Trials@uspto.gov
`571.272.7822
`
` Paper 20
`
`
`
`
` Entered: September 10, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JUNIPER NETWORKS, INC. and PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`PACKET INTELLIGENCE LLC,
`Patent Owner.
`____________
`
`IPR2020-00337
`Patent 6,771,646 B1
`____________
`
`
`
`Before STACEY G. WHITE, CHARLES J. BOUDREAU, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`571.272.7822
`
` Paper 20
`
`
`
`
` Entered: September 10, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JUNIPER NETWORKS, INC. and PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`PACKET INTELLIGENCE LLC,
`Patent Owner.
`____________
`
`IPR2020-00337
`Patent 6,771,646 B1
`____________
`
`
`
`Before STACEY G. WHITE, CHARLES J. BOUDREAU, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
`IPR2020-00337
`Patent 6,771,646 B1
`
`INTRODUCTION
`I.
`Juniper Networks, Inc. and Palo Alto Networks, Inc. (collectively
`“Petitioner”) filed a Petition (Paper 3, “Pet.”) requesting an inter partes
`review of claims 1–3, 7, 16, and 18 of U.S. Patent No. 6,771,646 B1
`(Ex. 1003, “the ’646 patent”) pursuant to 35 U.S.C. § 311. Packet
`Intelligence LLC (“Patent Owner”) filed a Patent Owner Preliminary
`Response (Paper 7, “Prelim. Resp.”).1 Petitioner filed a Preliminary Reply
`(Paper 9, “Prelim. Reply”) and Patent Owner filed a Preliminary Sur-Reply
`(Paper 10, “Prelim. Sur-Reply”) in accordance with our Order (Paper 8)
`allowing the parties to address the applicability of the Board’s decision in
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`(precedential) (“Fintiv”).
`We have authority to determine whether to institute an inter partes
`review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes
`review may be instituted if “the information presented in the petition filed
`under section 311 and any response filed under section 313 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.” 35 U.S.C. § 314(a).
`Upon consideration of the preliminary papers, for the reasons that
`follow and on this record, we are persuaded that Petitioner demonstrates a
`reasonable likelihood of prevailing in showing the unpatentability of at least
`
`
`1 Patent Owner filed its Preliminary Response on June 12, 2020. We
`previously granted Patent Owner’s unopposed request for an extension of
`time due to the COVID-19 outbreak for filing its Preliminary Response, and
`we extended the due date for filing the Preliminary Response to June 12,
`2020. Ex. 3001. Thus, we consider Patent Owner’s filing of its Preliminary
`Response as timely.
`
`2
`
`
`
`IPR2020-00337
`Patent 6,771,646 B1
`one of the challenged claims. Accordingly, we institute an inter partes
`review.
`A. Related Matters
`The parties identify two district court litigations as related matters that
`involve the ’646 patent: Packet Intelligence LLC v. Juniper Networks, Inc.,
`3:19-cv-04741 (N.D. Cal.) and Palo Alto Networks, Inc. v. Packet
`Intelligence LLC, No. 3:19-cv-02471 (N.D. Cal). Pet. 1; Paper 6, 2. The
`parties also identify as related matters Packet Intelligence LLC v. NetScout
`Systems, Inc., 2:16-cv-230-JRG (E.D. Tex.) and Packet Intelligence LLC v.
`NetScout Sys., Inc., 19-2041 (Fed. Cir.).2 Pet. 1; Paper 6, 2.
`In addition, the parties identify the following matters pending before
`the Board, challenging claims of patents related to the ’646 patent: IPR2020-
`00335, IPR2020-00336, IPR2020-00338, IPR2020-00339, IPR2020-00485,
`and IPR2020-00486.3 Pet. 1; Paper 6, 2–3. Lastly, the parties collectively
`identify the following matters, no longer pending before the Board, as being
`related: (i) IPR2017-00450 and IPR2019-01292, which challenged certain
`claims of the ’646 patent; and (ii) IPR2017-00451, IPR2017-00629,
`IPR2017-00630, IPR2017-00769, IPR2017-00862, IPR2017-00863,
`
`
`2 A copy of the Final Judgment in Case No. 2:16-cv-00230, dated
`September 7, 2018, has been filed by Patent Owner in the record of this
`proceeding as Exhibit 2059, and a copy of the Decision of the U.S. Court of
`Appeals for the Federal Circuit in Appeal No. 19-2041, dated July 14, 2020,
`has been filed by Patent Owner in the record of this proceeding as Exhibit
`2060.
`3 Decisions denying institution of inter partes review in IPR2020-00335 and
`IPR2020-00485 were entered on August 27, 2020, and a decision instituting
`inter partes review in IPR2020-00338 was entered on September 9, 2020.
`Decisions on the petitions in the other cited cases are being entered
`concurrently with the instant Decision.
`
`3
`
`
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`IPR2020-00337
`Patent 6,771,646 B1
`IPR2019-01289, IPR2019-01290, IPR2019-01291, and IPR2019-01293,
`which challenged claims of patents related to the ’646 patent. Pet. 2;
`Paper 6, 3–5.
`B. The ’646 Patent
`The ’646 patent, titled “Associative Cache Structure for Lookups and
`Updates of Flow Records in a Network Monitor,” discloses a network
`activity monitor with a cache subsystem. Ex. 1003, code (54), 1:42–3:14.
`The ’646 patent explains that there was a need in the art for “a real-time
`network monitor that can provide details as to the application programs
`being used.” Id. at 1:42–47. The disclosed monitor receives packets passing
`in either direction through its connection point on the network and
`“elucidate[s] what application programs are associated with each packet” by
`extracting information from the packet, using selected parts of the extracted
`information to “build[] a signature for identifying the conversational flow of
`the packet,” and performing a lookup of “a database of flow records for
`previously encountered conversational flows to determine whether [the]
`signature is from an existing flow.” Id. at 1:66–2:28, 4:61–5:8, Fig. 1. The
`’646 patent states that due to the high speed at which packets enter the
`system, it is advantageous to use a cache system for the memory containing
`the flow database. Id. at 2:37–62. “One desirable property of such a cache
`system is a least recently used (LRU) replacement policy that replaces the
`LRU flow-entry when a cache replacement is needed.” Id. at 2:53–56.
`“Replacing least recently used flow-entries is preferred because it is likely
`that a packet following a recent packet will belong to the same flow.” Id.
`at 2:56–58.
`
`4
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`IPR2020-00337
`Patent 6,771,646 B1
`Figure 3 of the ’646 patent is reproduced below.
`
`
`Figure 3, above, depicts various components of network packet monitor 300,
`including parser subsystem 301, analyzer subsystem 303, and database of
`known flows 324. Ex. 1003, 7:36–58. Parser subsystem 301 “parses the
`packet and determines the protocol types and associated headers for each
`protocol layer that exists in the packet 302,” “extracts characteristic portions
`(signature information) from the packet 302,” and builds the “unique flow
`signature (also called a ‘key’) for this flow.” Id. at 8:5–9:28, 27:66–29:61
`(describing an example of how the disclosed monitor builds signatures and
`flow states in the context of a Sun Remote Procedure Call (RPC), where,
`after all of the required processing, “KEY-2 may . . . be used to recognize
`packets that are in any way associated with the application ‘a2’”), Fig. 2.
`
`5
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`IPR2020-00337
`Patent 6,771,646 B1
`Analyzer system 303 then determines whether the packet has a
`matching flow-entry in database of flows 324, and processes the packet
`accordingly, including, for example, determining whether the packet belongs
`to an existing conversational flow or a new (i.e., not previously encountered)
`flow and, in the case of the latter, performing state processing to determine
`whether the conversational flow has been “fully characterized” and should
`be finalized. Ex. 1003, 9:45–12:34, 19:46–20:2, 30:13–36:28, Fig. 11. The
`’646 patent discloses that
`[f]uture packets that are part of the same conversational flow
`have their state analysis continued from a previously achieved
`state. When enough packets related to an application of interest
`have been processed, a final recognition state is ultimately
`reached, i.e., a set of states has been traversed by state analysis
`to completely characterize the conversational flow. The
`signature for that final state enables each new incoming packet
`of the same conversational flow to be individually recognized in
`real time.
`In this manner, one of the great advantages of the present
`invention is realized. Once a particular set of state transitions has
`been traversed for the first time and ends in a final state, a short-
`cut recognition pattern—a signature—an [sic] be generated that
`will key on every new incoming packet that relates to the
`conversational flow. Checking a signature involves a simple
`operation, allowing high packet rates to be successfully
`monitored on the network.
`Id. at 11:67–12:17.
`C. Illustrative Claims
`Among the challenged claims, claims 1, 7, and 16 are independent.
`Claims 1 and 16, reproduced below, are illustrative.
`1. A packet monitor for examining packets passing through a
`connection point on a computer network, each packet
`conforming to one or more protocols, the monitor comprising:
`
`6
`
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`
`IPR2020-00337
`Patent 6,771,646 B1
`(a) a packet acquisition device coupled to the connection
`point and configured to receive packets passing through
`the connection point;
`(b) a memory for storing a database comprising flow-
`entries for previously encountered conversational flows to
`which a received packet may belong, a conversational
`flow being an exchange of one or more packets in any
`direction as a result of an activity corresponding to the
`flow;
`(c) a cache subsystem coupled to the flow-entry database
`memory providing for fast access of flow-entries from the
`flow-entry database;
`(d) a lookup engine coupled to the packet acquisition
`device and to the cache subsystem and configured to
`lookup whether a received packet belongs to a flow-entry
`in the flow-entry database, the looking up being via cache
`subsystem; and
`(e) a state processor coupled to the lookup engine and to
`the flow-entry-database memory, the state processor being
`to perform any state operations specified for the state of
`the flow starting from the last encountered state of the flow
`in the case that the packet is from an existing flow, and to
`perform any state operations required for the initial state
`of the new flow in the case that the packet is not from an
`existing flow.
`16. A method of examining packets passing through a connection
`point on a computer network, each packets conforming to one or
`more protocols, the method comprising:
`(a) receiving a packet from a packet acquisition device;
`(b) performing one or more parsing/extraction operations
`on the packet to create a parser record comprising a
`function of selected portions of the packet;
`(c) looking up a flow-entry database comprising none or
`more
`flow-entries
`for
`previously
`encountered
`conversational flows, the looking up using at least some of
`
`7
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`IPR2020-00337
`Patent 6,771,646 B1
`the selected packet portions and determining if the packet
`is of an existing flow, the lookup being via a cache;
`(d) if the packet is of an existing flow, classifying the
`packet as belonging to the found existing flow; and
`(e) if the packet is of a new flow, storing a new flow-entry
`for the new flow in the flow-entry database, including
`identifying information for future packets to be identified
`with the new flow-entry,
`wherein the parsing/extraction operations depend on one or more
`of the protocols to which the packet conforms.
`Ex. 1003, 36:39–67, 39:10–40:4, Certificates of Correction.
`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`
`
`
`35 U.S.C. §4 Reference(s)/Basis
`
`Claim(s)
`Challenged
`1–3, 7, 16, 18
`1–3, 7, 16, 18
`
`103(a)
`103(a)
`
`Riddle,5 Ferdinand,6 Wakeman7
`Riddle, Ferdinand, Wakeman,
`Yu8
`Riddle, Ferdinand, Wakeman,
`RFC19459
`
`1–3, 7, 16, 18
`
`103(a)
`
`
`4 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 103 that became effective on March 16, 2013. Because the
`’646 patent issued from an application filed before March 16, 2013, we
`apply the pre-AIA version of the statutory basis for unpatentability.
`5 Riddle et al., US 6,412,000 B1 (issued June 25, 2002) (Ex. 1008).
`6 Ferdinand et al., WO 92/19054 (published Oct. 29, 1992) (Ex. 1009).
`7 Wakeman et al., US 5,740,175 (issued Apr. 14, 1998) (Ex. 1014).
`8 Yu, US 6,625,150 B1 (issued Sept. 23, 2003) (Ex. 1011).
`9 T. Berners-Lee et al., Hypertext Transfer Protocol -- HTTP/1.0, Request
`for Comments: 1945, Network Working Group (May 1996) (Ex. 1010).
`
`8
`
`
`
`IPR2020-00337
`Patent 6,771,646 B1
`
`Pet. 7, 17–95. Petitioner submits the Declaration of Dr. Jon B. Weissman
`(Ex. 1006) in support of its arguments.
`II. DISCUSSION
`A. Discretionary Denial Under 35 U.S.C. § 314(a)
`Institution of an inter partes review is discretionary. Section 314(a)
`of title 35 of the United States Code provides that “[t]he Director may not
`authorize an inter partes review to be instituted unless the Director
`determines that the information presented in the petition . . . and any
`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.” The Supreme Court has explained that, because § 314 includes no
`mandate to institute review, “the agency’s decision to deny a petition is a
`matter committed to the Patent Office’s discretion.” Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2140 (2016); see also Harmonic Inc. v. Avid
`Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under
`§ 314(a), “the PTO is permitted, but never compelled, to institute an IPR
`proceeding”). The Director has delegated his authority under § 314(a) to the
`Board. 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the
`Director.”).
`As the November 2019 Consolidated Trial Practice Guide10 (“CTPG”)
`noted, the Leahy-Smith America Invents Act (“AIA”) was “designed to
`establish a more efficient and streamlined patent system that will improve
`patent quality and limit unnecessary and counterproductive litigation costs.”
`CTPG at 56 (quoting H.R. Rep. No. 112-98, pt. 1, at 40 (2011), 2011
`
`10 Available at https://www.uspto.gov/sites/default/files/documents/
`tpgnov.pdf.
`
`9
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`IPR2020-00337
`Patent 6,771,646 B1
`U.S.C.C.A.N. 67, 69 (stating that post grant reviews were meant to be
`“quick and cost effective alternatives to litigation”)) (citing S. Rep. No.
`110-259, at 20 (2008)). The Board has recognized these goals of the AIA,
`but also has “recognize[d] the potential for abuse of the review process by
`repeated attacks on patents.” Gen. Plastic Co. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 at 16−17 (PTAB Sept. 6, 2017) (precedential as to
`§ II.B.4.i) (“General Plastic”).
`Patent Owner argues that we should exercise our discretion under
`35 U.S.C. § 314(a) to deny the Petition for two reasons: first, because there
`are two co-pending district-court litigations that “have advanced into the
`claim construction process and are into discovery regarding infringement
`and validity issues”; and second, because “the instant petition is a serial
`petition attacking the same patents and claims that have been challenged in
`prior petitions.” Prelim. Resp. 27–37; Prelim. Sur-Reply 1. Petitioner
`disagrees. Pet. 4–5; Prelim. Reply 1–10.
`1. Parallel District Court Proceedings
`As noted above, there are two co-pending district-court litigations
`involving the ’626 patent and the same parties: Packet Intelligence LLC v.
`Juniper Networks, Inc., 3:19-cv-04741 (N.D. Cal.) and Palo Alto Networks,
`Inc. v. Packet Intelligence LLC, No. 3:19-cv-02471 (N.D. Cal) (collectively,
`“the co-pending litigations”). See supra § I.A. Pointing to these co-pending
`litigations, Patent Owner argues that institution in this proceeding would not
`be an effective alternative to those litigations, nor an efficient use of the
`Board’s limited resources. Prelim. Resp. 1, 27–33.
`In determining whether to exercise discretion to deny institution under
`§ 314(a) on behalf of the Director for reason of parallel court proceeding(s),
`we are guided by the Board’s precedential decisions in NHK Spring Co. v.
`
`10
`
`
`
`IPR2020-00337
`Patent 6,771,646 B1
`Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018)
`(“NHK”) and Fintiv. In NHK, the Board found that the “advanced state of
`the district court proceeding” was a “factor that weighs in favor of denying”
`the petition under § 314(a). NHK, Paper 8 at 20. The Board determined that
`“[i]nstitution 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.’” Id. (citing Gen. Plastic,
`Paper 19 at 16–17).
`In Fintiv, the Board explained that “cases addressing earlier trial dates
`as a basis for denial under NHK have sought to balance considerations such
`as system efficiency, fairness, and patent quality.” Fintiv, Paper 11 at 5.
`Fintiv sets forth six non-exclusive factors for determining “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.” Id. at 6.
`These factors consider:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the parallel
`proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Id. at 5–6. We discuss the parties’ arguments in the context of considering
`the above factors. In evaluating the factors, we take a holistic view of
`
`11
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`IPR2020-00337
`Patent 6,771,646 B1
`whether efficiency and integrity of the system are best served by denying or
`instituting review. Id. at 6.
`a. Whether the court granted a stay or evidence exists that
`one may be granted if a proceeding is instituted
`Patent Owner argues that “this factor strongly favors discretionary
`denial” because Petitioner has not moved for a stay of the co-pending
`litigations and because the District Court would be unlikely to grant a stay in
`any event. Prelim. Resp. 29–30. As to the latter, Patent Owner directs us to
`an exchange that occurred during a joint case-management conference
`between counsel for Petitioner and the District Court. Id. (citing Ex. 2005,
`10–11). Patent Owner argues that the District Court’s statement to the
`Petitioner to “[s]ave your money” shows that the district court would be
`unlikely to grant a stay should Petitioner move for one. Id. (emphasis
`omitted). Petitioner contends that Patent Owner mischaracterizes the
`exchange, and that the District Court simply advised Petitioner that it would
`not grant a motion to stay pre-institution. Prelim. Reply 4–5. On
`consideration of the parties’ respective arguments and evidence, we find that
`Petitioner has the better position.
`As Petitioner points out, the exchange between counsel for Petitioner
`and the District Court related to Petitioner’s inquiry as to whether the
`District Court would be amenable to granting a motion to stay
`pre-institution. Prelim. Reply 4. Specifically, Petitioner asked about
`“fil[ing] a stay motion based on the filing of the IPRs not waiting until the
`petitions are ruled on.” Ex. 2005, 10–11. The District Court indicated that,
`in the past, it “granted them sort of willy-nilly,” but no longer does so. Id.
`We agree with Petitioner that this exchange relates to the District Court’s
`inclination to grant a stay based solely on filing a petition, not based on a
`
`12
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`IPR2020-00337
`Patent 6,771,646 B1
`decision whether or not to institute this proceeding. Prelim. Reply 4.
`Accordingly, we find that the cited exchange has little probative value with
`respect to the question of whether “evidence exists that [a stay] may be
`granted if a proceeding is instituted” under the first Fintiv factor.
`Petitioner contends that the District Court would likely stay the
`co-pending litigations if this proceeding is instituted. Prelim. Reply 4–5.
`Petitioner contends that the district court “already stated in the prior
`[case-management conference] that institution of relevant IPRs[11] would
`result in a stay.” Id. at 4 (citing Ex. 1084, 7–8 (case management conference
`of August 20, 2019)). Petitioner also contends that the District Court’s
`inclination to grant stays is confirmed by two recent decisions granting
`motions to stay in J&K IP Assets, LLC v. Armaspec, Inc. (Case No. 17-cv-
`07308-WHO (N.D. Cal. Apr. 24, 2019)) and Contour IP Holding, LLC v.
`GoPro (2018 WL 6574188, *2–*3 (N.D. Cal. Dec. 12, 2018)). Id. at 5
`(citing Ex. 1098; Ex. 1099). Patent Owner argues that those decisions are
`inapt because the District Court’s “recent activity concerning stays pending
`IPRs indicates that [it] will grant such a stay when agreed to by the parties.”
`Prelim. Sur-Reply 3 (citing Ex. 2050). Patent Owner also argues that the
`District Court’s statements during the case-management conference are not
`relevant because “that conference related to different IPRs that were filed
`less than two months after [Petitioner] filed its complaint in the co-pending
`district court litigation.” Id. at 2 (citing Ex. 2044; Ex. 2045; Ex. 2046;
`
`
`11 During this case management conference, the district court was inquiring
`as to the status of IPR petitions filed by Nokia in July 2019 against some of
`the same patents being asserted in the parallel proceeding against petitioners
`here.
`
`13
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`IPR2020-00337
`Patent 6,771,646 B1
`Ex. 2047; Ex. 2048; Ex. 2049). Here, however, the Petition was filed
`approximately nine months after the complaint was filed. Id.
`We find that the record contains adequate evidence that the District
`Court may grant a stay upon institution. Specifically, after observing that
`“there are so many PTAB proceedings,” the District Court stated that “if
`they are instituted . . . [t]his will cause a stay in the proceedings.” Ex. 1084,
`7:22–24, 8:12–14. We acknowledge that the District Court’s statements are
`not specifically directed to this proceeding, because the case-management
`conference took place before the Petition was filed. See id. at 3:1 (setting
`forth a date of August 20, 2019). Even so, the District Court’s statements
`provide some evidence that it may grant a stay upon institution considering
`all circumstances at the time the motion is filed. Id. at 8:15–18.
`For these reasons, we find that the first Fintiv factor does not support
`exercising our discretion to deny institution pursuant to § 314(a).
`b. Proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision
`A trial in Palo Alto Networks, Inc. v. Packet Intelligence LLC is
`currently scheduled to start on August 30, 2021. Ex. 2006, 3. A trial in
`Packet Intelligence LLC v. Juniper Networks, Inc. is currently scheduled to
`start on September 13, 2021. Ex. 2007, 2. The Board’s projected statutory
`deadline for a final written decision is September 10, 2021. See 35 U.S.C.
`§ 316(a)(11). Patent Owner argues that the second Fintiv factor “slightly
`favors discretionary denial” because “the first trial date is before the
`statutory deadline for a final written decision,” and “the second only two
`days after the statutory deadline.” Prelim. Resp. 30. In contrast, Petitioner
`contends that this factor “weighs slightly against denial,” because both trial
`dates are tentative due to the COVID-19 pandemic and because Patent
`
`14
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`IPR2020-00337
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`Owner has previously expressed a “preference for a three-month gap”
`between the first trial in Palo Alto Networks, Inc. v. Packet Intelligence LLC
`and the second trial in Packet Intelligence LLC v. Juniper Networks, Inc.
`Prelim. Reply 5–6 (citing Ex. 2005, 4, 8). Patent Owner responds that it
`“currently does not intend to request an additional extension of the Juniper
`schedule.” Prelim. Sur-Reply 4. Patent Owner also argues that “[t]o the
`extent the district court litigations incur additional delays due to COVID-19,
`it is likely that PTAB proceedings will incur similar delays.” Id. at 4–5.
`We determine that, on this record, the second Fintiv factor weighs
`against exercising our discretion to deny institution pursuant to § 314(a).
`Patent Owner’s statement that it does not currently intend to seek an
`additional extension of time for the second trial is equivocal. And, although
`the first trial is currently scheduled to begin days before a final written
`decision is due, we find that it is more likely that the District Court will
`incur delays due to the COVID-19 pandemic than the Board. The Board has
`explained that, “barring exceptional circumstances, the Board adheres to a
`one-year statutory deadline prescribed by 35 U.S.C. § 316(a)(11) for entry of
`final decisions in instituted inter partes reviews.” Sand Revolution II, LLC
`v. Cont’l Intermodal Grp.-Trucking LLC, IPR2019-01393, Paper 24 at 8–10
`(PTAB June 16, 2020). And “even in the extraordinary circumstances under
`which the entire country is currently operating because of the COVID-19
`pandemic, the Board continues to be fully operational” and meeting all
`statutory deadlines for final written decisions. Id. We note that during the
`same period, the District Court agreed to reschedule the first trial date, and,
`unlike the Board, the District Court is not bound by a statutory deadline
`when considering further extensions or changed circumstances. Ex. 1093.
`
`15
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`IPR2020-00337
`Patent 6,771,646 B1
`c. Investment in the parallel proceeding by the court and
`the parties
`Patent Owner argues that the third Fintiv factor weighs in favor of
`discretionary denial because the parties have made “significant investments
`in discovery, contentions, and claim construction to date.” Prelim. Resp. 32.
`Specifically, Patent Owner argues that the parties “have been engaged in
`extensive discovery and code review,” “exchanged infringement and
`invalidity contentions,” “exchanged claim construction positions and
`evidence,” and filed “[o]pening claim construction briefs.” Id. at 30–31.
`Petitioner contends that this factor does not weight in favor of discretionary
`denial because discovery “is far from complete.” Prelim. Reply 7. For
`example, Petitioner contends, “[n]o fact witnesses or experts have been
`deposed” and “[t]here has been no expert discovery.” Id.
`We have reviewed the parties’ respective arguments and evidence and
`determine that the third Fintiv factor weighs against exercising our
`discretion to deny institution pursuant to § 314(a). Although it is clear that
`the parties have invested significant effort in the discovery process,
`discovery is not yet complete. Prelim. Reply 7. We are also not aware of
`any decision by the District Court on claim construction. In light of these
`facts, the investment of time and effort that remains to bring the co-pending
`litigations to trial appears to far outweigh that which has already been
`invested.
`
`d. Overlap between issues raised in the petition and in the
`parallel proceeding
`Patent Owner argues that the fourth Fintiv factor “weighs strongly in
`favor of discretionary denial” because the co-pending litigations “will
`address substantially the same invalidity theories.” Prelim. Resp. 33. Patent
`
`16
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`IPR2020-00337
`Patent 6,771,646 B1
`Owner points out that Petitioner relies on the same prior-art references (i.e.,
`Riddle, Ferdinand, Wakeman, Yu, and RFC1945) in both this Petition and
`the co-pending litigations. Id. at 32–33. Petitioner contends that it is
`“premature to compare arguments, evidence, or issues” because Patent
`Owner has yet to respond to Petitioner’s invalidity contentions in the
`co-pending litigations. Prelim. Reply 8. Petitioner also contends that it
`challenges claims in this Petition that it has yet to challenge in the
`co-pending litigations, and thus, “these IPRs will address the validity of
`claims, and likely whole patents, that the district court trials will not
`address.” Id. Finally, Petitioner argues that this factor weighs against
`discretionary denial because Patent Owner has asserted its patents against
`network router sellers and manufacturers “and a public trial record of the
`important invalidity grounds in the Petition will reduce issues for the
`public.” Id.
`Upon consideration of the parties’ respective arguments, as well as the
`possibilities that the district court may stay the related litigations or at least
`postpone the trial dates (see supra §§ II.A.1.a, II.A.1.b), we find that the
`fourth Fintiv factor weighs against exercising our discretion to deny
`institution pursuant to § 314(a). Specifically, we find there is a reasonable
`likelihood that the Board will address the overlapping validity issues prior to
`the district court reaching them at trial in either of the related litigations,
`thereby providing the possibility of simplifying issues for trial in those
`litigations. See, e.g., MED-EL Elektromedizinische Geraete GmbH v.
`Sonova AG, IPR2020-00176, Paper 13 at 15 (PTAB June 3, 2020)
`(“MED-EL”) (“As to the fourth factor, the parties do not dispute that overlap
`exists between the invalidity issues in this case and in the district court. This
`overlap may inure to the district court’s benefit, however, by simplifying
`
`17
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`IPR2020-00337
`Patent 6,771,646 B1
`issues for trial should we reach our determination on the challenges raised in
`the Petition before trial.”).
`e. Whether the petitioner and the defendant in the parallel
`proceeding are the same party
`There is no dispute that the Petitioner is the defendant in the
`co-pending litigations. Nonetheless, given the considerations discussed
`above with respect to factors one, two, and four, and the concomitant
`possibility that the Board will reach a decision on validity before the district
`court does so, thereby giving rise to potential estoppel against Petitioner, we
`regard this factor as neutral or weighing at most slightly in favor of denial.
`See, e.g., MED-EL at 15 (concluding that factor 5 weighed slightly in favor
`of denial where the petitioner was also the defendant in the district court
`proceeding).
`
`f. Other circumstances that impact the Board’s exercise
`of discretion, including the merits
`Patent Owner argues that the sixth Fintiv factor weighs in favor of
`discretionary denial because “none of Riddle, Yu, or RFC 1945 disclose the
`claimed ‘conversational flows.’” Prelim. Resp. 33. For the reasons
`explained below, however, we preliminarily determine that the prior art
`teaches or suggests “conversational flows” as claimed. See infra §§ II.E.,
`II.F. Thus, this factor does not support exercising our discretion to deny
`institution pursuant to § 314(a). See also Prelim. Reply 9.
`g. Weighing the Factors
`We agree with Petitioner that the factors on balance do not favor
`discretionary denial. Although no single factor is dispositive, the fact that
`the Board will issue its final written decision within one year of the date for
`institution under 35 U.S.C. § 316(a)(11)—whereas the trial dates for the
`
`18
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`IPR2020-00337
`Patent 6,771,646 B1
`co-pending litigations are currently set to occur around the same time as the
`due date for the final written decision, and being so far distant from the date
`of this Decision, they are uncertain given the COVID-19 pandemic (factor
`two), and the fact that the District Court has indicated that institution of
`relevant IPRs may result in a stay (factor one) weigh heavily against
`discretionary denial. Of the remaining factors, we find only the fifth factor
`potentially to weigh slightly in favor of discretionary denial, and even then
`not sufficiently to tip the balance in our holistic review of all of the Fintiv
`factors. For these reasons, we decline to exercise our discretion to
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