Trials@uspto.gov
`571-272-7822
`
`Paper 12
`Date: December 1, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
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`IPR2020-01019
`Patent RE47,353 E
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`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`CHAGNON, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
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`571-272-7822
`
`Paper 12
`Date: December 1, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01019
`Patent RE47,353 E
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`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`CHAGNON, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
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`I.
`
`INTRODUCTION
`
`Sotera Wireless, Inc. (“Petitioner”)1 filed a Petition requesting inter
`partes review of claims 1–25 (“the challenged claims”) of U.S. Patent No.
`RE47,353 E (Ex. 1001, “the RE353 patent”). Paper 1 (“Pet.”). Masimo
`Corporation (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). We authorized additional briefing for the parties to
`address the factors laid out in our precedential Order in Apple, Inc. v. Fintiv,
`Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)
`(“Fintiv Order”) regarding the exercise of our discretion under 35 U.S.C.
`§ 314(a). Paper 7. Petitioner filed a Reply (Paper 10) and Patent Owner, in
`turn, filed a Sur-reply (Paper 11).
`We have authority to determine whether to institute an inter partes
`review under 35 U.S.C. § 314, which provides that an inter partes review
`may be instituted only upon a showing 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) (2018). After considering
`the Petition, the Preliminary Response, and the evidence of record, we
`determine that Petitioner has demonstrated a reasonable likelihood of
`prevailing with respect to at least one claim challenged in the Petition.
`Accordingly, we institute an inter partes review of all challenged claims of
`the RE353 patent, based on all grounds identified in the Petition.
`
`
`1 Petitioner identifies Sotera Wireless, Inc. and Hon Hai Precision Industry
`Co., Ltd. (“Hon Hai”) as real parties-in-interest to this proceeding. Pet. 1.
`Petitioner states that Hon Hai is named as a real party-in-interest due to its
`involvement in a related proceeding. Id.
`
`2
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`The following findings of fact and conclusions of law are not final,
`but are made for the sole purpose of determining whether Petitioner meets
`the threshold for initiating review. Any final decision shall be based on the
`full trial record, including any response timely filed by Patent Owner. Any
`arguments not raised by Patent Owner in a timely-filed response may be
`deemed waived, even if they were presented in the Preliminary Response.
`
`A. Related Proceedings
`
`The parties identify Masimo Corp. v. Sotera Wireless, Inc., Case No.
`3:19-cv-01100-BAS-NLS (S.D. Cal.) (the “parallel proceeding”) as a related
`matter involving the RE353 patent. Pet. 2; Paper 4, 1.
`Patent Owner identifies the following inter partes proceedings
`involving patents related to the RE353 patent and asserted in the parallel
`proceeding:
`IPR2020-00912, challenging U.S. Patent No. 10,213,108 B2;
`IPR2020-00954, challenging U.S. Patent No. 9,788,735 B2;
`IPR2020-00967, challenging U.S. Patent No. RE47,244 E;
`IPR2020-01015, challenging U.S. Patent No. 9,795,300 B2;
`IPR2020-01033, challenging U.S. Patent No. RE47,249 E;
`IPR2020-01054, challenging U.S. Patent No. 9,872,623 B2;
`IPR2020-01078, challenging U.S. Patent No. RE47,218 E; and
`IPR2020-01082, challenging U.S. Patent No. 10,255,994 B2.
`Paper 4, 2. Patent Owner further identifies various applications that share a
`priority claim with the RE353 patent.
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`B. The RE353 Patent
`
`The RE353 patent, titled “Alarm Suspend System,” was filed May 1,
`2017, and issued on April 16, 2019. Ex. 1001 codes (22), (45), (54). The
`RE353 patent was filed as a reissue application of U.S. Patent No. 9,153,121
`(“the ’121 patent). Id. at code (64).2 The RE353 patent describes a
`physiological measurement system that utilizes an alarm suspend system.
`Id. at 4:25–26. The alarm suspend system prevents unnecessary
`disturbances to patients and distractions to caregivers. Id. at 2:33–36. “The
`alarm suspend period is typically long enough to give a caregiver sufficient
`time to intervene with appropriate patient treatment yet short enough to
`ensure that patient health is not endangered if intervention is ineffective.”
`Id. at 2:38–42.
`The physiological measurement system includes a noninvasive sensor
`connected to a physiological monitor. Id. at 4:25–30. The physiological
`measurement system incorporates “pulse oximetry in addition to advanced
`features, such as a multiple wavelength sensor and advanced processes for
`determining physiological parameters other than or in addition to those of
`pulse oximetry, such as carboxyhemoglobin, methemoglobin and total
`hemoglobin, as a few examples.” Id. at 4:30–36. The monitor includes
`controls, such as “an alarm silence button [] that is pressed to temporarily
`suspend out-of-limit parameter alarms and system alarms, such as low
`battery.” Id. at 4:46–48. “Advantageously, an alarm suspend system
`
`
`2 The RE353 patent claims earliest priority through a series of continuation
`applications to Provisional application No. 61/084,615, filed on July 29,
`2008. Ex. 1001, codes (60), (63). The specific priority date of the
`challenged claims is not at issue in this proceeding, and we need not make
`any determination in this regard for purposes of this Decision.
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`provides a parameter-dependent variation in the alarm suspend duration, as
`described below, utilizing a common silence button or other suspend
`initiator.” Id. at 4:60–63.
`Figure 3 of the RE353 patent, reproduced below, illustrates a flow
`diagram of an alarm suspend system. Id. at 4:16–17.
`
`
`
`As shown in Figure 3, above, “[a]larm triggers include system failures 338
`and out-of-limit parameters 318.” Id. at 5:43–44. Out-of-limit parameters
`are identified by comparing measured parameters 312 to default or
`user-specified limits 314. Id. at 5:51–52. Out-of-limit condition 318
`triggers alarm 340 that can be suspended 328 by user-initiated silence
`request 322. Id. at 5:52–56. Suspend durations may vary depending on the
`parameter. Id. at 6:23–28. For example, “relatively slow treatment
`parameters, such as [methemoglobin (‘HbMet’)], [carboxyhemo-
`globin (‘HbCO’)], [total haemoglobin (‘Hbt’) and [Pleth Variability Index
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`(‘PVi’)], are assigned relatively long suspend durations. Similarly,
`relatively fast treatment parameters, such as [oxygen saturation (‘SpO2’)]
`and [pulse rate (‘PR’)], are assigned relatively short suspend durations.” Id.
`at 6:28–33.
`Figure 4, reproduced below, illustrates an alarm suspend “that
`operates independently for each measured parameter that can trigger an
`alarm.” Id. at 5:66–6:1.
`
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`As shown in Figure 4, above, the system triggers alarm 420 when a
`parameter is measured outside its set limit 414 (i.e., it is “out-of-limit”). Id.
`at 6:1–4. A user may activate silence request 422 that suspends alarm 430
`for predetermined duration 432. Id. at 6:5–10. The predetermined duration
`“may be a function of the out-of-limit parameter.” Id. at 5:60–61. When the
`predetermined duration expires, the alarm is activated until the triggering
`parameter is within limit 424 or the user again requests silence 422. Id. at
`6:13–15. Alarm “suspend 430 deactivates if the measured parameter
`becomes within limits 438, such as when the patient condition improves, or
`if no physiological data is detected 439.” Id. at 6:15–18. Alternatively,
`alarm suspend override 436 reactivates alarm 420 when a measured
`parameter changes by a sufficient out-of-limit amount. Id. at 6:20–23.
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 1, 13, and 18 are independent.
`Claims 2–12 and 23–25 depend from claim 1; claims 14–17 depend from
`claim 13, and claims 19–22 depend from claim 18. Independent claim 1 of
`the RE353 patent is reproduced below, and is illustrative of the challenged
`claims.3
`
`
`3 The RE353 patent is a reissue patent. As is standard when printing the
`claims of a reissue patent, matter enclosed in heavy brackets [ ] was deleted
`from the original claims and matter printed in italics was added in the
`reissued claims. For convenience, we produce a clean version of reissued
`claim 1. We acknowledge Patent Owner’s argument that Petitioner’s Listing
`of Claims “includes emphasis, double emphasis, and bracketed language
`without explanation.” Prelim. Resp. 3. Petitioner’s Listing of Claims,
`however, reproduces the claims as printed in the RE353 patent. We
`understand Petitioner’s use of bold merely to enhance readability of the
`claim.
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`1. A physiological measurement system comprising:
`a noninvasive physiological sensor configured to be positioned
`on a patient and output a signal responsive to a physiological
`condition of the patient; and
`one or more processors in communication with the noninvasive
`physiological sensor, the one or more processors configured to
`electronically:
`process the signal to determine a measurement of a
`physiological parameter based at least in part upon the
`signal;
`determine that an alarm should be activated in response to
`the measurement of the physiological parameter satisfying
`an alarm activation threshold;
`determine that an alarm suspension should be initiated for
`a parameter-specific alarm suspension period of time
`corresponding
`to
`the physiological parameter,
`the
`parameter-specific alarm suspension period of time being
`one of at least a plurality of parameter-specific alarm
`suspension periods of time, the parameter-specific alarm
`suspension period of time being different from at least one
`other parameter-specific alarm suspension period of time
`corresponding
`to at
`least one other physiological
`parameter for which the one or more processors are
`configured to determine at least one measurement;
`suspend the alarm for the parameter-specific alarm
`suspension period of time; and
`the
`activate
`the alarm when
`the measurement of
`physiological parameter satisfies the alarm activation
`threshold after the parameter-specific alarm suspension
`period of time has passed.
`Ex. 1001, 7:39–8:14.
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`D. Applied References and Evidence
`
`Petitioner relies on the following references in the asserted grounds.
`Pet. 5–8.
`
`Reference
`
`U.S. Patent No. 5,865,736 (“Baker-1”)
`
`U.S. Publication No. 2009/0247851
`(“Batchelder”)
`
`Issue Date/
`Publication Date Exhibit
`Feb. 2, 19994
`Ex. 1005
`
`Oct. 1, 20095
`
`Ex. 1006
`
`U.S. Patent No. 8,792,949 (“Baker-2”)
`
`Jul. 29, 20146
`
`Ex. 1007
`
`U.S. Publication No. 2005/0038332
`(“Saidara”)
`
`Feb. 17, 20057
`
`Ex. 1008
`
`
`4 Baker-1 was filed on September 30, 1997, and is prior art to the challenged
`claims at least under 35 U.S.C. §§ 102(a), (b), (e). See Ex. 1005, code (22);
`Pet. 6–7.
`5 Batchelder claims priority to provisional application No. 61/070838, filed
`on March 26, 2008. See Ex. 1006, code (60). Petitioner contends that
`Batchelder is prior art to the challenged claims at least under 35 U.S.C.
`§ 102(e) as of the provisional filing date. Pet. 7. Patent Owner does not
`challenge the status of the reference as prior art. See generally Prelim. Resp.
`6 Baker-2 claims priority to provisional application No. 61/041042, filed on
`March 31, 2008. See Ex. 1007, code (60). Petitioner contends that Baker-2
`is prior art to the challenged claims at least under 35 U.S.C. § 102(e) as of
`the provisional filing date. Pet. 7. Patent Owner does not challenge the
`status of the reference as prior art. See generally Prelim. Resp.
`7 Saidara was filed on June 3, 2004, and is prior art to the challenged claims
`at least under 35 U.S.C. §§ 102(a), (b), (e). See Ex. 1008, code (22);
`Pet. 6–7.
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`Reference
`
`U.S. Publication No. 2003/0135087
`(“Hickle”)
`
`S. Malangi, Simulation and mathematical
`notation of alarms unit for computer
`assisted resuscitation algorithm, New
`Jersey Institute of Technology, Theses
`526, (2003) (“Malangi”)
`
`Issue Date/
`Publication Date Exhibit
`
`Jul. 17, 20038
`
`Ex. 1009
`
`Jul. 12, 20049
`
`Ex. 1010
`
`Petitioner also relies on the Declaration of George E. Yanulis, EngD
`(Ex. 1003) to support its positions.
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner asserts that claims 1–25 would have been unpatentable on
`the following grounds:
`
`35 U.S.C. § References
`Claims Challenged
`1, 6–8, 13, 14, 18, 19, 23–25 10310
`Baker-1
`
`103
`
`Baker-1, Batchelder
`
`1, 2, 6–9, 13–15, 18–25
`
`8 Hickle was filed on November 1, 2002, and is prior art to the challenged
`claims at least under 35 U.S.C. §§ 102(a), (b), (e). See Ex. 1009, code (22);
`Pet. 6–7.
`9 Petitioner submits the Declaration of Matthew J. Brown attesting that
`Malangi was indexed and publicly available as of July 12, 2004. Ex. 1011,
`1. Petitioner contends Malangi is prior art to the challenged claims at least
`under 35 U.S.C. § 102(b). Pet. 7. Patent Owner does not challenge the
`status of the reference as prior art. See generally Prelim. Resp.
`10 Because the application leading to the RE353 patent was filed before
`March 16, 2013, patentability is governed by the version of 35 U.S.C.
`§§ 102 and 103 preceding the Leahy-Smith America Invents Act (“AIA”),
`Pub L. No. 112-29, 125 Stat. 284 (2011).
`
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`Claims Challenged
`1, 2, 6–9, 13–15, 18–25
`
`35 U.S.C. § References
`103
`Baker-1, Batchelder, Baker-2
`
`3–5, 10–12, 16, 17
`
`1, 2, 6–9, 13–15, 18–25
`
`3–5, 10–12, 14, 16, 17, 25
`
`103
`
`103
`
`103
`
`Baker-1, Batchelder, Baker-2,
`Hickle
`
`Saidara, Malangi
`
`Saidara, Malangi, Hickle11
`
`II. ANALYSIS
`
`A. Discretion Under 35 U.S.C. § 314(a)
`
`Patent Owner, relying on our precedential decisions in NHK12 and the
`Fintiv Order, contends that we should exercise our discretion under
`35 U.S.C. § 314(a) to deny institution based on the status of the parallel
`district court litigation. See Prelim. Resp. 12–20.
`
`1. Legal Standards
`
`Under 35 U.S.C. § 314(a), the Director has discretion to deny
`institution of an inter partes review. Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is
`a matter committed to the Patent Office’s discretion.”); SAS Inst. Inc. v.
`Iancu, 138 S. Ct. 1348, 1356 (2018) (“SAS”) (“[Section] 314(a) invests the
`Director with discretion on the question whether to institute review.”
`
`
`11 Petitioner’s summary of the grounds at pages 7–8 of the Petition omits
`claim 14 from this asserted ground. Petitioner’s detailed discussion of this
`ground, however, includes a discussion of claim 14, and we consider
`claim 14 to be included in this asserted ground. See Pet. 83, 86.
`12 NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8
`(PTAB Sept. 12, 2018) (precedential).
`
`11
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`(emphasis omitted)); Harmonic 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.”).
`In determining whether to exercise discretion to deny institution under
`35 U.S.C. § 314(a), the Board considers an early trial date in related
`litigation as part of an assessment of all relevant circumstances of the case,
`including the merits, in an effort to balance considerations such as system
`efficiency, fairness, and patent quality. Fintiv Order 5–6; see also NHK,
`Paper 8 at 19–20 (denying institution relying, in part, on § 314(a) because
`the parallel district court proceeding was scheduled to finish before the
`Board reached a final decision).
`When considering an early trial date in related litigation, the Board
`evaluates the following factors (“Fintiv factors”):
`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.
`Fintiv Order 5–6. In evaluating these factors, “the Board takes a holistic
`view of whether efficiency and integrity of the system are best served by
`denying or instituting review.” Id. at 6.
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`2. Factual Background
`
`The progress of the related district court litigation is pertinent to
`discretion under 35 U.S.C. § 314(a). We summarize the progress as follows.
`On June 12, 2019, Patent Owner filed a Complaint (Ex. 1033) against
`Petitioner in the U.S. District Court for the Southern District of California.
`Petitioner has filed a Motion to Stay the District Court proceedings
`(Ex. 1036) and Patent Owner opposed (Ex. 2001). According to the parties,
`the District Court has not yet ruled on the Motion. See Prelim. Resp. 13;
`Reply 2–3. The District Court has vacated all Markman deadlines, including
`the previously scheduled November 3, 2020, Markman hearing, pending its
`decision on Petitioner’s Motion to Stay. See Ex. 1037.
`Patent Owner served its infringement contentions on January 24,
`2020. Ex. 1035; see Prelim. Resp. 15–16. Petitioner served its invalidity
`contentions on March 20, 2020. Ex. 2004; see Prelim. Resp. 15–16.
`On May 29, 2020, Petitioner filed the Petition in this proceeding. See
`Paper 3 (according the Petition a filing date of May 29, 2020).
`Per the court’s Scheduling Order, which was modified on October 6,
`2020, fact discovery closes on February 12, 2021, and expert discovery
`closes on May 7, 2021. Ex. 2009, 3. The Scheduling Order lists a trial date
`as November 30, 2021. Id. at 4.
`Petitioner filed a stipulation in the District Court. Ex. 1038. The
`stipulation states that if the PTAB institutes inter partes review, Petitioner
`“will not pursue in [the District Court] the specific grounds [asserted in the
`inter partes review], or on any other ground . . . that was raised or could
`have been reasonably raised in an IPR (i.e., any ground that could be raised
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`under §§ 102 or 103 on the basis of prior art patent or printed publications).”
`Id. at 6–7.
`
`3. Analysis of the Fintiv Factors
`
`With this background, we consider each of the factors set forth in the
`Fintiv Order. We then weigh the factors and take a holistic view of whether
`efficiency and integrity of the patent system are best served by denying or
`instituting review.
`
`Factor 1: whether a stay exists or is likely to be granted if a
`proceeding is instituted
`
`Petitioner has filed a Motion to Stay, but the District Court has not yet
`ruled on the motion. Prelim. Resp. 13; Reply 2–3. Patent Owner contends
`that a “stay is unlikely.” Prelim. Resp. 13. In particular, Patent Owner
`contends that “[t]he Southern District of California finds that . . . direct
`competition [between the parties in the relevant market] evidences
`significant prejudice that weighs against a stay.” Id. at 14. Petitioner notes,
`however, that in the order vacating all Markman deadlines, the “[District]
`Court noted that any rescheduled Markman date may not be necessary,
`depending on how the [District] Court rules on the motion to stay.” Reply 3
`(citing Ex. 1037).
`Because the District Court has not ruled on the pending motion to
`stay, we determine that this factor does not weigh for or against denying
`institution in this case. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper
`15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv DI”); Sand Revolution
`II, LLC v. Cont’l Intermodal Group – Trucking LLC, IPR2019-01393, Paper
`24 at 7 (PTAB June 16, 2020) (informative) (“Sand Revolution”).
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`Factor 2: proximity of the court’s trial date to the Board’s
`projected statutory deadline
`
`As noted above, trial in the parallel proceeding currently is set to
`begin on November 30, 2021. Ex. 2009, 4. Patent Owner contends that this
`trial date “means there is little opportunity for efficiency or simplification
`with IPR proceedings because . . . the final written decision date will still
`come on or after trial.” Sur-reply 3. Petitioner contends, on the other hand,
`that because the final written decision will issue close to the scheduled trial
`date, and all Markman deadlines have been indefinitely vacated, this factor
`strongly weighs in favor of instituting inter partes review. Reply 3–4.
`Petitioner also notes that the District Court “has already amended its case
`management order twice—including extending the trial date two months.”
`Id. at 3.
`“If the court’s trial date is earlier than the projected statutory deadline,
`the Board generally has weighed this fact in favor of exercising authority to
`deny institution under NHK.” Fintiv Order 9. On the other hand, “[i]f the
`court’s trial date is at or around the same time as the projected statutory
`deadline or even significantly after the projected statutory deadline, the
`decision whether to institute will likely implicate other factors discussed
`herein, such as the resources that have been invested in the parallel
`proceeding.” Id.
`Here, the trial is scheduled to begin around the same time as our
`deadline to reach a final decision. Thus, we find that this factor does not
`weigh for or against denying institution in this case.
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`Factor 3: investment in the parallel proceeding by the court
`and parties
`
`Patent Owner contends that “the parties and [District] Court have
`invested substantial resources litigating the validity of the patents.” Prelim.
`Resp. 16. As noted above, the parties have already served their respective
`infringement contentions and initial invalidity contentions. However, as
`Petitioner points out, all Markman deadlines have been vacated, including
`the Markman hearing. Reply 4. Moreover, much other work remains in the
`parallel proceeding as it relates to invalidity: fact discovery is ongoing,
`expert reports are not yet due, and substantive motion practice is yet to
`come. Id. Thus, although the parties and the District Court have invested
`some effort in the parallel proceeding to date, further effort remains to be
`expended in this case before trial. The facts here are similar to those in both
`recent Board informative decisions. See Sand Revolution 11; Fintiv DI 14;
`see also Fintiv Order 10 (“If, at the time of the institution decision, the
`district court has not issued orders related to the patent at issue in the
`petition, this fact weighs against exercising discretion to deny institution
`under NHK.”).
`The Fintiv Order also recognizes that “notwithstanding that a
`defendant has one year to file a petition, it may impose unfair costs to a
`patent owner if the petitioner, faced with the prospect of a looming trial date,
`waits until the district court trial has progressed significantly before filing a
`petition at the Office.” Fintiv Order 11 (footnote omitted). The Order
`instructs the parties to explain facts relevant to the Petition’s timing. Id.; see
`also id. at 11–12 (considering timing of the Petition as part of the third
`Fintiv factor). Patent Owner notes that “Petitioner waited until just before
`the statutory deadline to file its Petition,” arguing that the Petition includes
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`“substantially the same arguments presented in its March 20, 2020 invalidity
`contentions.” Prelim. Resp. 16. Petitioner, on the other hand, contends that
`it “was not dilatory in filing this petition.” Reply 5. Petitioner explains that
`the parties spent six months after the complaint was filed “engaged in
`settlement discussions.” Id. Further, Petitioner notes that its initial
`invalidity contentions were filed on March 20, 2020, which was “concurrent
`with the nationwide shift to ‘work from home’ and the closing of counsels’
`public offices.” Id. Petitioner contends that, thereafter, it “diligently worked
`to draft IPR petitions challenging nine patents and 183 claims,” including
`the present Petition. Id. Patent Owner responds that “[n]ormal settlement
`discussions . . . cannot excuse” the delay and reiterates its contention that
`Petitioner “waited until just before the statutory deadline to file its Petition.”
`Sur-reply 3.
`Petitioner filed its Petition approximately two months after serving its
`initial invalidity contentions, and approximately two weeks before the
`statutory deadline. Based on the facts present here, we find that Petitioner’s
`explanation for the timing of the Petition is reasonable, notwithstanding the
`closeness to the statutory deadline, particularly in view of the large number
`of patents and claims challenged in this and Petitioner’s other related
`petitions for inter partes review, as well as the increased difficulty in
`preparing the Petitions due to concurrent office closures. See Reply 5; supra
`Section I.A (identifying related inter partes review proceedings).
`Due to the relatively limited investment in the parallel proceeding to
`date and the fact that the timing of the Petition was reasonable, we find that
`this factor weighs in favor of not exercising discretion to deny institution
`under 35 U.S.C. § 314(a).
`
`17
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`Factor 4: overlap between issues raised in the petition and in
`the parallel proceeding
`
`Patent Owner contends that “Petitioner relies upon the same primary
`references and substantially the same invalidity arguments, under the same
`claim construction standard, as in the District Court.” Prelim. Resp. 17;
`Ex. 2004 (Invalidity Contentions).
`Petitioner notes that the Petition “seeks review of all claims of the
`RE353 Patent, not merely those at issue in the [parallel proceeding].”
`Reply 6; see also Ex. 2004, 1 (claims 1, 6, 7, 8, 13, 14, 18, 19, 23, and 25 of
`the RE353 patent are asserted in the parallel proceeding). Further, as noted
`above, Petitioner has filed in the District Court “a stipulation that, if IPR is
`instituted, they will not pursue in the District Court Litigation any ground
`raised or that could have been reasonably raised in an IPR.” Reply 6;
`Ex. 1038. Petitioner contends that, because of this stipulation, “there will be
`no overlap of invalidity issues between the [parallel district court
`proceeding] and [this inter partes review].” Reply 6.
`Patent Owner contends that the stipulation is “unclear” as to whether
`Petitioner reserves the right to proceed based on other references cited in the
`invalidity contentions. Sur-reply 3–4. We disagree with Patent Owner’s
`contention here. The portion of the stipulation quoted by Patent Owner,
`states that the “stipulation is not intended . . . to limit [Petitioner’s] ability to
`assert invalidity of the asserted claims . . . on any other ground (i.e.,
`invalidity under §§ 101, 112).” Ex. 1038, 7 (emphasis added). Petitioner’s
`stipulation also unequivocally states, however, that it “will not pursue in this
`case the specific grounds . . . [in] the instituted inter parties [sic] review
`petition, or on any other ground . . . that was raised or could have been
`reasonably raised in an IPR (i.e., any ground that could be raised under
`
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`§§ 102 or 103 on the basis of prior art patents or printed publications).” Id.
`at 6–7 (emphasis added).
`Petitioner’s stipulation here mitigates any concerns of duplicative
`efforts between the district court and the Board, as well as concerns of
`potentially conflicting decisions. See Sand Revolution 12. Importantly,
`Petitioner broadly stipulates to not pursue “any ground raised or that could
`have been reasonably raised.” Reply 6. As noted in Sand Revolution, such a
`broad stipulation better addresses concerns of duplicative efforts and
`potentially conflicting decisions in a much more substantial way. Sand
`Revolution 12 n.5. Accordingly, Petitioner’s broad stipulation ensures that
`an inter partes review is a “true alternative” to the district court proceeding.
`Id.
`
`Thus, we find that this factor weighs strongly in favor of not
`exercising discretion to deny institution under 35 U.S.C. § 314(a).
`
`Factor 5: whether the petitioner and the defendant in the
`parallel proceeding are the same party
`
`Petitioner and Patent Owner acknowledge the parties are the same in
`the inter partes proceeding and in the parallel proceeding. Prelim. Resp. 18;
`Reply 6–7. Thus, this factor supports denying institution. See Fintiv DI 15;
`Sand Revolution 12–13; cf. Fintiv Order 13–14 (“If a petitioner is unrelated
`to a defendant in an earlier court proceeding, the Board has weighed this fact
`against exercising discretion.”).
`
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`Factor 6: other circumstances and considerations that impact
`the Board’s exercise of discretion, including the merits
`
`As discussed below, on this preliminary record, Petitioner has met its
`burden of demonstrating a reasonable likelihood that it would prevail in
`showing that claims of the RE353 patent are unpatentable.13 Although we
`recognize the record may change during trial, as discussed in detail below,
`Petitioner has made a sufficiently persuasive showing, on the record
`presently before us, that the prior art references cited in the Petition teach or
`suggest all limitations of at least one challenged claim. See Fintiv Order 14–
`15 (discussing the merits of the Petition as a consideration).
`We determine that this factor does not weigh for or against denying
`institution in this case.
`
`Conclusion
`
`We take “a holistic view of whether efficiency and integrity of the
`system are best served by denying or instituting review” when considering
`the six Fintiv factors. Fintiv Order 6. Our holistic review of the Fintiv
`factors, namely that the timing of the Petition was reasonable, the relatively
`limited investment in the parallel proceeding to date, and that there is
`minimal potential overlap of the two proceedings, indicates that the Fintiv
`factors weigh in favor of instituting inter partes review. As such, we are not
`persuaded that the interests of the efficiency and integrity of the system
`
`
`13 The parties include arguments directed to the merits of the asserted
`grounds in their discussions of Factor 6. See Reply 7; Sur-reply 4–7. We do
`not rely on these arguments in our determination below that Petitioner has
`presented a reasonable likelihood of success on the merits (see infra
`Sections II.F–II.I).
`
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`would be best served by invoking our authority under 35 U.S.C. § 314(a) to
`deny institution of a meritorious Petition. For the reasons discussed above,
`we decline to deny institution under § 314(a).
`
`B. Legal Standards
`
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3)
`(requiring inter partes review petitions to identify “with particularity . . . the
`evidence that supports the grounds for the challenge to each claim”)). This
`burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)
`(discussing the burden of proof in inter partes review).
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been o
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