Trials@uspto.gov
`571-272-7822
`
`Paper 12
`Entered: November 20, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC, SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC., LG ELECTRONICS INC., and LG
`ELECTRONICS U.S.A., INC.,
`Petitioner,
`
`v.
`
`PARUS HOLDINGS, INC.,
`Patent Owner.
`____________
`
`IPR2020-00846
`Patent 7,076,431 B2
`____________
`
`
`
`Before DAVID C. MCKONE, STACEY G. WHITE, and
`SHELDON M. MCGEE, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request on Rehearing of Decision on Institution
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`571-272-7822
`
`Paper 12
`Entered: November 20, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC, SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC., LG ELECTRONICS INC., and LG
`ELECTRONICS U.S.A., INC.,
`Petitioner,
`
`v.
`
`PARUS HOLDINGS, INC.,
`Patent Owner.
`____________
`
`IPR2020-00846
`Patent 7,076,431 B2
`____________
`
`
`
`Before DAVID C. MCKONE, STACEY G. WHITE, and
`SHELDON M. MCGEE, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request on Rehearing of Decision on Institution
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`IPR2020-00846
`Patent 7,076,431 B2
`
`INTRODUCTION
`I.
`Background and Summary
`A.
`Google LLC, Samsung Electronics Co., Ltd., Samsung Electronics
`America, Inc., LG Electronics Inc., and LG Electronics U.S.A., Inc.,
`(collectively, “Petitioner”) filed a Petition requesting an inter partes review
`of claims 1, 2, 4–7, 9, 10, 13, and 14 of U.S. Patent No. 7,076,431 B2
`(Ex. 1001, “the ’431 patent”). Paper 2 (“Pet.”). Parus Holdings, Inc.
`(“Patent Owner”) filed a Preliminary Response to the Petition. Paper 6
`(“Prelim. Resp.”). Pursuant to our authorization, Petitioner filed a Reply,
`Paper 7 (“Reply”), and Patent Owner filed a Sur-reply, Paper 8 (“Sur-
`reply”).
`Upon consideration of the Petition, Preliminary Response, Reply, and
`Sur-reply, we instituted an inter partes review of the ’431 patent. Paper 9
`(“Dec.”), 1. In doing so, we rejected arguments by Patent Owner that we
`should exercise our discretion under 35 U.S.C. § 314(a), NHK Spring Co. v.
`Intri-Plex Technologies, Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12,
`2018) (precedential), and Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`Paper 11 (PTAB Mar. 20, 2020) (precedential), to deny the petition in light
`of trials scheduled in several cases, including Parus Holdings Inc. v.
`Samsung Electronics Co., Ltd., No. 6:19-cv-00438 (W.D. Tex.), and Parus
`Holdings Inc. v. Google LLC, No. 6:19-cv-00433 (W.D. Tex.1)2
`(collectively, “the Texas case”). Dec. 9–22.
`
`
`1 We refer to the United States District Court for the Western District of
`Texas, Waco Division, as “the Texas court” in this Decision.
`2 An additional case, Parus Holdings Inc. v. LG Electronics, Inc., No. 6:19-
`cv-00437 (W.D. Tex.), has been transferred to the United States District
`Court for the Northern District of California. Ex. 1032.
`
`2
`
`
`
`IPR2020-00846
`Patent 7,076,431 B2
`Patent Owner asks us to reconsider our decision not to exercise our
`discretion to deny the Petition in light of alleged “new facts that have arisen
`since the Board’s Decision, which decidedly tilt the Fintiv factors in favor of
`denying institution in light of the earlier trial in the Parallel Proceeding in
`the District Court for the Western District of Texas.” Paper 11 (“Req.”), 1.
`For the reasons given below, we decline to modify our Decision.
`
`
`II. ANALYSIS
`
`A. Legal Background
`When rehearing a decision on institution, we review the decision for
`an abuse of discretion. See 37 C.F.R. § 42.71(c) (2019). An abuse of
`discretion may be indicated if a decision is based on an erroneous
`interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281
`(Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir.
`2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The
`burden of showing that the Institution Decision should be modified is on
`Patent Owner, the party challenging the Decision. See 37 C.F.R. § 42.71(d)
`(2019). In addition, “[t]he request must specifically identify all matters the
`party believes [we] misapprehended or overlooked, and the place where each
`matter was previously addressed in a motion, an opposition, or a reply.” Id.
`Institution of inter partes review is discretionary. See Harmonic Inc.
`v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
`permitted, but never compelled, to institute an IPR proceeding.”); 35 U.S.C.
`§ 314(a). The Board has held that the advanced state of a parallel district
`court action is a factor that may weigh in favor of denying a petition under
`
`3
`
`
`
`2.
`
`3.
`
`IPR2020-00846
`Patent 7,076,431 B2
`§ 314(a). See NHK Spring, Paper 8 at 20; Patent Trial and Appeal Board,
`Consolidated Trial Practice Guide, 58 & n.2 (Nov. 2019). We consider the
`following factors to assess “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”:
`1. whether the court granted a stay or evidence exists that
`one may be granted if a proceeding is instituted;
`proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision;
`investment in the parallel proceeding by the court and the
`parties;
`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
`other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Fintiv, Paper 11 at 5–6. In evaluating these factors, we “take[] a holistic
`view of whether efficiency and integrity of the system are best served by
`denying or instituting review.” Id. at 6.
`
`
`4.
`
`6.
`
`Patent Owner’s Arguments
`B.
`Patent Owner does not argue that we misapprehended or overlooked
`any argument or evidence that it presented previously. Rather, Patent Owner
`argues that we should re-evaluate our Decision in light of “new facts” that
`have arisen in the Texas court after our Decision. Req. 1–2. In particular,
`Patent Owner argues that Petitioner Google and Patent Owner have
`confirmed that they are available for trial in July 2021, and the Texas court
`has resumed conducting jury trials, which, together, should impact our
`
`4
`
`
`
`IPR2020-00846
`Patent 7,076,431 B2
`evaluation of Fintiv factors 2 and 5 by removing any doubt that a trial in the
`Texas court will happen in July 2021. Id.
`The Texas court’s scheduling order sets a “Predicted Jury
`Selection/Trial” for July 12–30, 2021. Ex. 1016, 2. As to Fintiv factor 2, we
`determined that “we [could not] ignore the substantial uncertainty in the
`Texas court’s “Predicted Jury Selection/Trial” date and the fact that the
`scheduled trial date is nine months from now and much can change during
`this time.” Dec. 14. Thus, we decided, “[w]hether the Texas court’s trial
`takes place before, contemporaneously with, or after our final written
`decision statutory deadline involves substantial speculation,” and “this factor
`is, at best, neutral to whether we should exercise our discretion to deny the
`Petition.” Id. As to Fintiv factor 5, we explained that “[t]his fact could
`weigh either in favor of, or against, exercising discretion to deny institution,
`depending on which tribunal was likely to address the challenged patent
`first,” a matter on which we declined to speculate and, accordingly, we
`determined the factor to be neutral. Id. at 20–21.
`Patent Owner argues that, after pre-institution briefing, the Texas
`court held a Markman hearing, during which the Texas court stated that the
`Texas case would have a trial during the latter half of July 2021 and
`requested that the parties provide their availability. Req. 3–4 (citing
`Ex. 2015, 52–53). According to Patent Owner, after our Decision, both
`Petitioner Google and Patent Owner indicated to the Texas court that they
`are available for a trial between July 12–23, and that the Texas court
`“informed the parties that they may use July 12, 2021 as the scheduled trial
`date.” Id. at 4 (citing Ex. 2018). Patent Owner further argues that “jury
`trials are now going forward in the Western District of Texas,” and the
`Texas court “has been hearing patent cases.” Id. (citing Ex. 2019). In light
`
`5
`
`
`
`IPR2020-00846
`Patent 7,076,431 B2
`of these developments, Patent Owner argues, “[t]here is thus no reason to
`doubt that the district court trial will go forward in July 2021.” Id. Patent
`Owner concludes that Fintiv factors 2 and 5 “now weigh heavily against
`institution.” Id.
`At the Markman hearing to which Patent Owner refers, the Texas
`court reiterated “the goal of the Court . . . to get the case tried in July,” and
`indicated that it was “not going to pick a date right now,” but that it was
`“looking at setting trial in this case somewhere between July 12th and the
`end of July [2021].” Ex. 2015, 52:16–20, 53:9–10. The Texas court then
`asked counsel for Petitioner and other defendants in the Texas case and
`related cases to consult their calendars and suggest dates for the trial. Id. at
`52:20–53:13. In an email to the Texas court, Petitioner Google, Patent
`Owner, and two other defendants later informed the Texas court that they
`could be available for trial between July 12 and either July 23 or July 31,
`2021. Ex. 2018, 4. Petitioner Samsung indicated that it could be available
`after August 9, 2021. Id. On October 8, 2020, an email from staff at the
`Texas court stated:
`As we are still a ways out from trial, the Court is going to
`schedule all four of the trials for 7/12/2021. The first trial will
`go 7/12 but as we get closer to trial and details solidify we will
`determine the actual order. Depending on what the Court
`decides, Samsung will likely be the last to be tried with a trial
`date sometime in August.
`Id. at 2. Counsel for Patent Owner responded to the Texas court staff on
`October 13, 2020, stating that “[t]he trial schedule is important not only for
`our planning in this case, but also because the issue of the trial date and
`Apple’s pending motion to stay have come up in the IPR proceedings, and
`we want to make sure we provide timely and accurate information to the
`
`6
`
`
`
`IPR2020-00846
`Patent 7,076,431 B2
`PTAB about those issues.” Id. at 1. An October 13, 2020, email from the
`Texas court staff replied: “You may use 7/12/2021 as the scheduled trial
`date.” Id. The record, however, does not include any order from the Texas
`court scheduling a trial date for any of the defendants in the Texas case.
`Thus, it is unclear if the Texas court has scheduled any of the trials in the
`Texas case.
`We first note that we considered the comments provided by the Texas
`court in the Markman hearing, and Patent Owner’s arguments regarding
`those comments, in the Decision and were not persuaded. Dec. 13; Sur-
`Reply 3–4. A request for rehearing is not an opportunity for a party to
`express disagreement with how we resolved an issue it raised previously. As
`to Patent Owner’s remaining arguments, all of the email communications
`between Patent Owner and the Texas court on which the arguments are
`based took place before we issued our Decision on October 21, 2020.
`Despite representing to the Texas court that it sought more firm trial
`scheduling information to “provide timely and accurate information to the
`PTAB about those issues” (Ex. 2018, 1), Patent Owner did not provide that
`information to us. Thus, we could not have misapprehended or overlooked
`it. For that reason alone, Patent Owner’s new arguments are improper and
`insufficient.
`Nevertheless, even if we were to consider the arguments, they would
`not be persuasive. We do not view the circumstances to have changed
`materially. The record still is unclear as to whether the Texas court has set a
`trial date. Staff at the Texas court has indicated that Patent Owner “may use
`7/12/2021 as the scheduled trial date” for a group of trials that will include
`Petitioners (Ex. 2018, 1), but the record does not indicate that the Texas
`court has issued any orders to that effect.
`
`7
`
`
`
`IPR2020-00846
`Patent 7,076,431 B2
`Fintiv factor 2 looks at the proximity of the trial date to the date of our
`final decision to assess the weight to be accorded a trial date set earlier than
`the expected final written decision date. This proximity inquiry is a proxy
`for the likelihood that the trial court will reach a decision on validity issues
`before the Board reaches a final written decision. A trial set to occur soon
`after the institution decision is fairly likely to happen prior to the Board’s
`final decision, even if the trial date were postponed due to intervening
`circumstances. Here, however, a July 12, 2021, trial date would be
`approximately three months before our final written decision is due. Even
`considering the allegedly changed circumstances raised by Patent Owner,
`there is at least some persuasive evidence that delays are possible. In these
`circumstances, the efficiency and system integrity concerns that animate the
`Fintiv analysis are not as strong—all other things being equal. Accordingly,
`even if we were to consider Patent Owner’s new arguments, this factor still
`would be, at best, neutral to whether we should exercise our discretion to
`deny the Petition. For the same reasons, our analysis of Fintiv factor 5 also
`would remain unchanged.
`
`
`III. CONCLUSION
`For the foregoing reasons, Patent Owner has not demonstrated that we
`misapprehended or overlooked its arguments or abused our discretion in
`instituting a trial of the ’431 patent.
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED Patent Owner’s Request for Rehearing is denied.
`
`
`
`8
`
`
`
`IPR2020-00846
`Patent 7,076,431 B2
`FOR PETITIONER:
`
`Elisabeth Hunt
`Ehunt-ptab@wolfgreenfield.com
`
`Gregory Nieberg
`Gnieberg-ptab@wolfgreenfield.com
`
`Richard Giunta
`Rgiunta-ptab@wolfgreenfield.com
`
`
`FOR PATENT OWNER:
`
`Michael McNamara
`mmcnamara@mintz.com
`
`Michael Renaud
`mtrenaud@mintz.com
`
`William Meunier
`wameunier@mintz.com
`
`
`
`9
`
`
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