Paper 10
`Trials@uspto.gov
`Entered: July 28, 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.
`____________
`
`IPR2020-00235
`Patent 10,091,734 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
`
`
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`Entered: July 28, 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.
`____________
`
`IPR2020-00235
`Patent 10,091,734 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
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-00235
`Patent 10,091,734 B2
`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`an inter partes review of claims 1–14 (the “challenged claims”) of U.S.
`Patent No. 10,091,734 B2 (Ex. 1001, “the ’734 patent”). Petitioner filed a
`Declaration of Thomas Wenisch, Ph.D. (Ex. 1003) with its Petition. Patent
`Owner, Seven Networks, LLC (“Patent Owner”), filed a Preliminary
`Response (Paper 6, “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 8 (“Pet.
`Prelim. Reply”); Paper 9 (“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 ’734
`patent on all grounds of unpatentability presented.
`I. BACKGROUND
`Real Parties-in-Interest
`Petitioner identifies Apple Inc. as the real party-in-interest. Pet. 68.
`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 ’734 patent. Pet. 69; Paper 5.
`The ’734 patent
`C.
`The ’734 patent describes mobile device power management
`techniques. Ex. 1001, code (57). A local proxy can reduce the number of
`
`B.
`
`A.
`
`2
`
`
`
`IPR2020-00235
`Patent 10,091,734 B2
`times “the radio module is powered up” by batching data transfers, thereby
`reducing battery consumption. Id. at 15:32–41. A mobile phone can initiate
`batch transfers with applications in a background mode or based on user
`configurations or device settings. Id. at 21:37–47. The user can enter into a
`power save mode, and “[i]n one embodiment, power save mode is not
`applied when the device 550 is plugged into a charger.” Id. at 37:19–25.
`The challenged claims recite network communication activities that occur
`during power save mode and after exiting power save mode.
`Illustrative Claim 1
`D.
`Of the challenged claims, independent claim 1, recites a “mobile
`device which improves network resource utilization in a wireless network.”
`Independent method claim 9 recites materially similar limitations.
`Remaining challenged claims 2–8 and 10–14 depend from claim 1 or
`claim 9.
`Claim 1 illustrates the challenged claims at issue:
`1. A mobile device which improves network resource utilization
`in a wireless network, the mobile device, comprising:
`a memory; a radio; and
`a processor coupled to the memory and configured to:
`receive instructions from a user to enter a
`power save mode;
`while in the power save mode, block
`transmission of outgoing application data
`requests, wherein the outgoing application data
`requests are background application requests
`for more than one application;
`while in the power save mode, allow
`transmission of additional outgoing application
`data requests in response to occurrence of
`receipt of data transfer from a remote entity,
`
`3
`
`
`
`IPR2020-00235
`Patent 10,091,734 B2
`user input in response to a prompt displayed to
`the user, and a change in a background status
`of an application executing on the mobile
`device, wherein
`the additional outgoing
`application data
`requests are
`foreground
`application requests,
`is an
`remote entity
`wherein
`the
`intermediary server that provides connectivity
`between an application
`server
`for
`the
`application and the mobile device;
`exit the power save mode based on
`received instructions from the user to exit the
`power save mode,
`wherein, when the power save mode
`is exited, the outgoing application data
`requests occurring while the mobile device is
`not in the power save mode are blocked by
`user selection on an application-by-application
`basis, wherein the user selection instructs the
`mobile device whether to block the outgoing
`application data requests for each application
`that is selected by the user for blocking.
`Ex. 1001, 49:23–57.
`
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`4
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`IPR2020-00235
`Patent 10,091,734 B2
`The Asserted Grounds
`E.
`Petitioner challenges claims 1–14 of the ’734 patent on the following
`grounds (Pet. 2):
`
`Claims Challenged
`
`1–3, 5–11, 13, 14
`
`1–14
`
`35 U.S.C.
`§
`1031
`
`103
`
`References
`
`Douglis,2 Van Milligan,3
`Sharp4
`Douglis, Van Milligan,
`Sharp, Lee5
`
`
`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. 4–5.
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. For purposes of
`institution, the ’734 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. Regardless of the applicable version of
`§ 103, Petitioner shows sufficiently that the claims would have been obvious
`for purposes of institution.
`2 Douglis et al., US 2005/0108075 A1, published May 19, 2005 (Ex. 1004).
`3 Van Milligan et al., US 2011/0249668 A1, published Oct. 13, 2011 (Ex.
`1005).
`4 Sharp et al., US 2009/0228566 A1, published Sept. 10, 2009 (Ex. 1006).
`5 Lee et al., US 2011/0080422 A1, published Apr. 7, 2011 (Ex. 1007).
`
`5
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`IPR2020-00235
`Patent 10,091,734 B2
`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)
`(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.
`
`6
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`IPR2020-00235
`Patent 10,091,734 B2
`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 as
`to any stay requested by the parties 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 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
`
`7
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`IPR2020-00235
`Patent 10,091,734 B2
`weighs neither for nor against exercising discretion to deny institution of
`inter partes review.
`Factor 2–Trial Date Versus FWD Due Date
`2.
`Patent Owner notes that “[e]ven adjusting for the delay due to current
`COVID-19 pandemic, the district court case is scheduled to start trial in
`November 2020.” Prelim. Resp. 1; see also Ex. 1040 (District Court
`scheduling order granting joint motion to extend due dates by forty-five
`days, including jury trial date extended to November 2, 2020, due to
`COVID). Patent Owner contends that the November 2, 2020 jury trial date
`falls nine months before the due date for a final written decision in the inter
`partes review here. See Prelim. Resp. 2.
`Petitioner contends that “there are eighteen other cases scheduled to
`begin jury selection on November 2” in the Eastern District of Texas (Pet.
`Prelim. Reply 5 (citing Ex. 1050, 1–9)), wherein, “given the inevitability of
`further COVID-19 outbreaks, further scheduling issues cannot be ruled out.”
`Id. (citing Ex. 1047, 1); 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
`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
`
`8
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`
`
`IPR2020-00235
`Patent 10,091,734 B2
`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 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 nine months prior to the projected statutory deadline for a final written
`decision, but accounting for the previous agreement to 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.6
`
`6 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
`
`9
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`IPR2020-00235
`Patent 10,091,734 B2
` Factor 3–Investment in Proceedings
`3.
`Patent Owner contends that in the District Court Action, the Markman
`hearing order issued on March 31, 2020, the parties filed final claim and
`validity assertions, and discovery will close and dispositive motions will be
`filed before the institution deadline. PO Prelim. Sur-reply 5. According to
`Patent Owner, “[t]he parties and district court have thus invested incredible
`amounts of time and effort.” Id.
`The District Court’s scheduling order shows the following deadlines
`passed: fact discovery and filing of motions to compel discovery, service of
`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. Ex. 1040. Upcoming deadlines include the
`following: response to dispositive motions and Daubert motions (August 6,
`2020), service of pretrial disclosures (August 13, 2020), 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,
`
`
`the statutory deadline of April 11, 2020, instead of December 27, 2019,
`pushing the relative trial dates about three and a half months farther apart.
`See Pet. Prelim. Reply 5–7 (discussing reasons for some delay as based on
`filing twenty-one petitions and analyzing multiple claims and patents);
`Prelim. Resp. 24 (discussing timing); Ex. 1052, 194 (listing April 10, 2019
`on the Complaint); Pet. 67 (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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`IPR2020-00235
`Patent 10,091,734 B2
`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, with some of the work
`relevant to patent validity, including claim construction and expert
`discovery. However, as determined in the next section, little overlap exists
`in terms of the grounds in the IPR here and the invalidity challenges in the
`District Court Action. See Ex. 1045, 2. This diminishes the overlap to a
`certain extent.
`Petitioner’s timing in filing the Petition also bears on this factor. See
`supra note 6. 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
`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 this litigation by the parties. Petitioner filed the Petition about
`three and a half 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 nearly nine months after service of the complaint before
`filing it (Ex. 2009 [Complaint])”); supra note 6. 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
`
`11
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`IPR2020-00235
`Patent 10,091,734 B2
`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, 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
`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. 6–8. Petitioner “asks
`the Board to consider the unique challenges raised in the Petition.” Pet.
`Prelim. Reply 8.
`
`12
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`IPR2020-00235
`Patent 10,091,734 B2
`The following table summarizes the grounds at issue involved in the
`two proceedings:
`
`DISTRICT
`COURT
`
`
` IPR
`CLAIMS
`
`1–3, 5–11,
`13, 14
`1–14
`
`
`
`
`
`DISTRICT
`COURT
`CLAIMS
`
`
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`
`
`IPR GROUND
`
`Douglis, Van
`Milligan, Sharp
`Douglis, Van
`Milligan, Sharp, Lee
`
`
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`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
`1, 6, 9
`
`1, 6, 9
`
`1, 6, 9
`
`1, 6, 9
`
`1, 6, 9
`
`1, 6, 9
`
`Black 206,
`Araujo
`Black 206,
`Douglis,
`Oestvall
`Douglis,
`Araujo, and
`Calamera
`
`Douglis,
`Oestvall and
`Calamera
`Douglis,
`Araujo, and
`Calamera
`Douglis,
`Araujo, and
`Oestvall
`
`
`Supra Section I.E; Ex. 2003, 3; see also Ex. 1044 (invalidity contentions,
`including a listing of prior art); Ex. 1045 (supplemental invalidity
`contentions).
`According to the table above, unlike in NHK, Petitioner here does not
`rely on the “same prior art and arguments” with respect to any of the
`
`13
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`IPR2020-00235
`Patent 10,091,734 B2
`grounds. See NHK, Paper 8 at 19–20. For example, Petitioner relies on the
`combined teachings of Douglis and Van Milligan to suggest blocking
`outgoing background tasks while in a power save mode, as recited in claim
`1. See Pet. 31–32; infra Section III.D.4. Petitioner also relies on
`Van Milligan to suggest the following independent claim 1 limitation:
`while in the power save mode, allow transmission of
`additional outgoing application data requests in response to
`occurrence of receipt of data transfer from a remote entity, user
`input in response to a prompt displayed to the user, and a change
`in a background status of an application executing on the mobile
`device, wherein the additional outgoing application data requests
`are foreground application requests.
`Pet. 32–36; infra Section III.D.4. Petitioner relies on the combined
`teachings of Van Milligan and Sharp to suggest “wherein the remote entity
`is an intermediary server that provides connectivity between an application
`server for the application and the mobile device,” as recited in independent
`claim 1. Pet. 36–37; infra Section III.D.4. Petitioner similarly relies on
`Van Milligan and Sharp to reach the remaining independent claim, claim 9.
`See id. at 53–56. Petitioner adds Lee to bolster its showing in the event the
`Board finds the combination of Douglis, Van Milligan, and Sharp deficient,
`and also to reach dependent claims 4 and 12. See Pet. 56–66; infra Section
`III.E.
`Hence, a major part of this inter partes review will analyze materially
`different issues as compared to issues involved in the District Court Action.
`See NHK, Paper 8 at 19–20. Also, the inter partes trial will resolve claims
`2–5, 7, 8, and 10–14, which the District Court Action will not address. The
`record shows that Petitioner’s contentions in the District Court Action
`
`14
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`IPR2020-00235
`Patent 10,091,734 B2
`involve no potential duplication at least with regard to combining the
`secondary references of Van Milligan, Sharp, and Lee to Douglis.
`See Ex. 1044 (invalidity contentions); Ex. 1045 (supplemental invalidity
`contentions). Also, nothing of record shows that Petitioner relies on the
`above-listed secondary references in the District Court for the same or
`similar particularized teachings asserted with respect to Van Milligan, Sharp,
`and Lee. See, e.g., Ex. 1044 477–496 (claim chart involving Douglis but not
`Van Milligan, Sharp, Lee or any other particular reference); Ex. 1044, 10–12
`(discussing secondary teachings for claim 1’s “while in power save mode”
`limitation (reproduced in this section above)). Furthermore, Petitioner
`presents detailed motivation based in part upon teachings in the secondary
`references and expert testimony that the District Court Action does not
`involve. See, e.g., Pet. 14–23.
`Even though some overlap may occur with respect to reading some
`limitations on Douglis, on this preliminary record, Patent Owner challenges
`the combined teachings that Petitioner relies upon. See, e.g., Prelim. Resp.
`25 (“Because Douglis is fundamentally different from the Claims and fails to
`disclose many of their limitations, the Petition relies on importing multiple
`limitations from Van Milligan into Douglis’s system. However, a POSITA
`would not have been motivated to combine Douglis and Van Milligan.”
`(citation omitted)), 26 (“[N]either Douglis nor Van Milligan, nor their
`combination, discloses or renders obvious th[e claim 1] limitation” requiring
`“outgoing application data requests may be blocked by the user on an
`application by application basis ‘when the power save mode is exited.’”).
`Patent Owner also challenges Douglis by alleging Douglis and
`Van Milligan each “teach that no application execution is restricted when
`
`15
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`IPR2020-00235
`Patent 10,091,734 B2
`the power save mode is exited.” Prelim. Resp. 26. But on this preliminary
`record, Petitioner persuasively argues “[t]his is not responsive to the
`Petition’s analysis—the Petition identifies Douglis’[s] ‘low consumption’
`profile, for example, as the power save mode.” Pet. Prelim. Reply 10; see
`also infra Section III.D.4 (analyzing the evidence and arguments).
`Based on the different combinations of prior art presented and the
`respective positions of the parties at this preliminary stage, the possibility of
`conflicting decisions based on an overlap as to whether Douglis discloses a
`claim element appears to be nil or extremely low.
`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; PO Prelim. Sur-reply 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).7
`Accordingly, Fintiv factor 5 weighs slightly in favor of Patent Owner.
`
`
`7 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. This “would seem to
`be contrary to the goal of providing district court litigants an alternative
`venue to resolve questions of patentability.” Id.
`
`16
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`IPR2020-00235
`Patent 10,091,734 B2
`Factor 6–Other Circumstances
`6.
`The 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—IPR2020-00188 (instituted June 11, 2020), IPR2020-
`00156 (instituted June 18, 2020), and IPR2020-00157 (instituted June 18,
`2020). We acknowledge that it would be inefficient to discretionarily deny
`institution of this Petition, which we find 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 the claims
`largely involve a “combination of familiar elements according to known
`methods . . . yield[ing] predictable results.” KSR Int’l Co. v. Teleflex Inc.,
`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, on this preliminary record, Petitioner provides
`good reasons for implementing the teachings of Van Milligan’s similar
`operational restrictions with similar restrictions in Douglis’s system,
`including to enhance device performance by permitting multitasking and
`
`17
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`IPR2020-00235
`Patent 10,091,734 B2
`allowing applications to exist in the background while preserving battery
`life. See infra Section III.D.4; Pet. 14–19. On this preliminary record,
`Petitioner also provides good reasons, including reducing power usage
`associated with mobile device polling, to combine Sharp’s routine
`intermediate push server notification system for mobile devices seeking
`application data, in the system of Douglis and Van Milligan, where
`Van Milligan provides a similar notification delivery system and Sharp
`provides implementation details. See infra Section III.D.4; Pet. 21–23.
`Under an alternative ground challenging claims 1–14, Petitioner adds
`Lee’s similar battery savings teachings to bolster its showing involving
`Douglis, Van Milligan, and Sharp. See infra Section III.E.2; Pet. 57–64.
`Petitioner also provides good reasons for combining Lee’s routine battery
`power saving teachings with the similar battery power saving system of
`Douglis to obtain predictable results of providing enhanced control of
`battery power savings. See infra Section III.E; Pet. 57–64. At this
`preliminary stage, Patent Owner does not separately address alleged
`deficiencies with respect to the ground based on Lee. Finally, on this
`preliminary record, Petitioner also shows that the remaining limitations of
`the broad claims at issue here read on Douglis. See infra Section III.D.4; Pet
`23–56.
`Another circumstance tilts in favor of institution. As indicated above,
`the District Court set a schedule ordering the parties to reduce issues,
`including the number of claims asserted and the number of prior art
`challenges to the asserted claims. See Ex. 1040 (District Court scheduling
`order); Ex. 2002 (same). The District Court Action initially involved sixteen
`patents-in-suit and multiple issues, including all fourteen claims of the ’734
`
`18
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`IPR2020-00235
`Patent 10,091,734 B2
`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 four claims of the ’734 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 three
`claims of the ’734 patent. Ex. 2008, 1–2; Ex. 2003. 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
`(prior art reduction); Ex. 2003 (same).
`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. Based on the
`District Court’s order to limit the total number of prior art references to
`forty-five, Petitioner reasonably could have decided to forego certain
`invalidity challenges against the ’734 patent as part of its strategy involving
`the nine other patents-in-suit. An inter partes trial here does not include that
`specific strategy constraint. Also, a 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 ’734 patent. Therefore, this
`inter partes trial will provide the parties with an in-depth analysis of the
`’734 patent, providing a full record that will enhance the integrity of the
`patent system.
`Accordingly, factor 6 weighs strongly in favor of Petitioner.
`
`19
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`IPR2020-00235
`Patent 10,091,734 B2
`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 slightly favor exercising our discretion t
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