`Petitioner’s Request for Rehearing
`
`Filed on behalf of Supercell Oy
`
`By:
`JENNIFER R. BUSH, Reg. No 50,784
`MICHAEL J. SACKSTEDER
`BRIAN HOFFMAN, Reg. No. 39,713
`KEVIN X. MCGANN, Reg. No. 48,793
`GREGORY HOPEWELL, Reg. No. 66,012
`GEOFFREY MILLER
`ERIC ZHOU, Reg. No. 68,842
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`Telephone: 650.988.8500
`Facsimile: 650.938.5200
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`
`Case IPR2020-01619
`Patent 10,413,832 B2
`_____________
`
`PETITIONER’S REQUEST FOR
`REHEARING UNDER 37 C.F.R. §42.71
`
`
`
`
`
`
`IPR2020-01619
`Petitioner’s Request for Rehearing
`TABLE OF CONTENTS
`
`Page
`INTRODUCTION AND REQUESTED RELIEF .......................................... 1
`LEGAL STANDARD ..................................................................................... 1
`BASIS FOR THE REQUESTED RELIEF ..................................................... 2
`1.
`The NHK-Fintiv Factors Support Institution ........................................ 2
`a.
`The Board’s conclusion regarding Factor 2 rests on
`clearly erroneous fact finding. .................................................... 2
`The Board misapprehended or overlooked that the
`parallel proceeding investment is primarily in non-
`overlapping issues. ...................................................................... 4
`The Board’s conclusion regarding Factor 6 rests on
`clearly erroneous fact finding and is clearly
`unreasonable, arbitrary, or fanciful.............................................. 5
`The Board misapprehended or overlooked the proper
`weighing of the Fintiv factors. .................................................... 7
`Exercising Discretion Based on the NHK-Fintiv Factors Is
`Improper ................................................................................................ 8
`CONCLUSION .............................................................................................. 11
`
`
`
`b.
`
`c.
`
`d.
`
`2.
`
`A.
`B.
`C.
`
`D.
`
`
`
`i
`
`
`
`IPR2020-01619
`Petitioner’s Request for Rehearing
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ..................................passim
`Apple Inc. v. Seven Networks, LLC,
`IPR2020-00180, Paper 12 (P.T.A.B. Aug. 12, 2020) ........................................... 6
`Apple Inc. v. Seven Networks, LLC,
`IPR2020-00235, Paper 10 (P.T.A.B. July 28, 2020) ............................................ 7
`Aqua Prods., Inc. v. Matal,
`872 F.3d 1290 (Fed. Cir. 2017) .......................................................................... 10
`Facebook, Inc. v. Blackberry Ltd.,
`IPR2019-00899, Paper 15 (P.T.A.B. Oct. 8, 2019) .............................................. 4
`Facebook, Inc. v. Windy City Innovations, LLC,
`953 F.3d 1313 (Fed. Cir. 2020) (reinstated on rehearing in
`relevant part, slip op. Sept. 4, 2020) .................................................................... 9
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ................................................................ 1, 3, 6, 7
`NanoCellect Biomedial, Inc., v. Cytonome/ST, LLC,
`IPR2020-00551, Paper 19 (P.T.A.B. Aug. 27, 2020) ........................................... 7
`NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (P.T.A.B. Sept. 12, 2018) ............................................. 2
`Sand Revolution II, LLC v. Cont’l Intermodal Grp.,
`IPR2019-01393, Paper 24 (P.T.A.B. June 16, 2020) ........................................... 7
`Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-01019, Paper 12 (P.T.A.B. Dec. 1, 2020) ......................................... 7, 8
`VMWare, Inc. v. Intellectual Ventures I LLC,
`IPR2020-00407, Paper 12 (P.T.A.B. Aug. 18, 2020) ........................................... 7
`Westinghouse Air Brake Techs. Corp. v. Siemens Mobility, Inc.,
`IPR2017-01263, Paper 56 (P.T.A.B. Oct. 24, 2016) ............................................ 6
`
`ii
`
`
`
`IPR2020-01552
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`
`TABLE OF AUTHORITIES
`(Continued)
`
`Page(s)
`
`
`STATUTES AND RULES
`35 U.S.C. § 314 .................................................................................................passim
`35 U.S.C. § 316 .............................................................................................. 9, 10, 11
`35 U.S.C. § 324(a) ................................................................................................... 10
`35 U.S.C. § 326(b) ................................................................................................... 11
`OTHER AUTHORITIES
`37 C.F.R. § 42.71 ....................................................................................................... 1
`83 FR 51340, 51341 (Oct. 11, 2018) ......................................................................... 4
`The Eleventh Auer: The Effect of Kisor v. Wilkie On Rulemaking and
`Adjudication at the United States Patent and Trademark Office,
`19, Chi.-Kent J. Intell. Prop. 485, 501-502 (2020) ............................................... 9
`
`
`
`
`
`iii
`
`
`
`IPR2020-01619
`Petitioner’s Request for Rehearing
`EXHIBIT LIST (37 CFR § 42.63(e))
`
`Exhibit
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`U.S. Patent No. 10,076,708 to Yoshikawa
`
`File History of U.S. Patent No. 10,076,708
`
`U.S. Patent No. 10,413,832 to Yoshikawa
`
`File History of U.S. Patent No. 10,413,832
`
`U.S. Patent No. 10,583,365 to Yoshikawa
`
`File History of U.S. Patent No. 10,583,365
`
`Expert Declaration of Ravin Balakrishnan
`
`Curriculum Vitae of Ravin Balakrishnan
`
`Robert Corrina, “What is a Role Playing Game?,” Gamasutra
`
`“Secret of Monkey Island, The Download (Adventure Game),”
`old-games.com
`
`Final Fantasy VI Advance Instruction Booklet, Nintendo of America
`
`Daniel Primed, “Wasteland Ventures (Fallout) #5 – 3 Forms of
`Grind,” Daniel Primed
`
`“Microsoft Excel 2003 for Beginners,” California State University,
`Northridge, Information Technology Training Guide
`
`U.S. Patent No. 4,643,454 to Ondis (“Ondis”)
`
`U.S. Patent No. 8,147,316 to Arezina et al. (“Arezina”)
`
`Sarah Phillips, “A brief history of Facebook,” The Guardian
`
`Michael Arrington, “Social Games: How the Big Three Make
`Millions,” TechCrunch
`
`iv
`
`
`
`IPR2020-01619
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`
`Exhibit
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`Description
`
`Juha-Matti Vanhatupa, “Browser Games for Online Communities,”
`International Journal of Wireless & Mobile Networks (IJWMN),
`Vol. 2, No. 3, August 2010
`
`“FarmVille for Dummies” by Angela Morales and Kyle Orland,
`ISBN: 978-1-118-01696-1 (“FVD”)
`
`U.S. Patent No. 8,843,853 to Smoak et al. (“Smoak”)
`
`U.S. Patent No. 7,357,718 to Yamaoka et al. (“Yamaoka”)
`
`U.S. Patent Pub. No. 2012/0129590 to Morrisroe et al. (“Morrisroe”)
`
`Plaintiff's Opening Claim Construction Brief, Dkt. 63, Filed July 24,
`2020 (ED Texas 2:19-cv-00310-JRG-RSP)
`
`Patent Owner's Preliminary Response Pursuant to 37 C.F.R. § 42.207,
`Case PGR2020-00053
`
`Scott McKeown, Congress Urged to Investigate PTAB Discretionary
`Denials, Patents Post-Grant (June 30, 2020)
`
`Scott McKeown, District Court Trial Dates Tend to Slip After PTAB
`Discretionary Denials, Patents Post-Grant (July 24, 2020)
`
`GREE, Inc.’s Opposition to Supercell Oy’s Motion for Relief in View
`of Governmental / Public Health Restrictions in Response to Covid-
`19 Impact, Dkt. 102, Entered April 29, 2020 (ED Texas
`2:19-cv-00161-JRG-RSP)
`
`Fourth Amended Docket Control Order, Dkt. 102, Entered
`April 29, 2020 (ED Texas 2:19-cv-00310)
`
`GREE, Inc.’s Paragraph 1 and 3 Initial and Additional Disclosures,
`February 18, 2020 (ED Texas 2:19-cv-00310-JRG-RSP))
`
`Supercell Oy’s Notice of Deposition of Tomoki Yasuhara,
`August 24, 2020 (ED Texas 2:19-cv-00310-JRG-RSP,
`2:19-cv-00311-JRG-RSP)
`
`v
`
`
`
`IPR2020-01619
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`
`Exhibit
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`Description
`
`Supercell Oy’s Notice of Rule 30(b)(6) Deposition of Plaintiff
`Gree, Inc., August 7, 2020 (ED Texas 2:19-cv-310-JGR-RSP,
`2:19-cv-00311)
`
`Sixth Amended Docket Control Order [Dkt 94], entered on October
`23, 2020, Case No. 19-cv-00311 (E.D. Texas)
`
`Order (Granting Continuance of In-Person Jury Trials) (Dkt. 261),
`entered on November 20, 2020, Infernal Technology, LLC, et al. v.
`Sony Interactive Entertainment LLC, Case. No. 19-cv-00248 (E.D.
`Texas)
`
`Texas COVID-19 Active Case Data By County, available at
`https://dshs.state.tx.us/coronavirus/TexasCOVID-
`19ActiveCaseDatabyCounty.xlsx (retrieved February 8, 2021).
`
`Texas Department of State Health Services Website, Texas COVID-
`19 Data, available at
`https://dshs.texas.gov/coronavirus/additionaldata.aspx (retrieved
`February 8, 2021).
`
`New coronavirus variant could take over by spring, experts day, The
`Dallas Morning News, Jan. 16, 2021, available at
`https://www.dallasnews.com/news/2021/01/16/new-coronavirus-
`variant-could-take-over-by-spring-experts-say/.
`
`Katie Buehler, COVID-19 Outbreak Leads to Mistrial in EDTX,
`Law360 (Nov. 17, 2020),
`https://www.law360.com/articles/1329617/covid-19-outbreak-leads-
`to-mistrial-in-edtx
`
`Order entered on November 20, 2020, Solas OLED Ltd. v. Samsung
`Display Co., Ltd., [Dkt 302], Case No. 2:19-cv-00152-JRG
`
`Amended Docket Control Order, entered October 7, 2020 [Dkt. 81],
`Civil Case No. 19-cv-00310-JRG-RSP (E.D. Tex.).
`
`vi
`
`
`
`IPR2020-01619
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`
`Exhibit
`
`1040
`
`1041
`
`1042
`
`1043
`
`
`
`Description
`
`Email from Michael Morlock to Fenwick & West, February 22, 2021
`regarding reduction to claims at issue, GREE, Inc. v. Supercell Oy,
`ED Texas Case Nos. 2:19-cv-00200, -00237, -00310, -00311
`
`Email from Adrienne Dellinger, Law Clerk to Chief Judge Rodney
`Gilstrap, Feb. 25, 2021, regarding Order of Trials for March 2021
`(ED Texas)
`
`Email from Taylor Mauze, Law Clerk to Chief Judge Rodney
`Gilstrap, March 2, 2021, regarding March 15, 2021 Jury Selection
`and Trial Procedures (ED Texas)
`
`Report and Recommendation entered on April 16, 2021 (regarding
`Supercell Oy’s Motions for Summary Judgment of Invalidity Under
`35 U.S.C. § 101), Civil Case Nos. 19-cv-00200, -00237, -00310, and
`-00311-JRG-RSP (E.D. Tex.)
`
`vii
`
`
`
`IPR2020-01619
`Petitioner’s Request for Rehearing
`INTRODUCTION AND REQUESTED RELIEF
`A.
`Pursuant to 37 C.F.R. § 42.71, Petitioner Supercell Oy (“Supercell” or
`
`“Petitioner”) respectfully requests rehearing of the Board’s Decision Denying
`
`Institution of Inter Partes Review of U.S. Patent No. 10,413,832 (the “’832 Patent”)
`
`(Paper 15) (“Decision”) because the Board “misapprehended or overlooked” matters
`
`addressed by the Petition and thus abused its discretion in denying institution.
`
`See 37 C.F.R. § 42.71(c) and (d). Specifically, the Board misapprehended the
`
`impact of the lack of overlap between the issues in the district court and this
`
`proceeding and improperly weighed the Fintiv factors to deny institution.
`
`B.
`
`LEGAL STANDARD
`A request for rehearing “must specifically identify all matters the party
`
`believes the Board misapprehended or overlooked, and the place where each matter
`
`was previously addressed in a motion, an opposition, [or] a reply.” 37 C.F.R.
`
`§ 42.71(d). “When rehearing a decision on petition, a panel will review the decision
`
`for an abuse of discretion.” 37 C.F.R. § 42.71(c). “An abuse of discretion is found if
`
`the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an
`
`erroneous conclusion of law; (3) rests on clearly erroneous fact finding; or
`
`(4) involves a record that contains no evidence on which the Board could rationally
`
`base its decision.” Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821
`
`F.3d 1359, 1367 (Fed. Cir. 2016).
`
`1
`
`
`
`IPR2020-01619
`Petitioner’s Request for Rehearing
`C. BASIS FOR THE REQUESTED RELIEF
`The NHK-Fintiv Factors Support Institution
`1.
`The Board relied on the multi-factor test set forth in the precedential
`
`NHK Spring decision and Fintiv order in reaching its decision to deny institution.
`
`See generally Decision at 5-27; NHK Spring Co. v. Intri-Plex Techs., Inc.,
`
`IPR2018-00752, Paper 8 (P.T.A.B. Sept. 12, 2018) (precedential); Apple Inc. v.
`
`Fintiv, Inc., IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) (precedential). In
`
`its analysis, the Board concluded that Factors 1 (stay) and 6 (other circumstances,
`
`including the merits) were neutral, Factors 2 (proximity of trial), 3 (investment),
`
`and 5 (parties) weighed in favor of Patent Owner, and Factor 4 (overlap) weighed
`
`in favor of Petitioner. Decision at 15. Ultimately, the Board concluded that
`
`“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.” Id.
`
`Therefore, the Board determined “that the circumstances presented weigh in favor
`
`of denying institution under 35 U.S.C. § 314(a).” Id. at 15-16.
`
`However, the Board overlooked or misapprehended facts regarding Factors
`
`2, 3, and 6 that, when properly considered, tip the balance in favor of institution.
`
`a.
`
`The Board’s conclusion regarding Factor 2 rests on clearly
`erroneous fact finding.
`In its Decision, the Board noted that the trial at that time was scheduled to
`
`proceed on March 1, 2021. Decision at 8. However, after the Decision was issued,
`
`2
`
`
`
`IPR2020-01619
`Petitioner’s Request for Rehearing
`that date in fact did get further delayed, and the trial now is scheduled to start on
`
`April 30, 2021. Although the Board correctly noted that the final written decision
`
`would still be due months after that date, in making its conclusion about Factor 2,
`
`the Board appeared to have overlooked its own findings about the lack of overlap
`
`between this proceeding and the district court litigation. The Board based its
`
`decision for Factor 2 on “the expected May 2021 trial date in the district court
`
`litigation” (Decision at 11), without acknowledgment that the two proceedings
`
`would address different art and arguments – as it stated in its discussion of Factor
`
`4: “the would be only minimal overlap between the invalidity issues before us and
`
`the district court” (id. at 14) – which impacts the Factor 2 analysis as well, since
`
`the potential for inconsistent results between the two forums is minimal.
`
`This is inconsistent with the Board’s own statements under Factor 4, and
`
`thus the Board’s conclusion about Factor 2 “rests on clearly erroneous fact
`
`finding” – indeed, facts that are internally inconsistent with the Board’s own
`
`conclusions about Factor 4 – and thus the Board’s conclusion under Factor 2
`
`constitutes an “abuse of discretion” under Intelligent Bio-Systems, 821 F.3d at 1367.
`
`Further, due to the lack of overlap, key issues in the Petition will not be
`
`resolved in the parallel proceeding, as Patent Owner had argued. PO Overlap Br.
`
`at 2. In particular, in addition to the non-overlapping art and arguments, only two
`
`dependent claims remain in the district court proceeding of the 15 claims
`
`3
`
`
`
`IPR2020-01619
`Petitioner’s Request for Rehearing
`(including 3 independent claims) in this proceeding. The Petition thus presents
`
`significant non-overlapping claim challenges that weigh against discretionary
`
`denial. See Facebook, Inc. v. Blackberry Ltd., IPR2019-00899, Paper 15 at 12
`
`(P.T.A.B. Oct. 8, 2019). These issues impact not just Factor 4 where the Board
`
`considered them, but Factor 2 as well, since they reduce the likelihood of
`
`“inconsistent results” in the district court. When the lack of overlap is properly
`
`considered, the facts weigh in favor of institution.
`
`b.
`
`The Board misapprehended or overlooked that the parallel
`proceeding investment is primarily in non-overlapping
`issues.
`The Board’s conclusion regarding Factor 3 (investment) appears to have
`
`overlooked that the fact that the bulk of the investment made by the court at this
`
`stage has been for issues not present in this proceeding. For example, different art is
`
`applied between the two forums, and this proceeding does not assert invalidity based
`
`on either § 101 or § 112. Indeed, the one area of overlap is claim construction, for
`
`which a Claim Construction Memorandum Opinion and Order has issued, which
`
`decreases the claim construction investment required by the Board, since the Board
`
`“shall” consider that construction. See 83 FR 51340, 51341 (Oct. 11, 2018). As a
`
`result, most of the briefs, disclosures, and testimony to date in the litigation, that
`
`forms the basis of the “investment” by the court and the parties that the Board relied
`
`on in its conclusion that Factor 3 favors denial, is entirely irrelevant to the issues
`
`4
`
`
`
`IPR2020-01619
`Petitioner’s Request for Rehearing
`present in this proceeding. Thus, in finding that “substantial investments have been
`
`made in the parallel proceeding” (Decision at 12), the Board overlooked the fact that
`
`the investment has been almost entirely in issues that do not overlap with those in
`
`this proceeding, and thus should be afforded little weight. These issues impact not
`
`just Factor 4 where the Board considered them, but Factor (2 and) 3 as well, since
`
`they impact the relevance of the particular investment by the district court. When
`
`properly considered, the minimal overlap by the court with the issues relevant to this
`
`proceeding weighs in favor of institution.
`
`c.
`
`The Board’s conclusion regarding Factor 6 rests on clearly
`erroneous fact finding and is clearly unreasonable, arbitrary,
`or fanciful.
`The Board’s analysis regarding Factor 6 appears to disregard precedent
`
`regarding what makes the “merits” of a case weak or strong, and the preliminary
`
`nature of the facts present in every institution decision. The Board found that
`
`Petitioner “adequately makes an initial showing” that the references “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.” Decision at 15. Yet, because
`
`Patent Owner raises a challenge to Yamaoka, which challenge the Board says is
`
`“best decided on a full record as developed at trial, not the preliminary record
`
`before us,” the Board concludes that although the merits “are adequate for
`
`institution,” they also are “neither weak nor strong.” Id.
`
`5
`
`
`
`IPR2020-01619
`Petitioner’s Request for Rehearing
`However, “adequate for institution” is exactly the standard the Petitioner
`
`needs to meet at the institution decision stge. The standard under 35 U.S.C. § 314
`
`is whether there is “a reasonable likelihood that the petitioner would prevail” based
`
`on the petition as filed. In every case, the Board makes its institution decision on a
`
`similar “preliminary record” as is present in this instance. See, e.g., Apple Inc. v.
`
`Seven Networks, LLC, IPR2020-00180, Paper 12 at 17 (P.T.A.B. Aug. 12, 2020);
`
`Westinghouse Air Brake Techs. Corp. v. Siemens Mobility, Inc., IPR2017-01263,
`
`Paper 56 at 2 (P.T.A.B. Oct. 24, 2016). Here, the Board concluded that Petitioner
`
`did in fact make an initial showing “adequate for institution,” yet somehow still
`
`found the merits “neither weak nor strong” and this factor “neutral.” Decision at
`
`15. Such a conclusion is “clearly unreasonable, arbitrary, or fanciful,” and thus
`
`constitutes an “abuse of discretion” under Intelligent Bio-Systems, 821 F.3d at
`
`1367. Under a proper rationale, Factor 6 weighs in favor of institution.
`
`In Fintiv itself, the Board specifically stated that “if the merits of a ground
`
`raised in the petition seem particularly strong on the preliminary record, this fact has
`
`favored institution.” Fintiv at 14-15 (emphasis added). Fintiv states that institution
`
`in such an instance “may serve the interest of overall system efficiency and
`
`integrity.” Id. By concluding that the merits are “adequate for institution” yet
`
`finding this factor “neutral,” the Board has decided that Petitioner met the institution
`
`standard, but somehow that wasn’t sufficient for this factor to weigh in favor of
`
`6
`
`
`
`IPR2020-01619
`Petitioner’s Request for Rehearing
`institution. Decision at 15. This paradox constitutes an “abuse of discretion” by the
`
`Board under Intelligent Bio-Systems, 821 F.3d at 1367.
`
`d.
`
`The Board misapprehended or overlooked the proper
`weighing of the Fintiv factors.
`The Board misapprehended or overlooked the weighing of the factors when
`
`conducting the holistic analysis of Fintiv, used reasoning that was clearly
`
`unreasonable, arbitrary, or fanciful, and came to its ultimate conclusion based on
`
`erroneous findings of fact. In particular, Factor 6 especially should weigh in favor
`
`of institution under the correct reasoning.
`
`The Board previously has found Factors 4 and 6 to be definitive in reaching
`
`its decisions to institute, regardless of its findings regarding other factors. See, e.g.,
`
`Sand Revolution II, LLC v. Cont’l Intermodal Grp., IPR2019-01393, Paper 24 at 9
`
`(P.T.A.B. June 16, 2020) (Informative); Apple Inc. v. Seven Networks, LLC,
`
`IPR2020-00235, Paper 10 (P.T.A.B. July 28, 2020); NanoCellect Biomedial, Inc., v.
`
`Cytonome/ST, LLC, IPR2020-00551, Paper 19 (P.T.A.B. Aug. 27, 2020); VMWare,
`
`Inc. v. Intellectual Ventures I LLC, IPR2020-00407, Paper 12 (P.T.A.B. Aug. 18,
`
`2020). Here, Factors 4 and 6 are likewise strong, and the Board should institute this
`
`IPR consistent with its prior decisions.
`
`Moreover, in Sand Revolution and in Sotera Wireless, Inc. v. Masimo Corp.,
`
`IPR2020-01019, Paper 12 (P.T.A.B. Dec. 1, 2020), stipulations that the Petitioner
`
`would “forfeit any §§ 102 or 103 arguments based on prior art patents or printed
`
`7
`
`
`
`IPR2020-01619
`Petitioner’s Request for Rehearing
`publications” such that there was no overlap in these issues between the two
`
`forums was sufficient to “mitigate any concerns of duplicative efforts between
`
`the district court and the Board, as well as concerns of potentially conflicting
`
`decisions.” Sotera Wireless, IPR2020-01019, Paper 12 at 19. In this proceeding,
`
`there is minimal overlap in one ground, and no overlap in §§ 102 or 103
`
`arguments at all under Ground 2, to which Petitioner is willing to limit the
`
`Petition, and thus concerns of duplicative efforts are, and were, mitigated from
`
`the start.
`
`The Board appears to have misapprehended or overlooked the similarity of
`
`case precedent in which the overlap factor carried great import in whether to
`
`apply discretion to denial institution, and appears not to have considered
`
`Petitioner’s additional briefing on the import of the overlap factor (Paper 12).
`
`As discussed above, when correctly considered, Factors 2, 3 and 6 each
`
`weigh in favor of institution as well as Factor 4 as found by the Board, which
`
`collectively outweigh Factors 1 (neutral) and 5 (weighs towards denial). Thus,
`
`when fully considered, the holistic analysis favors institution.
`
`2.
`
`Exercising Discretion Based on the NHK-Fintiv Factors Is
`Improper
`In fact, the entire NHK-Fintiv framework relied on by the Board to deny
`
`institution is improper. Section § 314(a) sets forth the requirements for the
`
`Director to institute IPR; it does not grant the Director authority to create new
`
`8
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`IPR2020-01619
`Petitioner’s Request for Rehearing
`tests for denying institution. See 35 U.S.C. § 314(a) (“The Director may not
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`authorize an inter partes review to be instituted unless…”). Rather, 35 U.S.C.
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`§ 316(a)(2) requires the Director to prescribe regulations “setting forth the
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`standards for the showing of sufficient grounds to institute a review under
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`subsection (a) of section 314.”
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`The Director has not prescribed regulations setting forth the standards used
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`by the Board to deny institution of the instant Petition. Neither the precedential
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`decision and order of NHK-Fintiv nor the 2019 Consolidated Trial Practice Guide
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`(“2019 TPG”) are regulations. See Andrew Schneider & Jonathan Stroud, The
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`Eleventh Auer: The Effect of Kisor v. Wilkie On Rulemaking and Adjudication at
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`the United States Patent and Trademark Office, 19 Chi.-Kent J. Intell. Prop. 485,
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`501-502 (2020) (finding that neither the 2019 TPG nor the SOP 2, which includes
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`guidance on the process for designating PTAB decisions as precedential, are the
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`result of notice-and-comment rulemaking). Moreover, the Court of Appeals for the
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`Federal Circuit has expressly found that precedential opinions are not regulations
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`within the context of § 316(a), stating that “[t]here is no indication in the statute
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`that Congress either intended to delegate broad substantive rulemaking authority to
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`the Director to interpret statutory provisions through POP opinions or intended him
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`to engage in any rulemaking other than through the mechanism of prescribing
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`regulations.” Facebook, Inc. v. Windy City Innovations, LLC, 953 F.3d 1313, 1340
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`IPR2020-01619
`Petitioner’s Request for Rehearing
`(Fed. Cir. 2020) (reinstated on rehearing in relevant part, slip op. Sept. 4, 2020)
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`(additional views by Prost, C.J., Plager & O’Malley, J.J.).
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`The NHK-Fintiv framework is thus procedurally invalid because it prescribes
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`a new standard for institution but was not promulgated via the requisite regulation.
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`The “Patent Office cannot effect an end-run around its congressionally delegated
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`authority by conducting rulemaking through adjudication without undertaking the
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`process of promulgating a regulation.” Aqua Prods., Inc. v. Matal, 872 F.3d 1290,
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`1339 (Fed. Cir. 2017) (separate opinion of Reyna & Dyk, J.J.). Any rule “resulting”
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`from such evasion of the congressionally specified process “is a nullity.” Id. at 1338.
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`This invalid framework is apparent from the Patent Office’s own writings.
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`Fintiv states that “in evaluating the factors, the Board takes a holistic view of
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`whether efficiency and integrity of the system are best served by denying or
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`instituting review. See 2019 TPG at 58 (quoting 35 U.S.C. § 316(b)).” Fintiv at 6.
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`The portion of the 2019 TPG cited by Fintiv states, in relevant part: “There may be
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`other reasons besides the ‘follow-on’ petition context where the ‘effect . . . on the
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`economy, the integrity of the patent system, the efficient administration of the
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`Office, and the ability of the Office to timely complete proceedings,’ 35 U.S.C.
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`§ 316(b), favors denying a petition even though some claims meet the threshold
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`standards for institution under 35 U.S.C. §§ 314(a), and 324(a).” 2019 TPG at 58.
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`10
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`IPR2020-01619
`Petitioner’s Request for Rehearing
`However, as discussed above, both §§ 316(b) and 326(b) require the Director
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`to consider “the economy, the integrity of the patent system, [and] the efficient
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`administration of the Office” “[i]n prescribing regulations.” 35 U.S.C. §§ 316(b),
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`326(b) (emphasis added). Thus, the 2019 TPG misstates the law by using the
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`economy, integrity, and efficiency factors outside the context of regulation. It is
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`improper for the Director, and the Board, to deny institution based on these
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`considerations absent properly-promulgated regulations. Hence, the Board, in its
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`reliance on “binding precedent” to exercise its discretion to deny institution of a
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`meritorious petition, has overlooked or misunderstood the law.
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`D. CONCLUSION
`Petitioners respectfully request that the Board rehear the Decision and grant
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`institution based on all grounds raised in the Petition.
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`
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`Dated: April 23, 2021
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`Respectfully submitted,
`FENWICK & WEST LLP
`
`/Jennifer R. Bush/
`Jennifer R. Bush
`Reg. No. 50,784
`Attorneys for Petitioner Supercell Oy
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`
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`11
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`IPR2020-01619
`Petitioner’s Request for Rehearing
`CERTIFICATION OF SERVICE ON PATENT OWNER
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`The undersigned hereby certifies that the foregoing Petitioner’s Request for
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`Rehearing and Exhibit 1043 were served on Patent Owner’s lead and back-up
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`counsel in its entirety by electronic service at the email addresses provided below:
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`Andrew W. Rinehart
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101
`arinehart@kilpatricktownsend.com
`
`Scott A. McKeown
`Ropes & Gray
`2099 Pennsylvania Avenue, N.W.
`Washington, D.C. 2006
`scott.mckeown@ropesgray.com
`
`
`FENWICK & WEST LLP
`
`/Jennifer R. Bush/
`Jennifer R. Bush
`Reg. No. 50,784
`Attorneys for Petitioner Supercell Oy
`
`
`
`
`John C. Alemanni
`Kilpatrick Townsend & Stockton LLP
`4208 Six Forks Road, Suite 1400
`Raleigh, NC 27609
`jalemanni@kilpatricktownsend.com
`
`Joshua H. Lee
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street NE, Suite 2800
`Atlanta, GA 30309-6582
`jlee@kilpatricktownsend.com
`
`Dated: April 23, 2021
`Fenwick & West LLP
`801 California Street
`Mountain View, CA 94041
`Telephone: (650) 988-8500
`
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