Trials@uspto.gov
`571-272-7822
`
`Paper 15
`Date: March 24, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`Petitioner,
`v.
`GREE, INC.,
`Patent Owner.
`
`IPR2020-01619
`Patent 10,413,832 B2
`
`
`
`
`
`
`
`
`
`Before HYUN J. JUNG, AMANDA F. WIEKER, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`MARSCHALL, Administrative Patent Judge.
`
`DECISION
`
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Dismissing Petitioner’s Motion to Limit Petition to Ground 2
`37 C.F.R. § 42.71
`Dismissing Petitioner’s Motion to Seal
`37 C.F.R. § 42.55
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 15
`Date: March 24, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`Petitioner,
`v.
`GREE, INC.,
`Patent Owner.
`
`IPR2020-01619
`Patent 10,413,832 B2
`
`
`
`
`
`
`
`
`
`Before HYUN J. JUNG, AMANDA F. WIEKER, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`MARSCHALL, Administrative Patent Judge.
`
`DECISION
`
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Dismissing Petitioner’s Motion to Limit Petition to Ground 2
`37 C.F.R. § 42.71
`Dismissing Petitioner’s Motion to Seal
`37 C.F.R. § 42.55
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-01619
`Patent 10,413,832 B2
`
`INTRODUCTION
`Supercell Oy (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting institution of an inter partes review of claims 1–15 of U.S. Patent
`No. 10,413,832 B2 (Ex. 1003, “the ’832 patent”), along with a Motion to
`Seal Exhibit 1029 and for Entry of Protective Order (Paper 3). GREE, Inc.
`(“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”).
`With authorization, Petitioner filed a Reply to Patent Owner’s Preliminary
`Response Pursuant to 37 C.F.R. § 42.108(c) (Paper 8, “Pet. Reply”), and
`Patent Owner filed a Sur-Reply to Petitioner’s Reply (Paper 9, “PO Sur-
`Reply”). With authorization, Petitioner also filed a Motion to Limit Petition
`to Ground 2 (Paper 10, “Pet. Mot. Limit”), and Patent Owner filed an
`Opposition to Petitioner’s Motion (Paper 11, “PO Opp.”). Subsequent to
`that briefing, the parties briefed the Fintiv “Overlap Factor” (Fintiv
`Factor 4), again with authorization. See Paper 12 (“Pet. Overlap Br.”);
`Paper 13 (“PO Overlap Br.”).
`After considering the parties’ briefs and the evidence of record, we
`exercise our discretion under 35 U.S.C. § 314(a) to deny inter partes review.
`We also dismiss as moot Petitioner’s Motion to Seal and Motion to Limit the
`Petition to Ground 2.
`
`BACKGROUND
`A. Real Parties in Interest
`Petitioner identifies itself as the sole real party in interest. Pet. 1.
`Patent Owner also identifies itself as the sole real party in interest. Paper 5,
`2.
`
`2
`
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`IPR2020-01619
`Patent 10,413,832 B2
`B. Related Matters
`The parties indicate that the ’832 patent has been asserted in GREE,
`Inc. v. Supercell Oy, 2:19-cv-00310 (E.D. Tex.). Pet. 1; Paper 5, 3 (“the
`parallel district court proceeding”).
`C. The ’832 Patent
`The ’832 patent issued on September 17, 2019, and claims priority to
`foreign applications, the earliest of which was filed on June 21, 2012.
`Ex. 1003, codes (30), (45), 1:7–10.
`The ’832 patent “provides a game control method, a game server, and
`a program that can increase the variations on methods for acquiring battle
`cards . . . , increase the predictability of acquisition of a card . . . with a high
`rarity value . . . , and heighten interest in the game.” Ex. 1003, 1:48–53.
`Figure 1 of the ’832 patent is reproduced below.
`
`Figure 1 is a block diagram of battle game server 1. Id. at 3:38–39. Figure 1
`also shows communication terminal 2 in wireless communication with battle
`game server 1. Battle game server 1 includes communication unit 10,
`
`
`
`3
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`IPR2020-01619
`Patent 10,413,832 B2
`memory unit 11, information presentation unit 12, and control unit 13. Id. at
`3:63–67. Memory unit 11 stores information “on items to provide, a total
`count of items, item type, and an acquisition count” for each user that
`operates a communication terminal 2 in tables. Id. at 4:5–8, 4:15–16. “An
`‘item’ refers to any of a variety of objects used within a game, such as a
`battle card constituting a user’s deck, a character, a weapon, armor, an
`ornament, a plant, food, and the like.” Id. at 4:9–12. The tables that store
`item information include item information tables 111 (e.g., 111a–111c) and
`user information table 112. Id. at 4:16–18. Memory unit 11 also stores item
`data 113. Id.
`According to the ’832 patent, “when a request to present information
`is received from the communication terminal 2 via the communication
`unit 10, then based on the item information tables 111a to 111c, the
`information presentation unit 12 tallies the total count of items for each item
`type.” Ex. 1003, 4:63–67. “The information presentation unit 12 also refers
`to the user information table 112 to calculate the acquisition count of items
`for each item type based on the identification information of provided items
`and the table identification information that correspond to the user
`identification information pertaining to the communication terminal 2.” Id.
`at 4:67–5:6. “The information presentation unit 12 then presents the
`communication terminal 2, via the communication unit 10, with the result of
`[the] calculation as the acquirable item information.” Id. at 5:6–9.
`D. Illustrative Claim
`The ’832 patent includes independent claims 1, 4, and 9. Claim 1 is
`reproduced below.
`
`
`4
`
`
`
`IPR2020-01619
`Patent 10,413,832 B2
`1. A game control method executed by a game server, the
`method comprising:
`associating, in a memory of the game server, each of a
`plurality of cells with each of extracted items extracted
`from the memory;
`sending information to a user terminal for displaying, in a
`virtual game, a sheet comprising the plurality of cells and
`obtainable
`item
`information,
`the obtainable
`item
`information comprising at least one of (i) a total number
`of items for each item type, (ii) a number of obtained items
`and (iii) a number of un-obtained items;
`receiving, in the virtual game, a selection request from the
`user terminal to select one cell among the plurality of cells;
`sending information for differentiating, in the virtual game, a
`display of the one cell from another cell of the plurality of
`cells in the sheet, wherein the differentiating of the display
`of the one cell is done in response to the selection request
`to select the one cell; and
`providing, in the virtual game, an item of the extracted items
`that is associated with the one cell to a user of the user
`terminal.
`Ex. 1003, 13:43–64.
`E. Asserted Grounds and Proffered Testimonial Evidence
`Petitioner asserts that claims 1–15 would have been unpatentable on
`the following grounds:
`
`5
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`IPR2020-01619
`Patent 10,413,832 B2
`References/Basis
`35 U.S.C. §
`Claim(s) Challenged
`FVD,2 Smoak3
`103(a)1
`1–15
`Yamaoka,4 Morrisroe5
`103(a)
`1–15
`Pet. 3. Petitioner also provides a Declaration of Ravin Balakrishnan, Ph.D.
`Ex. 1007.
`
`ANALYSIS
`A. Petitioner’s Motion to Limit Petition to Ground 2
`Petitioner argues that we should limit our consideration to Ground 2—
`
`the ground based on Yamaoka and Morrisroe—because doing so “is
`consistent with the AIA and the Board’s practices” and “will reduce
`concerns of duplicative efforts and the potential for conflicting decisions
`between this IPR and the corresponding litigation, since none of the art
`applied in Ground 2 is relied upon in the corresponding litigation.” Pet.
`Mot. Limit 1. Petitioner also argues that “limiting the Petition in this
`manner will not prejudice GREE.” Id. Patent Owner argues that we should
`deny Petitioner’s Motion because it amounts to a “transparent attempt to
`avoid discretionary denial of the Petition under § 314(a) in view of the
`advanced state of a parallel district court proceeding between the parties.”
`PO Opp. 1. Patent Owner also argues that Petitioner should have used other
`
`
`1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), took effect on March 16,
`2013. Because the ’832 patent claims priority to an application filed before
`that date, our citations to 35 U.S.C. § 103 are to its pre-AIA version.
`2 Morales and Orland, FarmVille for Dummies, ISBN: 978-1-118-01696-1
`(Wiley Pub. 2011) (“FVD”) (Ex. 1019).
`3 US 8,843,853 B1, filed July 9, 2007 (“Smoak”) (Ex. 1020).
`4 US 7,357,718 B2, issued April 15, 2008 (“Yamaoka”) (Ex. 1021).
`5 US 2012/0129590 A1, published May 24, 2012 (“Morrisroe”)
`(Ex. 1022).
`
`6
`
`
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`IPR2020-01619
`Patent 10,413,832 B2
`methods to limit the Petition to Ground 2, such as seeking adverse judgment
`or providing an appropriate stipulation, and that Petitioner’s approach is
`inconsistent with Board practices. Id. at 3–4. Patent Owner also argues that
`it would be prejudiced if we granted the Motion because Patent Owner
`devoted resources to briefing based on the Petition as filed, which includes
`Grounds 1 and 2. Id. at 5.
`
`We need not reach the merits of Petitioner’s Motion to Limit Petition
`to Ground 2 because it would not impact the outcome of this Decision. As
`discussed more fully below, even if we granted the Motion and limited our
`consideration of the Petition to Ground 2, we would still exercise our
`discretion to deny the Petition under 35 U.S.C. § 314(a). And, if we denied
`the Motion, the support for discretionary denial would increase, as there
`would be more overlap between the challenges in the Petition and the issues
`before the district court. Accordingly, we dismiss Petitioner’s Motion as
`moot.
`B. 35 U.S.C. § 314(a)
`Patent Owner argues that “the Board should exercise its discretion
`under 35 U.S.C. § 314(a) to deny the Petition because Petitioner raises
`substantially the same prior art and arguments in a parallel district court
`proceeding filed more than one year ago and scheduled for trial in
`approximately two months (March 1, 2021).” Prelim. Resp. 1 (citing NHK
`Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8, at 19–20
`(PTAB Sept. 12, 2018) (“NHK Spring”) (precedential); Apple Inc. v. Fintiv,
`Inc., IPR2020-00019, Paper 11, at 6 (PTAB Mar. 20, 2020) (“Fintiv Order”)
`(precedential)). For purposes of this analysis, we assume that the Petition is
`limited to Ground 2.
`
`
`7
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`IPR2020-01619
`Patent 10,413,832 B2
`Legal Standards
`1.
`35 U.S.C. § 314(a) states 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 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.
`The language of § 314(a) expressly provides the Director with discretion to
`deny institution of an inter partes review. See 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.”);
`Consolidated Trial Practice Guide November 2019 (“TPG”) at 55 (available
`at https://www.uspto.gov/TrialPracticeGuideConsolidated).
`In exercising the Director’s discretion under § 314(a), the Board may
`consider “events in other proceedings related to the same patent, either at the
`Office, in district court, or the ITC.” TPG at 58. NHK Spring explains that
`the Board may consider the advanced state of a related district court
`proceeding, among other considerations, as a “factor that weighs in favor of
`denying the Petition under § 314(a).” NHK Spring, Paper 8 at 20.
`Additionally, the Board’s precedential order in Fintiv identifies several
`factors for analyzing issues related to the Director’s discretion to deny
`institution, with the goal of balancing efficiency, fairness, and patent quality.
`2. Applying the Fintiv Factors
`a) Whether the Court Granted a Stay or Evidence Exists that one
`may be Granted if a Proceeding is Instituted
`Petitioner argues that it “has not yet sought a stay but will do so
`should the IPR be instituted.” Pet. 77. Patent Owner responds that
`“Petitioner has not filed any motion to stay the parallel district court
`
`8
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`IPR2020-01619
`Patent 10,413,832 B2
`proceeding” and “there is little evidence here to suggest that the district
`court will grant a stay.” Prelim. Resp. 7 (citing Pet. 77). Patent Owner
`argues that a stay is “extremely unlikely” because stays typically are denied
`before institution and an institution decision is “not due until after the jury
`trial in the parallel district court proceeding.” Id. at 7–8 (citing Ex. 2012, 1).
`Because the district court has not yet granted a stay and the record
`does not include any evidence that a stay, if requested, would be granted, we
`determine that the facts underlying this factor are neutral.
`b) Proximity of the Court’s Trial Date to the Board’s Projected
`Statutory Deadline for a Final Written Decision
`Petitioner argues that “[w]hile the trial date is currently scheduled to
`occur before the statutory deadline for the [final written decision], this factor
`should be afforded little weight,” as the date is very likely to change. Pet. 77
`(citing Ex. 1028). Petitioner also argues that trial dates often reset when
`review is instituted and significantly slip after institution has been denied.
`Id. (citing Ex. 1026, 2; Ex. 1025, 3).
`Patent Owner responds that a “jury trial in the parallel district court
`proceeding is currently set to begin on March 1, 2021” and thus, “scheduled
`to conclude more than twelve months before a final written decision would
`be due in this proceeding.” Prelim. Resp. 9. Patent Owner lists several
`proceedings where the Board has denied institution based on a smaller gap
`between the trial date and the due date for a final written decision. Id. at 9–
`10. Patent Owner also argues that “Petitioner fails to present any specific
`evidence that the jury trial in the Eastern District of Texas in the parallel
`proceeding will not proceed on March 1, 2021, as currently scheduled.” Id.
`at 12–13. Patent Owner further argues that, “even if trial is ultimately
`delayed by a few months, it will still likely conclude well before a final
`
`9
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`IPR2020-01619
`Patent 10,413,832 B2
`written decision would be due in this proceeding, if the Board were to
`institute.” Id. at 15.
`Petitioner replies that “determining the true trial date requires
`speculation.” Pet. Reply 2. According to Petitioner, “[t]he record indicates
`that the Eastern District of Texas court is at least triple booked for the
`[current] trial date.” Id. at 2–3 (citing Ex. 1033, 1038). Petitioner argues
`that it is unlikely that jury trials will begin on March 1, 2021 because of the
`continuing pandemic. Id. at 3. Patent Owner responds that “Petitioner’s
`speculative claim that trial in the parallel district court proceeding may not
`proceed on March 1, 2021 ignores a key fact in the record: trial remains
`scheduled to proceed on March 1, 2021—which is now just one week
`away.” PO Sur-Reply 1 (citing Ex. 2012, 1).
`The record shows all in-person trials were postponed through
`February 2021 (Ex. 1039, 1), and that the trial date for the parallel district
`court proceeding was originally scheduled for March 1, 2021 (Ex. 2012, 1;
`Ex. 2013, 1). The parties have updated the record to reflect the ongoing trial
`date issue in the district court. Another district court trial took precedence
`over the district court trial involving these parties scheduled for March 1,
`2021, and the district court reset the trial date for March 15, 2021, as one of
`three trials scheduled for that same day. Ex. 1042, 1. The district court later
`released the parties from the March 15, 2021 trial date, and informed the
`parties that trial may occur as soon as April 5, 2021. Ex. 2019. The parties
`informed the district court that they would prefer a May 10, 2021 trial date.
`Ex. 2020. The district court responded to that request by stating that it
`intends to set “trial in May 2021.” Ex. 2021, 2. Although no specific trial
`date has been set, it appears that trial will begin within two months of this
`
`10
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`IPR2020-01619
`Patent 10,413,832 B2
`Decision, and approximately ten months prior to the due date to issue a final
`written decision in this case.
`Based on the expected May 2021 trial date in the district court
`litigation, we determine that this factor weighs in favor of denying
`institution.
`c) Investment in the Parallel Proceeding by the Court and the
`Parties
`Petitioner argues that “[t]he district court proceeding is . . . only in its
`initial stages, and the court has not made any substantial investments in the
`merits of the invalidity positions.” Pet. 78. Patent Owner responds that the
`“the parties and the district court have each already invested . . . substantial
`resources in the parallel proceeding by the time this Board decides whether
`to institute a trial in March 2021.” Prelim. Resp. 17. Specifically, Patent
`Owner asserts that “the parties have already completed claim construction
`briefing, the Court held a Markman hearing in September, and the Court
`issued its order on claim construction more than two months ago on
`October 12, 2020.” Id. (citing Ex. 2010; E-One, Inc. v. Oshkosh Corp.,
`IPR2019-00161, Paper 16, at 7 (PTAB May 15, 2019)). Patent Owner
`argues further that “[t]he district court and parties have each already
`invested, and will have invested even more, substantial resources in claim
`construction, fact discovery, expert discovery, dispositive motions, pretrial
`disclosures, and trial itself by the time this Board decides whether to
`institute a trial in March 2021.” Id. at 19.
`Patent Owner also argues that Petitioner did not file its Petition until
`twelve months after the parallel district court proceeding was initiated and
`contends with citations to other Board decisions that the unexplained delay
`weighs in favor of denying institution. Prelim. Resp. 19–20 (citing
`
`11
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`
`
`IPR2020-01619
`Patent 10,413,832 B2
`Ex. 2004). Petitioner replies that “[t]he Investment factor (Factor 3) is
`neutral, because, to the extent the court has invested, it invested primarily in
`non-overlapping issues, e.g., determining issues related to potential
`invalidity based on different references, or related to alleged infringement.”
`Pet. Reply 4.
`In the parallel district court proceeding, a Claim Construction
`Memorandum Opinion and Order has been issued and by this time, the
`parties have, inter alia, completed expert discovery, filed dispositive
`motions and motions to strike expert testimony, served pretrial disclosures,
`and attended a pretrial conference. Ex. 2012; Ex. 2013. The district court
`and the parties have made substantial investments in the parallel proceeding.
`The parties still have to expend significant resources to conduct the trial
`itself, as well as potential post-trial proceedings.
`Based on the record, weighing the investments thus far made and yet
`to be made, we determine that substantial investments have been made in the
`parallel proceeding, and thus, this factor weighs in favor of denying
`institution.
`d) Overlap Between Issues Raised in the Petition and in the
`Parallel Proceeding
`Petitioner argues that “[t]he combinations of references discussed
`herein include references (Smoak, Yamaoka, Morrisroe) and grounds not
`raised in the related litigation.” Pet. 78.6 Petitioner, thus, argues there are
`
`
`6 Petitioner also argues that the “patent ineligibility standard” at the Office
`“is different” from the standard for jury trials. Pet. 69. However, because
`patent ineligibility has not and cannot be asserted in the present Petition, we
`do not need to address this argument.
`
`12
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`IPR2020-01619
`Patent 10,413,832 B2
`no significant concerns regarding duplicative efforts or potentially
`conflicting outcomes. Id.
`Patent Owner responds that “[t]here is substantial overlap between the
`claims, grounds, arguments, and evidence presented in the Petition and what
`has been, and continues to be, litigated in the parallel district court
`proceeding.” Prelim. Resp. 21; see also PO Sur-Reply 3–5 (arguing
`similarly). As an example of overlap, Patent Owner relies on Petitioner’s
`common assertion of the FVD reference in this proceeding (as to Ground 1)
`and the district court litigation. Prelim. Resp. 22–24; PO Sur-reply 3.
`According to Patent Owner, “[t]here is also substantial overlap between the
`claims of the ’832 Patent challenged at the district court and in the Petition.”
`Id. at 24.
`Petitioner replies that, should we grant its Motion to Limit Petition to
`Ground 2, and therefore eliminate its reliance on the FVD reference, “[t]here
`will be no overlap between the art in the IPR and that applied in the
`litigation.” Pet. Reply 1. Petitioner further argues that Patent Owner has
`reduced the claims at issue in the parallel district court proceeding which
`further reduces overlap between the parallel proceeding and this proceeding.
`Pet. Overlap Br., 1 (asserting that Patent Owner “is now asserting only
`dependent claims 2 and 3 of the ’832 patent” compared to all 15 claims
`challenged in the Petition).
`Patent Owner replies that its “recent narrowing of the claims it will
`present at the parties’ imminent trial, as required by the District Court’s
`procedures, does not materially alter the weighing of Fintiv Factor 4.” PO
`Overlap Br. 1. Patent Owner further argues that “given the similarity of the
`claims (and Petitioner’s challenges thereto), resolution of Petitioner’s
`
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`IPR2020-01619
`Patent 10,413,832 B2
`challenge to claims 2–3 at the district court will necessarily resolve key
`issues in the Petition.” Id. at 2.
`The record shows that although some of the same claims are at issue
`in this proceeding and the parallel district court proceeding, the same prior
`art is not. If we granted Petitioner’s Motion to Limit the Petition to
`Ground 2, a premise we adopt only for purposes of this analysis, there would
`be only minimal overlap between the invalidity issues before us and the
`district court. Accordingly, on this record, we determine that this factor
`weighs in favor of institution.
`e) Whether Petitioner and the Defendant in the Parallel
`Proceeding are the Same Party
`Patent Owner argues that “Petitioner and Patent Owner are the
`defendant and plaintiff, respectively, in the parallel district court
`proceeding.” Prelim. Resp. 28 (citing GREE, Inc. v. Supercell Oy, No. 2:19-
`cv-00310 (E.D. Tex. filed Sept. 16, 2019); Exs. 2001–2005, 2011, 2012).
`Petitioner replies that the same party factor “should be given little weight.”
`Pet. Reply 4.
`The record shows that Petitioner and defendant in the parallel
`proceeding are the same. Thus, this factor weighs in favor of denying
`institution.
`f) Other Circumstances that Impact the Board’s Exercise of
`Discretion, Including the Merits
`Regarding the merits, Petitioner challenges claims 1–5 as
`unpatentable over Yamaoka and Morrisroe, with citations to the asserted
`references and declarant testimony. Pet. 58–74 (“Ground 2”); see also Pet.
`Reply 7–8. For Ground 2, Patent Owner contends that Petitioner
`impermissibly conflates the “plurality of cells” and “obtainable item
`
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`IPR2020-01619
`Patent 10,413,832 B2
`information” claim limitations in its analysis by relying on the same content
`in Yamaoka for both limitations. Prelim. Reply 49–53; see also PO Sur-
`reply 8.
`Without conducting a full analysis of the merits and based on the
`record before us, we determine that Petitioner adequately makes an initial
`showing that Yamaoka and Morrisroe teach or suggest at least the
`limitations of claim 1 and that one of ordinary skill in the art would have
`combined the asserted references. We further determine that Patent Owner
`raises arguments that would be best decided on a full record as developed at
`trial, not the preliminary record before us. Accordingly, we determine that
`the merits of this challenge are adequate for institution, but neither weak nor
`strong.
`For at least the foregoing reasons, based on the incomplete record
`before us and an initial review of the merits, we determine that this factor is
`neutral.
`3. Holistic Analysis of Fintiv Order Factors
`We undertake a holistic analysis of the Fintiv Order factors,
`considering “whether efficiency and integrity of the system are best served
`by denying or instituting review.” Fintiv Order, Paper 11 at 6. As discussed
`above, factors 1 and 6 are neutral, factors 2, 3, and 5 weigh toward denying
`institution, and factor 4 weighs in favor of institution. Factors 2 and 3 are
`particularly relevant here, where the trial in the district court will likely
`occur within approximately two months of this Decision, based on the most
`recent submissions related to the district court litigation. We determine that
`the facts underlying factors 2, 3, and 5 collectively outweigh the facts
`underlying factors 1, 4, and 6. Accordingly, we determine that the
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`IPR2020-01619
`Patent 10,413,832 B2
`circumstances presented weigh in favor of denying institution under
`35 U.S.C. § 314(a).
`C. Petitioner’s Motion to Seal
`Petitioner filed a Motion to Seal Exhibit 1029 and for Entry of
`Protective Order. Paper 3. We do not rely on Exhibit 1029. Accordingly,
`we dismiss the motion as moot.
`CONCLUSION
`Based on our application of the precedential Fintiv Order factors to
`the record before us, we exercise our discretion under 35 U.S.C. § 314(a)
`and deny institution of inter partes review.
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied as to all challenged claims, and
`no trial is instituted;
`FURTHER ORDERED that Petitioner’s Motion to Limit Petition to
`Ground 2 is dismissed as moot;
`FURTHER ORDERED that Petitioner’s Motion to Seal Exhibit 1029
`and for Entry of Protective Order is dismissed as moot; and
`FURTHER ORDERED that Petitioner is authorized to file a motion to
`expunge Exhibit 1029 within 90 days after the date of entry of this Decision
`or, if a request for rehearing is filed, within 90 days after the date of entry of
`a decision on the request.
`
`
`
`
`
`
`16
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`IPR2020-01619
`Patent 10,413,832 B2
`FOR PETITIONER:
`
`Jennifer R. Bush
`Brian M. Hoffman
`Kevin X. McGann
`Gregory A. Hopewell
`Eric Zhou
`FENWICK & WEST LLP
`jbush-ptab@fenwick.com
`bhoffman@fenwick.com
`kmcgann-ptab@fenwick.com
`ghopewell@fenwick.com
`ezhou@fenwick.com
`
`FOR PATENT OWNER:
`
`John C. Alemanni
`Andrew Rinehart
`Joshua H. Lee
`KILPATRICK TOWNSEND & STOCKTON LLP
`jalemanni@kilpatricktownsend.com
`arinehart@kilpatricktownsend.com
`jlee@kilpatricktownsend.com
`
`Scott A. McKeown
`ROPES & GRAY
`Scott.McKeown@ropesgray.com
`
`
`17
`
`
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