
`Reserved
`
`EXHIBIT LIST
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`Seven Networks, LLC v. Apple Inc., No. 2:19-CV-00115-JRG, Order
`on Amended Docket Control (Mar. 27, 2020) [Amended Docket
`Control Order].
`
`Seven Networks, LLC v. Apple Inc., No. 2:19-CV-00115-JRG, Apple
`Inc.’s Notice Regarding Prior Art Reduction (Apr. 21, 2020) [Prior
`Art Reduction].
`
`Inter Partes Review Proceedings: A Fifth Anniversary Report,
`Perkins Coie LLP (Oct. 2017),
`https://www.perkinscoie.com/en/news-insights/inter-partes-review-
`proceedings-a-fifth-anniversary-report.html [2017 Report on Inter
`Partes Review Proceedings].
`
`Michelle Umberger & Lisa Koop, District Court Stays: a Review of
`the Past 12 Months, ManagingIP.com,
`https://www.perkinscoie.com/images/content/1/6/v2/166020/Managi
`ng-IP-PC-Feature.pdf [District Court Stays].
`
`Intellectual Ventures I LLC v. T Mobile USA, Inc., 2:17-CV-00577-
`JRG, Dkt. 255 (E.D. Tex. Dec. 13, 2018) [T-Mobile Case].
`
`Seven Networks, LLC v. Apple Inc., No. 2:19-CV-00115-JRG, Order
`Focusing Patent Claims and Prior Art (Jul. 31, 2019) [Order
`Focusing Patent Claims].
`
`Seven Networks, LLC v. Apple Inc., No. 2:19-CV-00115-JRG,
`Seven’s Notice Regarding Claim Reduction (Apr. 7, 2020) [Seven’s
`Notice Regarding Claim Reduction].
`
`Seven Networks, LLC v. Apple Inc., No. 2:19-CV-00115-JRG,
`Complaint (Apr. 10, 2019) [Complaint].
`
`2010
`
`Reserved
`
` vii
`
`
`
`
`
`2011
`
`2012
`
`RE: SEVEN v. Apple Motion to Amend DCO (Mar. 19, 2020)
`[Email from Apple’s counsel].
`
`Seven Networks, LLC v. Apple Inc., No. 2:19-CV-00115-JRG, Claim
`Construction Memorandum and Order (Mar. 31, 2020) [Markman
`Order].
`
` viii
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner asks this Board to institute trial on this Petition even though a
`
`district court jury trial will have adjudicated the validity of the same patent between
`
`the same parties nine months before the issuance of a final written decision in this
`
`matter, if instituted—in other words, just six months from the day this paper is filed.
`
`In particular, Petitioner and Patent Owner are parties to a currently pending district
`
`court litigation regarding the same patent, US 10,091,734 (the “Patent”). Even
`
`adjusting for the delay due to current COVID-19 pandemic, the district court case is
`
`scheduled to start trial in November 2020. The claim construction order has already
`
`issued in the district court case, and discovery in the district court should be complete
`
`before even the institution decision is issued in the IPR. More importantly, the
`
`district court trial will revolve around the same primary reference (hereinafter
`
`“Douglis”) that forms the basis of Petitioner’s IPR grounds. Thus, as discussed in
`
`more detail in this Patent Owner Preliminary Response (“POPR”), all factors
`
`generally considered by the Board, including under Apple Inc. v. Fintiv, Inc.,
`
`IPR2020-00019, Paper 11, 4-5 (PTAB Mar. 20, 2020) (precedential), support denial
`
`of institution of the Petition under 35 U.S.C. § 314(a) as a duplicative, wasteful
`
`parallel litigation. See § II, infra.
`
`The Petition also fails to meet the threshold for institution, however, even if it
`
`were considered on the merits. Petitioner proposes two grounds of review,
`
`
`
`1
`
`
`
`
`
`challenging claims 1-14 of the Patent (“Claims”). Pet., 2. Douglis is the Petition’s
`
`primary reference for both grounds. See generally Petition. As Douglis is
`
`fundamentally different from the Claims and fails to disclose many of their
`
`limitations, as this response will describe in detail, the Petition relies on importing
`
`multiple limitations from Van Milligan into Douglis’s system. Pet., 14-16; infra
`
`§ III.A.2. However, a POSITA would not have been motivated to combine Douglis
`
`and Van Milligan, as they are two systems that independently operate efficiently, but
`
`have conflicting operating principles. See § III.A.3. Petitioner provides no analysis
`
`regarding how these two systems would be combined in an operable manner. Nor
`
`would a POSITA be motivated to combine the two references, except by hindsight,
`
`and following the roadmap made by the inventors of the patent challenged in this
`
`case. See § III.A.4. As Petitioner relies on the combination of Douglis and Van
`
`Milligan for various limitations of all the Claims, including limitations 1.5 and 1.6
`
`of claim 1, this deficiency is more than sufficient to deny the Petition.
`
`Even if they were to be combined, however, Petitioner’s proposed
`
`combinations under both proposed grounds would fail to disclose the Claims. For
`
`example, both grounds rely on the combination of Douglis and Van Milligan for the
`
`disclosure of limitation 1.9 of claim 1, which recites that outgoing application data
`
`requests may be blocked by the user on an application by application basis “when
`
`the power save mode is exited.” Pet., 39-42; 64. However, as discussed in § III.B,
`
`
`
`2
`
`
`
`
`
`infra, the express teachings of both Douglis and Van Milligan disclose the opposite
`
`of what is claimed: they explicitly teach that no application execution is restricted
`
`when the power save mode is exited. Thus, neither Douglis, nor Van Milligan and
`
`nor their combination discloses or renders obvious this limitation.
`
`For these reasons, discussed in detail herein, the Petition should be denied,
`
`either under the Board’s discretionary authority under § 314(a) or on the merits.
`
`II.
`
`INSTITUTION SHOULD BE DENIED BECAUSE A JURY TRIAL
`BETWEEN THE PARTIES WILL TRY VALIDITY ON SIMILAR
`GROUNDS 9 MONTHS BEFORE THIS IPR WOULD CONCLUDE.
`
`IPRs were intended as a “complete substitute” for and an “alternative” to
`
`district court litigation for assessing §§ 102/103 validity disputes over prior art
`
`patents and printed publications. WesternGeco LLC v. ION Geophysical Corp., 889
`
`F.3d 1308, 1317 (Fed. Cir. 2018) (citing H. Rep. No. 112-98 at 48 (2011). Here, as
`
`Petitioner admits (Pet., 66-67), the Petition seeks review of the patentability of
`
`claims whose validity is also being tried in a court case between the same two parties.
`
`What Petitioner is more reticent to admit (Pet., 68) is that the jury is scheduled to
`
`hear and decide the validity of these claims in the District Court Action just six
`
`months from now, and at least nine months before the Board would reach a final
`
`decision if review were instituted. That is not an efficient use of Board resources or
`
`fair to Patent Owner, and institution in these circumstances would contradict Office
`
`policy and precedent.
`
`
`
`3
`
`
`
`
`
`Petitioner is energetically challenging this patent in SEVEN Networks, LLC v.
`
`Apple Inc., No. 2-19-cv-00115 (E.D. Tex.) (“District Court Action”). Contrary to
`
`Apple’s false suggestion that that Action “is still at an early phase,” Pet., 67, it is
`
`very far along. The claim construction order issued March 31, 2020, over four
`
`months before an institution decision in this case is due—by which time all
`
`discovery in the District Court Action is scheduled to be completed—and jury trial
`
`is scheduled to begin November 2, 2020.1 Thus, if this case were to be instituted,
`
`the Board’s final decision would be due over nine months after the jury trial. See
`
`§ II.A; see also § II.D.3.
`
`There is no significant difference in Petitioner’s validity or unpatentability
`
`defenses in the two forums. The primary reference relied on here is also relied on
`
`in almost all grounds to be tried in the District Court Action, and although Petitioner
`
`points to two secondary references it says are raised here but not in District Court, it
`
`does not identify any difference between their subject matter and the art raised in
`
`District Court, or any reason to reward Petitioner’s failure to raise them earlier in the
`
`District Court. See infra § II.B.
`
`
`1 Trial was moved from September 14, 2020 (Pet., 5) to November 2 at the
`
`parties’ request due to COVID-19. Ex. 2002 [Amended Docket Control Order].
`
`
`
`4
`
`
`
`
`
`The 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, 20 (PTAB Sept. 12, 2018) (“NHK”)
`
`(precedential). In NHK, the Board denied institution where, as here, the district court
`
`action was far along and set to be tried many months before the IPR’s final written
`
`decision, and the petitioner did not raise raise significantly different art and
`
`arguments in the two cases. Under NHK, the Board has consistently denied
`
`institution under these circumstances. It should here as well. See infra § II.C.
`
`The Board has formalized the application of NHK into a six-factor test set
`
`forth in Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`
`(precedential). Each Fintiv factor also strongly supports non-institution under
`
`§ 314(a). See infra § II.D.1-.6. Petitioner points instead to other, irrelevant factors,
`
`such as that the District Court is moving quickly and efficiently toward deciding
`
`these issues first, but these facts do not support institution. See § II.D.6.
`
`A. The District Court Action Is Well Advanced And Set To Be Tried
`Nine Months Before Any Final Written Decision Would Be Due.
`
`The decision regarding institution in this IPR will be due August 6, 2020, and
`
`if institution were granted, the final written decision would be due a year later.
`
`The District Court Action is scheduled for jury trial over nine months before
`
`that, November 2, 2020, less than three months after the institution decision
`
`
`
`5
`
`
`
`
`
`deadline. Ex. 2002 [Amended Docket Control Order]. Petitioner offers not even
`
`speculation that that date might move. Pet., 68.
`
`The District Court Action is already very far along and will be even farther
`
`along by the time of a decision whether to institute here. The claim construction
`
`order issued March 31, 2020 (Ex. 2012 [Markman Order]), over four months before
`
`a decision on institution is due. Similarly, under the current scheduling order, other
`
`events due in District Court before institution in this case include:
`
`Selected District Court Events Scheduled Prior To PTAB Institution Due
`(Ex. 2002 [District Court Amended Docket Control Order])
`Event
`Due Date
`Time Difference From
`Institution Deadline
`Occurred
`Occurred
`Occurred
`~2 months prior
`2 weeks prior
`2 weeks prior
`
`Claim Construction Order Issued
`Final Election Of Asserted Claims
`Final Election Of Asserted Prior Art
`Close Of Fact Discovery
`Close Of Expert Discovery
`Dispositive Motions, Daubert Motions
`
`The day the institution decision is due (August 6), the parties are to file
`
`March 31
`April 7
`April 21
`June 1
`July 23
`July 23
`
`
`
`responses to dispositive motions, with trial to begin less than three months later. Id.;
`
`compare NHK, IPR2018-00752, Paper 8, 20 (precedential) (denying institution
`
`where district court expert discovery would conclude 2 months after institution).
`
`B.
`
`Petitioner Relies Upon Substantially The Same References,
`Combinations, And Arguments, Under The Same Construction
`Standard, In Both The District Court Action And This IPR.
`
`Petitioner relies upon substantially the same art and arguments in both this
`
`IPR and the District Court Action and under the same claim construction standard.
`
`
`
`6
`
`
`
`
`
`In arguing that the Board should not exercise its discretion to deny the Petition,
`
`Petitioner points only to two secondary references (herein “Van Milligan” and
`
`“Sharp”) raised in the Petition that, it suggests, it did not raise in Court because it
`
`failed to “identif[y]” them “as relevant” until too late. Pet., 67. Significantly, both
`
`of these references are USPTO patent application publications that Petitioner offers
`
`no excuse for not being able to find earlier. Petitioner does not explain why the
`
`Board should reward its sluggishness in searching for prior art with an extra try at
`
`killing the asserted claims. Moreover, Petitioner does not attempt to identify any
`
`distinction between the subject matter of these two references, compared to the art
`
`and arguments it raised in its “initial invalidity contentions” months ago in the
`
`District Court Action. Id.
`
`The Board has found that petitioners’ failure to identify a significant
`
`“distinction” between the art and arguments in the two proceedings is an
`
`“important[]” fact supporting the exercise of discretion to deny institution:
`
`[I]mportantly, Petitioner does not attempt to identify a distinction
`between the unpatentability grounds presented in this proceeding and
`those presented in the district court proceeding, leaving undisputed
`Patent Owner’s assertion that “the same grounds proposed in the
`Petitioner are included in Petitioner’s invalidity contentions in the
`district court.” Thus, Petitioner does not distinguish the present case
`from NHK Spring, where “the same prior art and arguments” were
`asserted in the district court proceeding and the Board proceeding.
`
`
`
`7
`
`
`
`
`
`Samsung Elecs. Am., Inc., v. Uniloc 2017 LLC, IPR2019-01219, Paper 7, 17 (PTAB
`
`Jan. 9, 2020) (denying institution).
`
`Petitioner’s failure to identify any distinction between the subject matter of its
`
`obviousness combinations that include Van Milligan and Sharp in its Petition, and
`
`the obviousness combinations that omit Van Milligan and Sharp in the District Court
`
`Action, is significant. Even after Petitioner narrowed its previously raised invalidity
`
`references and combinations to the subset of them that it plans to try to the jury six
`
`months from now, all of the combinations raised in the IPR and all but one of the
`
`five combinations to be tried to the jury in the District Court Action include the
`
`Petition’s primary reference, Douglis. Ex. 2003 [Prior Art Reduction]. Petitioner,
`
`other than arguing, as noted above, that Van Milligan and Sharp were not raised in
`
`the District Court because of Petitioner’s own alleged tardiness in realizing their
`
`“relevan[ce],” identifies no subject matter distinctions between the grounds raised
`
`in the two proceedings. Pet., 67. The Board has repeatedly found, in both
`
`representative and routine opinions, that immaterial differences between the grounds
`
`in district court and in the petition do not provide a basis for discretionary institution.
`
`See Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00003, Paper 7, 2
`
`
`
`8
`
`
`
`
`
`(PTAB Oct. 25, 2012) (representative opinion) 2 (“multiple grounds, which are
`
`presented in a redundant manner by a petitioner who makes no meaningful
`
`distinction between them, are contrary to the regulatory and statutory mandates, and
`
`therefore are not all entitled to consideration”); Edwards Lifesciences Corp. v.
`
`Evalve, Inc., IPR2019-01479, Paper 7, 11 (PTAB Feb. 26, 2020) (denying institution
`
`under §314(a) although petitioner raised references not raised in district court);
`
`Samsung, IPR2019-01219, Paper 7, 17 (discussed supra).
`
`In sum, Petitioner relies upon substantially the same art and arguments.
`
`C.
`
`Institution Should Be Denied Under NHK Because The District
`Court Jury Will Decide Validity Just Six Months From Today.
`
`As just discussed, the District Court Action is already very far along and is set
`
`to be tried to a jury just six months from now, nine months before the final written
`
`decision in this IPR would be due. Moreover, Petitioner fails to identify any
`
`significant difference in its challenges in the two forums. These are the same
`
`circumstances the Board’s precedent holds warrant denial under § 314(a).
`
`As the Board’s precedential decision in NHK explained:
`
`Patent Owner argues that instituting an inter partes review “ultimately
`would be inefficient,” given the status of the district court proceeding
`
`
`2 SAS Institute v. Iancu overruled Liberty Mutual’s holding that grounds may
`
`be selectively denied, but not its analysis of redundancy and its associated harms.
`
`
`
`9
`
`
`
`
`
`the parties. . . . We agree. . . . Patent Owner argues
`between
`persuasively that instituting a trial under the facts and circumstances
`here would be an inefficient use of Board resources. The district court
`proceeding, in which Petitioner asserts the same prior art and
`arguments, is nearing its final stages, with expert discovery ending on
`November 1, 2018, and a 5-day jury trial set to begin on March 25,
`2019. [] A trial before us on the same asserted prior art will not
`conclude until September 2019. Institution of an inter partes review
`under these circumstances would not be consistent with “an objective
`of the AIA . . . to provide an effective and efficient alternative to district
`court litigation.” Gen. Plastic, Paper 19, 16–17. Accordingly, we find
`that the advanced state of the district court proceeding is an additional
`factor that weighs in favor of denying the Petition under § 314(a).
`
`Id.
`
`Another precedential decision that declined to deny institution under NHK,
`
`Oticon Medical AB v. Cochlear Ltd., IPR2019-00975, Paper 15, 23-24 (PTAB Oct.
`
`16, 2019) (precedential), illustrates the parameters of discretionary denial and
`
`confirms that, consistent with NHK, institution should be denied in this case. In
`
`Oticon the Board declined to exercise its discretion to deny institution under § 314(a)
`
`and NHK where there was no indication that the district court trial would occur
`
`before the final written decision would issue and a material difference was identified
`
`between the art raised in the district court versus the IPR. The patent owner in Oticon
`
`failed to provide a procedural schedule indicating the district court trial would occur
`
`
`
`10
`
`
`
`
`
`before the final written decision, and the grounds raised were materially different
`
`because a key reference in every IPR ground, against every claim, had been
`
`specifically added by Petitioner “to counteract a weakness in [its] District Court
`
`invalidity contentions.” Id. Oticon is readily distinguishable in every such respect
`
`from the present case, where the district court litigation challenging the validity of
`
`the subject patent is at an advanced stage, jury trial is set to begin in just six months,
`
`there is a substantial overlap between the art and arguments raised, and Petitioner
`
`has identified no significant distinction between the grounds in the two forums.
`
`In accord with both NHK and Oticon, the Board routinely denies institution in
`
`the circumstances set forth above. E.g., Next Caller Inc. v. TRUSTID Inc., IPR2019-
`
`00961, Paper 10, 9-15 (PTAB Oct. 16, 2019) (denying institution; Markman order
`
`issued applying same construction standard, substantial overlap in invalidity
`
`arguments, district court trial set 3 months before FWD); E-One, Inc. v. Oshkosh
`
`Corp., IPR2019-00161, Paper 16, 6-9 (PTAB May 15, 2019) (denying institution;
`
`Markman order issued applying same standard, obviousness arguments “overlap
`
`substantially,” trial set 1 month before FWD); ZTE USA Inc. v. Fractus SA,
`
`IPR2018-01461, Paper 10, 16-17 (PTAB Feb. 28, 2019) (denying institution;
`
`Markman order issued, “substantially the same grounds,” district court “likely to go
`
`to trial before a final decision is reached”); Thermo Fisher Scientific, Inc. v. Regents
`
`of Univ. of Cal., IPR2018-01368, Paper 10, 24-25 (PTAB Feb. 7, 2019) (denying
`
`
`
`11
`
`
`
`
`
`institution; same art, Markman order issued, trial set 9 months before FWD); Mylan
`
`Pharms., Inc., v. Bayer Intellectual Prop. GmbH, IPR2018-01143, Paper 13, 13-14
`
`(PTAB Dec. 3, 2018) (denying institution; “extensive overlap” in art, claim
`
`construction and trial set 8 months before FWD); Sand Revolution II, LLC, v.
`
`Continental Intermodal Group–Trucking LLC, IPR2019-01393, Paper 12, 15-18
`
`(PTAB Feb. 5, 2020) (denying institution; invalidity arguments “very similar,”
`
`Markman order issued, trial set 7 months before FWD); Samsung, IPR2019-01219,
`
`Paper 7, 17 (denying institution; no identified difference in art, trial set 6 months
`
`before FWD); Magellan Midstream Partners L.P. v. Sunoco Partners Mktg. &
`
`Terminals L.P., IPR2019-01445, Paper 12, 6-12 (PTAB Jan. 22, 2020) (denying
`
`institution; similar art and arguments, court action far along, trial set about 11
`
`months before FWD). Thus, under NHK and its many progeny, the Board has
`
`repeatedly denied institution under circumstances like those here.
`
`Petitioner mentions NHK (Pet., 66-68), but barely discusses it. And that is not
`
`surprising, because this case is an even stronger case for denial of institution than
`
`NHK and many or most of its progeny above. For example, here the court trial is
`
`scheduled to proceed fully nine months before when a final written decision would
`
`be due here. That gap is 50% longer than the six month gap present in NHK.
`
`
`
`12
`
`
`
`
`
`D. The Apple v. Fintiv Factors Support Denial Of Institution.
`
`Since NHK, binding Board precedent has developed a six-factor test for
`
`determining whether a discretionary denial under 314(a) is appropriate. Fintiv,
`
`IPR2020-00019, Paper 11, 4-5 (“Fintiv”) (precedential) (“When the patent owner
`
`raises an argument for discretionary denial under NHK due to an earlier trial date,
`
`the Board’s decisions have balanced the following [six] factors.”). Each of these
`
`factors, discussed below, strongly favors a denial of institution.
`
`1.
`
`Fintiv Factor # 1: no “evidence exists that” a stay in district
`court “may be granted if a proceeding is instituted” here.
`
`In the District Court Action, Petitioner has not moved for a stay or indicated
`
`that it will do so.3 This factor therefore weighs against institution.
`
`Even if we were to assume that Petitioner would move for a stay, there is little
`
`reason to think it would be granted. The District Court Action is pending before
`
`Judge Gilstrap in the Eastern District of Texas. The District, and Judge Gilstrap in
`
`particular, are known to be unlikely to grant stays pending IPR:
`
`In the U.S. District Court for the Eastern District of Texas, moving to
`stay pending PTAB is an uphill battle, regardless of the judge. Only
`32% of contested motions were granted this past year, with Judge
`
`3 As noted, the parties agreed to move trial from September 14 to November
`
`2, 2020. As a part of this agreement Petitioner expressly agreed not to use the
`
`extension as a basis for seeking a stay. Ex. 2011 [Email from Apple’s counsel].
`
`
`
`13
`
`
`
`
`
`Rodney Gilstrap granting only 28% of such motions (and this rate is
`actually up from 14%).
`
`Ex. 2004 [2017 Report on Inter Partes Review Proceedings] 31; see also Ex. 2005
`
`[District Court Stays] 27 (“[S]uccess is near impossible in front of Judge Gilstrap,
`
`who only granted in full one out of seven contested requests, for a success rate of
`
`just 14%.”).
`
`Not only is it known that “success is near impossible” when moving to stay
`
`in this District Court, Ex. 2005, sup
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
