Paper 11
`Trials@uspto.gov
`Date: September 1, 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.
`____________
`
`IPR2020-00506
`Patent 9,769,176 B1
`____________
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2020-00506
`Patent 9,769,176 B2
`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`an inter partes review of claims 1–26 (the “challenged claims”) of U.S.
`Patent No. 9,769,176 B1 (Ex. 1001, “the ’176 patent”). Petitioner filed a
`Declaration of Craig E. Wills, Ph.D. (Ex. 1003) with its Petition. Patent
`Owner, Seven Networks, LLC (“Patent Owner”), filed a Preliminary
`Response (Paper 7, “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 ’176
`patent on all grounds of unpatentability presented.
`I. BACKGROUND
`Real Parties-in-Interest
`Petitioner identifies Apple Inc. as the real party-in-interest. Pet. 71.
`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 ’176 patent. Pet. 71; Paper 4.
`C.
`The ’176 patent
`The ’176 patent describes “[s]ystems and methods for authenticating
`access to multiple data stores substantially in real time.” Ex. 1001, code
`
`B.
`
`A.
`
`2
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`IPR2020-00506
`Patent 9,769,176 B2
`(57). A “server may authenticate access to the data stores and forward
`information from those stores to the client device.”
`D.
`Illustrative Claim 1
`Of the challenged claims, independent claim 1, recites a “[a] server
`for providing access to one or more data stores, comprising,” and
`independent claim 14 recites “[a] method for providing access to one or
`more data stores, comprising,” Claims 1 and 14 recite materially similar
`limitations. Remaining challenged claims 2–13 and 15–26 depend from
`claim 1 and claim 14, respectively.
`Claim 1 illustrates the challenged claims at issue:
`
`1. [1.pre] A server for providing access to one or more
`
`data stores, comprising:
`
`[1.1a] a memory and a processor, [1.1b] the server
`communicatively coupled to a network and the one or more data
`stores,
`
`
`[1.2] wherein the server is configured to:
`
`send a first identifier for a client device upon
`the client device communicating with the server for
`the client device to present the first identifier in a
`subsequent connection with the server;
`
`[1.3a] receive registration information for a
`data store from the client device, [1.3b] wherein a
`second identifier is generated and associated with
`the data store and the registration information,
`wherein the second identifier is send [sic] to the
`client device;
`
`[1.4] receive, via the subsequent connection
`with the client device, a request for the client device
`to receive information from the data store, wherein
`
`3
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`includes
`
`the first
`
`IPR2020-00506
`Patent 9,769,176 B2
`the subsequent connection
`identifier;
`
`[1.5] configure a service to receive data from
`the data store on behalf of the client device, wherein
`the service is based on the second identifier;
`
`[1.6] receive a first message indicative of new
`information at the data store;
`
`[1.7] transmit a second message to the client
`device in response to receipt of the first message;
`
`[1.8] wherein
`additional
`information
`associated with the first message is sent from the
`data store to the client device upon receipt of the
`second message by the client device.
`Ex. 1001, 19:33–60; see Pet. 15–33 (quoting Ex. 1001, 19:33–60 (bracketed
`information by Petitioner)).
`E.
`The Asserted Grounds
`Petitioner challenges claims 1–28 of the ’176 patent on the following
`grounds (Pet. 2):
`
`Claims Challenged
`
`1–9, 11–22, 24–26
`
`35 U.S.C.
`§
`1031
`
`References
`
`Yared2 Lefeber3
`
`
`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 ’176 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. See Pet. 3–5 (asserting the earliest
`effective priority date is December 18, 2006).
`2 Yared, US 2003/0149781 A1, published Aug. 7, 2003 (Ex. 1005).
`3 Lefeber et al., US 2002/0046299 A1, published Apr. 18, 2002 (Ex. 1006).
`
`4
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`IPR2020-00506
`Patent 9,769,176 B2
`
`Claims Challenged
`
`35 U.S.C.
`§
`
`10, 23
`
`1–9, 11–22, 24–26
`
`10, 23
`
`103
`
`103
`
`103
`
`References
`
`Yared, Lefeber, Cook4
`
`Yared, Wills5
`
`Yared, Wills, Cook
`
`
`II. DISCRETION TO DENY INSTITUTION UNDER § 314(a)
`Regarding the parallel District Court Action (supra Section I.B),
`Patent Owner argues “[t]he circumstances present here are the same as those
`the Board found warranted a denial of institution in NHK Spring Co. v. Intri-
`Plex Techs., Inc., IPR2018-00752, Paper 8 [at] 20 (PTAB Sept. 12, 2018)
`(‘NHK’) ([precedential]).” Prelim. Resp. 3.
`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
`
`
`4 Cook et al., US 7,783,281 B1, issued Aug. 24, 2010 (Ex. 1007).
`5 Wills et al., US 2005/0169285 A1, published Aug. 4, 2005 (Ex. 1008).
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`5
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`IPR2020-00506
`Patent 9,769,176 B2
`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.” Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (Order analyzing
`NHK issues) (precedential) (“Fintiv”). Overlap among these factors often
`exists and some facts may be relevant to more than one factor. See id.
`Therefore, in evaluating the factors, the Board holistically views whether
`denying or instituting review best serves the efficiency and integrity of the
`system. See CTPG at 58 (quoting 35 U.S.C. § 316(b)); Fintiv, Paper 11 at 6.
`The precedential Fintiv order lists the following factors for
`consideration “when the patent owner raises an argument for discretionary
`denial under NHK due to an earlier trial date”: 1) whether a stay exists or is
`likely to be granted if a proceeding is instituted; 2) “proximity of the court’s
`trial date to the Board’s projected statutory deadline;” 3) “investment in the
`parallel proceeding by the court and . . . parties;” 4) “overlap between issues
`raised in the petition and in the parallel proceeding;” 5) “whether the
`petitioner and the defendant in the parallel proceeding are the same party;”
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`IPR2020-00506
`Patent 9,769,176 B2
`and” 6) “other circumstances that impact the Board’s exercise of discretion,
`including the merits.” Fintiv, Paper 11 at 5–16.
`1.
`Factor 1–Likelihood of Stay
`The parties do not present persuasive record evidence or argument
`showing that the parties requested a stay or that the District Court provided
`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 weighs evenly for each party.
`2.
`Factor 2–Trial Date Versus FWD Due Date
`Patent Owner notes that “[t]he trial is scheduled to begin on
`November 2, 2020, ten months before the September 6, 2021 [final written
`decision (FWD)] deadline, and that is after the parties already pushed back
`the trial date due to COVID-19.” PO Prelim. Sur-Reply 4; see also Ex.
`1040, 1 (District Court scheduling order granting joint motion to extend due
`dates by forty-five days because of the “COVID-19” “pandemic,” including
`extending jury trial date to November 2, 2020).
`Petitioner contends that “there are eighteen . . . cases scheduled to
`begin jury selection on November 2” in the Eastern District of Texas,
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`IPR2020-00506
`Patent 9,769,176 B2
`wherein, “given the inevitability of further COVID-19 outbreaks, further
`scheduling issues cannot be ruled out.” Pet. Prelim. Reply 5 (citing Ex.
`1050, 1–9; Ex. 1047, 1); see Ex. 1047, 1.
`When a district court’s trial date occurs before the projected statutory
`deadline, the Board generally weighs this factor in favor of exercising
`authority to deny institution under § 314(a). Fintiv, Paper 11 at 9. However,
`other variables here contribute to the uncertainty that the jury trial will occur
`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 disrupted the trial date once, and the situation
`continually evolves. See Ex. 1040 (District Court scheduling order moving
`the trial date from September 14, 2020 to November 2, 2020 due to COVID-
`19, based on a joint motion by the parties); Ex. 2002 (same); Ex. 1047, 1.
`This parties’ previous agreement to extend scheduling order dates and
`uncertainty as to whether the trial will actually go forward on the presently
`scheduled date diminishes the extent to which this factor weighs in favor of
`exercising discretion to deny institution. See Sand Revolution II, LLC v.
`Continental Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at
`9–10 (June 16, 2020) (informative) (“because of the number of times the
`parties have jointly moved for and the district court agreed to extend the
`scheduling order dates . . . and the uncertainty that continues to surround the
`scheduled trial date, we find that this factor weighs marginally in favor of
`not exercising discretion to deny institution under 35 U.S.C. § 314(a)”).
`Even so, given the substantial gap of approximately ten months between the
`trial date and the expected final written decision deadline in this proceeding,
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`IPR2020-00506
`Patent 9,769,176 B2
`it is unclear, based on the present record, that the trial date would be delayed
`to a date after a final written decision in this proceeding as a result of
`COVID-19.
`Therefore, given that the District Court’s currently scheduled trial date
`falls roughly ten 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
`3.
`Factor 3–Investment in Proceedings
`Patent Owner contends that in the District Court Action, the claim
`construction hearing order issued on March 31, 2020, the parties filed final
`claim and validity assertions, and prior to or on the institution deadline,
`discovery will close, and service of pretrial disclosures and responses to
`dispositive motions will be due. See Prelim. Resp. 4–5, 20–21. According
`to Patent Owner, “Petitioner’s delay in bringing the present petition” further
`
`
`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
`the statutory deadline of April 11, 2020, instead of February 3, 2020,
`pushing the relative trial dates more than two months farther apart. See Pet.
`Prelim. Reply 5–7 (discussing reasons for some delay as based on filing
`twenty-one petitions and analyzing 550 claims across sixteen patents
`asserted against Petitioner); Prelim. Resp. 22–23 (discussing timing); Ex.
`1052, 194 (listing April 10, 2019 on the Complaint); Pet. 69 (referring to
`“the statutory bar date of April 11, 2020”). Without explicitly considering
`the Petition’s filing date as a fairness consideration under factor 2,
`considering the filing date relative to potential filing dates helps to analyze
`factor 2 on a sliding scale based on relative trial dates.
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`IPR2020-00506
`Patent 9,769,176 B2
`weighs against institution. Id. at 21. Patent Owner also argues that the main
`prior art references supporting the Petition, Yared and Lefeber, were known
`to Petitioner about 6 months before Petitioner filed the Petition. See PO
`Prelim. Sur-reply 5. Patent Owner also asserts “[t]he parties and district
`court have . . . invested incredible amounts of time and effort.” Id. at 5.
`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, responses to dispositive motions and Daubert
`motions, service of pretrial disclosures, and service of objections to
`disclosures and rebuttal disclosures. Ex. 1040. Upcoming deadlines include
`the following: service of objections to rebuttal disclosures (September 3,
`2020), filing of motions in limine (September 3, 2020), filing of a joint
`pretrial order (September 17, 2020), the pretrial conference (September 24,
`2020), and jury trial (November 2, 2020). Id.
`The record shows that the parties and courts invested significant
`resources in the parallel district court litigation albeit with respect to ten
`patents, with some portion of the work relevant to patent validity of the ’176
`patent. However, the District Court only construed one claim term for the
`’176 patent––a term not in dispute here and common to another patent
`asserted against Petitioner. See Ex. 1039, 61–66 (construing “registration
`information” for the ’176 patent and U.S. Patent No. 10,243,962). Also, as
`determined in the next section, minimal to little overlap or investment exists
`
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`IPR2020-00506
`Patent 9,769,176 B2
`in terms of the grounds in the IPR here and the invalidity challenges in the
`District Court Action.
`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 slightly mitigates the
`investment in the District Court litigation by the parties. Petitioner filed the
`Petition over two months before the statutory deadline for filing an inter
`partes review under 35 U.S.C. § 315(b). See Prelim Resp. 21 (asserting
`Petitioner waited “nearly ten months after the complaint was served on April
`11, 2019 and over five months after its initial invalidity contentions were
`served on August 26” to file its Petition); Ex. 2009 (Complaint); supra note
`6.
`
`In addition, with sixteen patents and over five-hundred fifty claims
`asserted against Petitioner, and with Petitioner responding with fourteen
`petitions filed prior to Patent Owner’s initial identification narrowing the
`number of asserted claims, and six of the remaining seven petitions filed
`within one month of it, including the instant Petition, 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-
`
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`hundred fifty claims contained in these patents and the potential prior art that
`might be relevant to them.”); Ex. 1048 (initial narrowing of asserted claims
`and patents), Ex. 1052 (Complaint). In other words, even though the parties
`invested time and effort in the District Court Action, and even though
`Petitioner became aware of Yared and Lefeber around the time of the initial
`invalidity contentions, Petitioner acted reasonably diligently and without
`much delay in exercising its statutory right to file a Petition and twenty other
`petitions, mitigating against the investment (which a District Court stay
`otherwise could have diminished), based, inter alia, on the following: 1) the
`numerous patents (sixteen) and claims (550) asserted against Petitioner, 2)
`Petitioner relies on Yared in a substantially different manner here (i.e., as a
`primary reference) as compared to the District Court (i.e., as a secondary
`reference), and 3) Petitioner filed the Petition (Feb. 3, 2020) two weeks after
`Patent Owner’s filing of the initial notice reducing the number of asserted
`patents and claims (Ex. 1048, Jan. 21, 2020) and about two months prior to
`the final notice reducing the number of asserted patents and claims (Ex.
`1042) April 7, 2020). See Fintiv, Paper 11 at 11.
`Considering the above-noted facts, including the time invested 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.
`4.
`Factor 4–Overlap of Issues
`This factor evaluates “concerns of inefficiency and the possibility of
`conflicting decisions” when substantially identical prior art is submitted in
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`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 th[e] IPR and the District Court Action
`under the same claim construction standard.” Prelim. Resp. 5. Petitioner
`“asks the Board to consider the unique challenges raised in the Petition.”
`Pet. Prelim. Reply 8.
`Petitioner argues that “[t]he only reference presented in both the
`Petition and Apple’s invalidity contentions (Yared) is presented differently
`in each forum, being used as a primary reference in the Petition grounds, but
`only as a secondary reference in Apple’s current invalidity contentions.”
`Pet. Prelim. Reply 8.
`Regarding the overlap of prior art, Patent Owner argues that
`“Petitioner contends Yared is a secondary reference in litigation but does not
`identify with specificity any substantive difference in its arguments.” PO
`Prelim. Sur-reply 7 (emphasis omitted). However, as addressed below, in
`the ground involving Yared and Lefeber here, Petitioner employs Yared by
`reading every limitation in claims 1 and 14 except one onto Yared.
`Similarly, in the ground involving Yared and Wood, Petitioner reads most of
`the limitations in claims 1 and 14 onto Yared. See supra Section I.E (listing
`grounds); infra Section IV.D.3; infra Section IV.F; Pet. 15–33, 41–43, 54–
`57. In contrast, in the District Court Action, Petitioner reads most of the
`claim 1 and 14 limitations onto a different reference not involved in this
`IPR, Innes (US. Patent No. 7,191,218 B1). Ex. 1043, 298–339. And
`Petitioner does not employ Lefeber or Wood in the District Court Action.
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`See Ex. 1041 (Petitioner’s prior art reduction notice).7 Nothing in the record
`indicates that Petitioner relies on Yared to reach the same claim 1 and 14
`limitations in this IPR and the District Court Action. See Ex. 1043
`(Petitioner’s invalidity contentions); supra note 7. Also, to show
`obviousness in the District Court Action, Petitioner would be required to
`provide reasons supported by a factual underpinning to combine Yared with
`Innes and Mens, primary references not employed here (even as secondary
`references)––reasons and facts wholly missing from this IPR. Compare Ex.
`1041, 2–3 (District Court grounds), with supra Section I.E (Petition grounds,
`revealing only Yared as a common reference); see supra note 7. And as
`noted in the previous section, the District Court only construed one claim
`term for the ’176 patent, and that claim term is not in dispute here at this
`stage of trial. See Ex. 1039, 61–66.
`Petitioner also asserts only four claims (i.e., claims 1, 5, 8, 14) of
`twenty-six claims overlap between the District Court Action and the instant
`
`
`7 Petitioner initially employed Lefeber and Yared in its invalidity
`contentions in the District Court Action as primary or anticipatory references
`(along with several other references), but then withdrew Lefeber and shifted
`Yared to a secondary reference after narrowing its challenges pursuant to the
`District Court Order. Compare Ex. 1043, 340–82, 435–79 (Lefeber and
`Yared as primary references), with Ex. 1041 (prior art reduction not listing
`Lefeber and listing Yared as a secondary reference with Innes and Mens as
`primary references); see also Ex. 1044 (supplemental invalidity
`contentions), 13 (listing Mens, Jan-Piet, Real-World BlackBerry MDS Push
`Applications: an Extensible Framework as a secondary reference in the
`initial invalidity contentions). The current record does not reveal how
`Petitioner reads the claims onto Mens in its obviousness challenge that
`combines Mens (primary) and Yared (secondary) in the District Court
`Action. See Ex. 1041. In any event, Petitioner does not employ Mens or
`Innes in this IPR.
`
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`IPR proceeding. See Pet. Prelim. Reply 8–9 & n.3; Ex. 2008 (Patent
`Owner’s final claim reduction notice). In other words, the District Court
`will not address the validity of the 22 dependent claims challenged in this
`IPR proceeding, because Patent Owner limited its infringement allegations
`based on the ’176 patent to independent claims 1 and 14 and dependent
`claims 5 and 8. See Pet. Prelim. Reply 8–9 & n.3; Ex. 2008 (Patent Owner’s
`claim reduction notice); PO Prelim. Sur-reply 8–9.
`Patent Owner counters that Petitioner “does not argue that these other
`claims differ from the asserted claims in any significant way, or provide any
`account of how it could be more than speculatively harmed by their
`continued existence.” PO Prelim. Sur-reply 9. However, Petitioner asserts
`that it “will continue to create innovative new products, and desires Board
`review of these claims, so as to prevent their future assertion by [Patent
`Owner] in potential serial litigation.” Pet. Reply 9 n.3. Patent Owner does
`not address whether it will sue Petitioner or its customers that may use those
`new products. See PO Prelim. Sur-reply 9.
`Based on the foregoing discussion, this record shows that little to no
`overlap exists between this IPR and the District Court Action. Therefore,
`the likelihood of conflicting findings and results in the two proceedings is
`minimal. 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 9–10; PO Prelim. Sur-reply 9–10. “If a petitioner is
`unrelated to a defendant in an earlier court proceeding, the Board has
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`weighed this fact against exercising discretion to deny institution under
`NHK.” Fintiv, Paper 11 at 13–14 (emphasis added).8
`Accordingly, Fintiv factor 5 weighs slightly in favor of Patent Owner.
`6.
`Factor 6–Other Circumstances
`This final Fintiv factor represents a catch-all for any other relevant
`circumstances. Whether to exercise discretion to deny institution under
`§ 314(a) involves “a balanced assessment of all relevant circumstances in the
`case, including the merits.” CTPG 58.
`First, we take into account the fact that the Office already has
`instituted proceedings challenging other patents in dispute in the co-pending
`parallel litigation—IPR2020-00156 (instituted June 15, 2020), IPR2020-
`00157 (instituted June 15, 2020), IPR2020-00188 (instituted June 11, 2020),
`IPR2020-00180 (instituted Aug. 14, 2020), IPR2020-00235 (instituted July
`28, 2020), IPR2020-00255 (instituted July 28, 2020), IPR2020-00266
`(instituted August 14, 2020), IPR2020-00279 (instituted Aug. 14, 2020) and
`IPR2020-00285 (instituted July 28, 2020). It would be inefficient to
`discretionarily deny institution of this Petition, which we determine meets
`the statutory threshold for institution, after having instituted petitions
`challenging other patents in dispute in the parallel proceeding.
`
`
`8 At least one Board member observed that Fintiv “says nothing about
`situations in which the petitioner is the same as, or is related to, the district
`court defendant.” Cisco Sys., Inc. v. Ramot at Tel Aviv Univ. Ltd., IPR2020-
`00122, Paper 15 at 10 (PTAB May 15, 2020) (APJ Crumbley, dissenting).
`According to the dissent in Cisco, if “the factor weighs in favor of denial if
`the parties are the same,” this could “tip the scales against a petitioner
`merely for being a defendant in the district court.” Id. at 11. This “would
`seem to be contrary to the goal of providing district court litigants an
`alternative venue to resolve questions of patentability.” Id.
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`Second, based on the analysis above, including consideration of the
`parties’ arguments in deciding the merits of the Petition and the Preliminary
`Response, Petitioner presents a strong showing on the merits here. In
`summary, on this preliminary record, Petitioner shows that most of the
`independent claim 1 and 14 limitations read on Yared’s system and include
`routine authentication techniques to allow a device to access a service
`provider through an intermediate server. See infra Section IV.D.3; Pet. 9–
`38.
`
`To the extent Yared does not disclose a limitation, the claims largely
`involve a “combination of familiar elements according to known methods .
`. . yield[ing] predictable results.” See 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.”).
`Another circumstance tilts in favor of institution. As indicated above,
`the District Court ordered the parties to reduce issues, including the number
`of claims asserted and the number of prior art challenges to the asserted
`claims. See Ex. 2007. The District Court Action initially involved sixteen
`patents-in-suit and multiple issues, including all twenty-six claims of the
`’176 patent. Ex. 1052 (complaint); Ex. 1043 (invalidity contentions). After
`its complaint, pursuant to the District Court order, Patent Owner narrowed
`its infringement assertions to seventy-five claims and sixteen patents-in-suit,
`including three claims of the ’176 patent. Ex. 1048. Thereafter, pursuant to
`the District Court’s order, Patent Owner narrowed its infringement
`assertions further to thirty-six claims and ten patents-in-suit, including two
`claims of the ’176 patent. Ex. 2008. Accordingly, pursuant to the District
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`Patent 9,769,176 B2
`Court’s order, Petitioner narrowed its prior art challenges to forty-five prior
`art references to challenge the ten patents-in-suit. Ex. 1041.
`This narrowing of issues, including the number of patents-in-suit,
`claims, and prior art invalidity challenges, evidences the complexity of
`multiple patents and issues in the District Court Action. An IPR trial here
`avoids potentially complicated and overlapping jury issues of ten patents,
`while allowing the panel to focus on multiple issues in depth that involve
`only the ’176 patent. Therefore, this inter partes trial will provide the
`parties with an in-depth analysis of the ’176 patent, providing a full record
`that will enhance the integrity of the patent system.
`Accordingly, factor 6 weighs strongly in favor of Petitioner.
`7. Conclusion on § 314(a) Discretionary Denial
`Under Fintiv, the Board takes “a holistic view of whether efficiency
`and integrity of the system are best served by denying or instituting review.”
`Fintiv, Paper 11 at 6. As discussed above, factors 2, 3, and 5, respectively,
`moderately, slightly, and slightly favor exercising our discretion to deny
`institution. Factors 4 and 6, respectively, moderately and strongly, favor not
`exercising our discretion to deny institution. Factor 1 favors neither.
`Weighing the Fintiv factors in this proceeding is a close call.
`However, the unique circumstance in this proceeding where the Office has
`already instituted proceedings challenging other patents in dispute in the
`parallel proceeding combined with the strength of Petitioner’s preliminary
`showing of unpatentability and the lack of overlap in the issues that will be
`pursued in this proceeding and in the District Court favor institution of inter
`partes review. As such, under a holistic analysis, these factors outweigh the
`earlier scheduled trial date in the District Court and the investment in the
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`District Court litigation. Accordingly, under the particular circumstances of
`this case, the interests of efficiency and integrity of the patent system tilt
`toward not invoking our discretionary authority under § 314(a) to deny
`institution of the potentially meritorious Petition.