UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`Case IPR2020-01633
`U.S. Patent No. 9,079,107
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.207
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`I.
`II.
`
`III.
`
`Introduction ...................................................................................................... 1
`The Petition Should Be Denied Under § 314(a). ............................................. 3
`A.
`Factor 1: whether the court granted a stay or evidence exists
`that one may be granted if a proceeding is instituted ............................ 7
`Factor 2: proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision ....................... 9
`Factor 3: investment in the parallel proceeding by the court and
`the parties ............................................................................................ 16
`Factor 4: overlap between issues raised in the petition and in the
`parallel proceeding .............................................................................. 21
`Factor 5: whether the petitioner and the defendant in the parallel
`proceeding are the same party ............................................................. 31
`Factor 6: other circumstances that impact the Board’s exercise
`of discretion, including the merits ....................................................... 31
`Holistic Analysis of Fintiv Factors ..................................................... 35
`G.
`Petitioner Has Not Demonstrated a Reasonable Likelihood of Success
`for the Grounds Advanced in the Petition. .................................................... 36
`IV. Conclusion ..................................................................................................... 45
`
`

`

`TABLE OF AUTHORITIES
`
`Cases
`Amazon.com, Inc. v. Vocalife LLC,
`IPR2020-00864, Paper 22 (P.T.A.B. Oct. 28, 2020) ....................... 10, 18, 19, 30
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ................................. passim
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 15 (P.T.A.B. May 13, 2020) ................................. passim
`Apple Inc. v. Maxell, Ltd.,
`IPR2020-00203, Paper 12 (P.T.A.B. July 6, 2020) ........................... 9, 10, 29, 30
`Apple Inc. v. Maxell, Ltd.,
`IPR2020-00407, Paper 12 (P.T.A.B. Aug. 11, 2020) .................................. 15, 16
`Apple Inc. v. Optis Cellular Technology, LLC,
`IPR2020-00465, Paper 13 (P.T.A.B. Sept. 17, 2020).........................................29
`Bumble Bee Foods, LLC v. Kowalski,
`IPR2014-00224, Paper 18 (P.T.A.B. June 5, 2014) ...........................................43
`Comcast Cable Communications, LLC v. Rovi Guides, Inc.,
`IPR2020-00800, -00801, -00802, Paper 10 (P.T.A.B. Oct. 22,
`2010) ........................................................................................................ 8, 20, 36
`
`Edwards Lifesciences Corp. v. Evalve, Inc.,
`IPR2019-01479, Paper 7 (P.T.A.B. Feb. 26, 2020) .................................... passim
`E-One, Inc. v. Oshkosh Corp.,
`IPR2019-00161, Paper 16 (P.T.A.B. May 15, 2019) .........................................17
`Google LLC v. Personalized Media Communications, LLC,
`IPR2020-00719, Paper 16 (P.T.A.B. Aug. 31, 2020) .....................................9, 14
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................40
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ................................................................... 37, 38
`
`ii
`
`

`

`Intel Corp. v. VLSI Tech. LLC,
`IPR2020-00113, Paper 15 (P.T.A.B. May 19, 2020) .........................................26
`Intel Corporation v. VLSI Technology LLC,
`IPR2020-00106, Paper 17 (P.T.A.B. May 5, 2020) .............................. 10, 22, 23
`Kinetic Techs., Inc. v. Skyworks Solutions, Inc.,
`IPR2014-00529, Paper 8 (P.T.A.B. Sept. 23, 2014).............................. 40, 42, 44
`Kranos Corporation v. Apalone, Inc.,
`IPR2020-00501, Paper 13 (P.T.A.B. July 16, 2020) .................................. passim
`KSR Int'l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................... 37, 38, 44
`Next Caller Inc. v. TrustID, Inc.,
`IPR2019-00961, -00962, Paper 10 (P.T.A.B. Oct. 16, 2019) ..................... 19, 27
`NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (P.T.A.B. Sept. 12, 2018)................................... passim
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ............................................................................ 4
`Realtime Data LLC v. Actian Corp.,
`No. 6:15-CV-463-RWS-JDL, 2016 WL 9340796 (E.D. Tex. Nov.
`29, 2016) ............................................................................................................... 8
`Ruiz v. A.B. Chance Co.,
`357 F.3d 1270 (Fed. Cir. 2004) ..........................................................................43
`Saint Lawrence Commc’ns LLC v. ZTE Corp.,
`No. 2:15-cv-349-JRG, 2016 WL 7338600 (E.D. Tex. July 15,
`2016) ..................................................................................................................... 7
`Sand Revolution II, LLC v. Cont’l Intermodal Group-Trucking LLC,
`IPR2019-01393, Paper 24 (P.T.A.B. June 16, 2020) .........................................13
`Sand Revolution II, LLC v. Continental Intermodal Gr.,
`IPR2019-01393, Paper 18 (P.T.A.B. Apr. 6, 2020) ...........................................33
`Securus Technologies, Inc. v. Global Tel*Link Corp.,
`701 F. App’x 971 (Fed. Cir. 2017) .............................................................. 39, 41
`
`iii
`
`

`

`Sensonics, Inc. v. Aerosonic Corp.,
`81 F.3d 1566 (Fed. Cir. 1996) ..................................................................... 42, 43
`Supercell Oy v. GREE, Inc.,
`IPR2020-00215, Paper 10 (P.T.A.B. June 10, 2020) ................................. passim
`Supercell Oy v. GREE, Inc.,
`IPR2020-00215, Paper 7 (P.T.A.B. Mar. 31, 2020) ...........................................32
`Supercell Oy v. GREE, Inc.,
`IPR2020-00310, Paper 13 (P.T.A.B. June 18, 2020) ................................. passim
`Supercell Oy v. GREE, Inc.,
`IPR2020-00513, Paper 11 (P.T.A.B. June 24, 2020) ................................. passim
`Supercell Oy v. GREE, Inc.,
`PGR2020-00034, Paper 13 (P.T.A.B. Sept. 3, 2020) ................................. passim
`Supercell Oy v. GREE, Inc.,
`PGR2020-00038, Paper 14 (P.T.A.B. Sept. 3, 2020) ................................. passim
`Supercell Oy v. GREE, Inc.,
`PGR2020-00039, Paper 14 (P.T.A.B. Sept. 14, 2020) ............................... passim
`Supercell Oy v. GREE, Inc.,
`PGR2020-00041, Paper 14 (P.T.A.B. Sept. 14, 2020) ............................... passim
`Supercell Oy v. GREE, Inc.,
`PGR2020-00043, Paper 13 (P.T.A.B. Oct. 14, 2020) ................................ passim
`Supercell Oy v. GREE, Inc.,
`PGR2020-00046, Paper 13 (P.T.A.B. Oct. 5, 2020) .................................. passim
`Supercell Oy v. GREE, Inc.,
`PGR2020-00049, Paper 14 (P.T.A.B. Oct. 13, 2020) ................................ passim
`Supercell Oy v. GREE, Inc.,
`PGR2020-00053, Paper 12 (P.T.A.B. Oct. 9, 2020) .................................. passim
`Vizio, Inc. v. Polaris PowerLED Technologies, LLC,
`IPR2020-00043, Paper 30 (P.T.A.B. May 4, 2020) .............................. 10, 23, 26
`
`iv
`
`

`

`Statutes
`35 U.S.C. § 103 ........................................................................................................36
`35 U.S.C. § 314(a) ........................................................................................... passim
`35 U.S.C. § 315(b) ............................................................................................ 20, 34
`35 U.S.C. § 316(a)(11) ...........................................................................................8, 9
`Regulations
`37 C.F.R. § 42.100(b) ................................................................................................ 4
`
`v
`
`

`

`LIST OF EXHIBITS
`
`Exhibit No.
`2001
`
`Description
`Sixth Amended Docket Control Order, GREE, Inc. v. Supercell
`Oy, Civil Action No. 2:19-cv-00311, Document 94 (E.D. Tex. Oct.
`23, 2020)
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`Order Regarding Sixth Amended Docket Control Order, GREE,
`Inc. v. Supercell Oy, Civil Action No. 2:19-cv-00311, Document
`96 (E.D. Tex. Oct. 26, 2020)
`
`Joint Motion to Amend Docket Control Order, GREE, Inc. v.
`Supercell Oy, Civil Action No. 2:19-cv-00311, Document 93 (E.D.
`Tex. Oct. 22, 2020)
`
`Complaint, GREE, Inc. v. Supercell Oy, Civil Action No. 2:19-cv-
`00311, Document 1 (E.D. Tex. Sept. 16, 2019)
`
`Defendant Supercell Oy’s Invalidity Contentions and Disclosures
`Under Local Patent Rules 3-3 and 3-4, GREE, Inc. v. Supercell Oy,
`Civil Action No. 2:19-cv-00311 (E.D. Tex.), dated April 7, 2020
`
`Exhibit A-2 to Defendant Supercell Oy’s Invalidity Contentions
`and Disclosures Under Local Patent Rules 3-3 and 3-4, GREE, Inc.
`v. Supercell Oy, Civil Action No. 2:19-cv-00311 (E.D. Tex.),
`dated April 7, 2020
`
`Exhibit A-8 to Defendant Supercell Oy’s Invalidity Contentions
`and Disclosures Under Local Patent Rules 3-3 and 3-4, GREE, Inc.
`v. Supercell Oy, Civil Action No. 2:19-cv-00311 (E.D. Tex.),
`dated April 7, 2020
`
`Excerpts of the Expert Report of Jose Zagal, GREE, Inc. v.
`Supercell Oy, Civil Action No. 2:19-cv-00311 (E.D. Tex.), dated
`November 2, 2020
`
`Buehler, Katie, ‘Clash of Clans’ Game Maker Owes $8.5M, Texas
`Jury Says, Law360 (September 18, 2020)
`
`vi
`
`

`

`Exhibit No.
`2010
`
`Description
`Order, Solas OLED Ltd. v. Samsung Display Co., Ltd. et al., Civil
`Action No. 2:19-cv-001520, Document 302 (E.D. Tex.), dated
`November 20, 2020
`
`2011
`
`2012
`
`2013
`
`Claim Construction Memorandum Opinion and Order, GREE, Inc.
`v. Supercell Oy, Civil Action No. 2:19-cv-00311, Document 86
`(E.D. Tex. Oct. 12, 2020)
`
`Seventh Amended Docket Control Order, GREE, Inc. v. Supercell
`Oy, Civil Action No. 2:19-cv-00311, Document 120 (E.D. Tex.
`Dec. 10, 2020)
`
`Eighth Amended Docket Control Order, GREE, Inc. v. Supercell
`Oy, Civil Action No. 2:19-cv-00311, Document 133 (E.D. Tex.
`Dec. 17, 2020)
`
`vii
`
`

`

`I.
`
`Introduction
`This Petition should be denied. First, 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). See NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper
`
`8, at 19–20 (P.T.A.B. Sept. 12, 2018) (precedential); accord Apple Inc. v. Fintiv,
`
`Inc., IPR2020-00019, Paper 11, at 6 (P.T.A.B. Mar. 20, 2020) (precedential).
`
`Indeed, over the past several months, the Board denied institution on eleven
`
`different petitions filed by this same Petitioner against this same Patent Owner in
`
`view of nearly identical circumstances. Supercell Oy v. GREE, Inc., IPR2020-00215,
`
`Paper 10, at 6–19 (P.T.A.B. June 10, 2020); Supercell Oy v. GREE, Inc., IPR2020-
`
`00310, Paper 13, at 6–20 (P.T.A.B. June 18, 2020); Supercell Oy v. GREE, Inc.,
`
`IPR2020-00513, Paper 11, at 5–18 (P.T.A.B. June 24, 2020); Supercell Oy v. GREE,
`
`Inc., PGR2020-00034, Paper 13, at 5–26 (P.T.A.B. Sept. 3, 2020); Supercell Oy v.
`
`GREE, Inc., PGR2020-00038, Paper 14, at 5–29 (P.T.A.B. Sept. 3, 2020); Supercell
`
`Oy v. GREE, Inc., PGR2020-00039, Paper 14, at 5–27 (P.T.A.B. Sept. 14, 2020);
`
`Supercell Oy v. GREE, Inc., PGR2020-00041, Paper 14, at 5–25 (P.T.A.B. Sept. 14,
`
`2020); Supercell Oy v. GREE, Inc., PGR2020-00043, Paper 13, at 5–19 (P.T.A.B.
`
`Oct. 14, 2020); Supercell Oy v. GREE, Inc., PGR2020-00046, Paper 13, at 5–27
`
`

`

`(P.T.A.B. Oct. 5, 2020); Supercell Oy v. GREE, Inc., PGR2020-00049, Paper 14, at
`
`5–22 (P.T.A.B. Oct. 13, 2020); Supercell Oy v. GREE, Inc., PGR2020-00053, Paper
`
`12, at 5–25 (P.T.A.B. Oct. 9, 2020).
`
`Like those cases, here the district court will have addressed all of the issues
`
`raised in the Petition long before this Board has the opportunity to do so. Indeed, the
`
`district court proceeding is already at an advanced state, and a jury trial is set to
`
`begin on March 1, 2021—more than twelve months before the Board would be
`
`statutorily required to issue a final written decision in this proceeding. And even if
`
`the trial date were to be moved by a few months due to any complications associated
`
`with the COVID-19 pandemic, the trial would still occur several months before the
`
`deadline for the Board to issue a final written decision in this proceeding.
`
`Pursuant to NHK Spring, and on a balancing of the Fintiv factors, it would be
`
`an inefficient use of Board, party, and judicial resources to institute the present
`
`proceeding under these circumstances. Indeed, the possibility of duplication of
`
`efforts here is high, as is the potential for inconsistent results, due to both tribunals
`
`considering substantially identical issues. See, e.g., Supercell, IPR2020-00215,
`
`Paper 10, at 18; Supercell, IPR2020-00310, Paper 13, at 19; Supercell, IPR2020-
`
`00513, Paper 11, at 17–18; Supercell, PGR2020-00034, Paper 13, at 26; Supercell,
`
`PGR2020-00038, Paper 14, at 28; Supercell, PGR2020-00039, Paper 14, at 26–27;
`
`Supercell, PGR2020-00041, Paper 14, at 25; Supercell, PGR2020-00043, Paper 13,
`
`2
`
`

`

`at 18; Supercell, PGR2020-00046, Paper 13, at 24; Supercell, PGR2020-00049,
`
`Paper 14, at 22; Supercell, PGR2020-00053, Paper 12, at 25.
`
`Second, even if the Board declines to exercise its discretion, the instant
`
`Petition should be denied because it fails to establish a reasonable likelihood that
`
`any of the challenged claims is unpatentable. For example, Petitioner’s alleged
`
`motivation to combine the asserted references is insufficient to meet Petitioner’s
`
`burden and should be rejected for several reasons.
`
`II.
`
`The Petition Should Be Denied Under § 314(a).
`Institution of inter partes review is discretionary with the Director of the U.S.
`
`Patent and Trademark Office. See 35 U.S.C. § 314(a) (“The Director may not
`
`authorize an inter partes review to be instituted unless the Director determines that
`
`the information presented in the petition … 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.”). It is thus well established that the Board has discretion
`
`regarding whether to institute trial under § 314(a). See id.
`
`In the precedential NHK Spring decision, the Board exercised discretion under
`
`§ 314(a) to deny a petition upon determining that institution would be an “inefficient
`
`use of Board resources.” IPR2018-00752, Paper 8, at 19–20. The Board determined
`
`that denial of institution was appropriate in view of a parallel district court
`
`proceeding—involving the same patent, the same parties, the same claim
`
`3
`
`

`

`construction standard1, and “the same prior art and arguments”—which was
`
`scheduled to be completed before a final written decision would be due in the Board
`
`proceeding. Id. In particular, a jury trial was set to begin in the parallel district court
`
`proceeding approximately six months before the trial before the Board “on the same
`
`asserted prior art” would conclude. Id. The Board determined that the circumstances
`
`supported denial of the petition under § 314(a), considering the AIA’s objective “to
`
`provide an effective and efficient alternative to district court litigation.” Id. at 20.
`
`Thus, pursuant to NHK Spring, “a parallel proceeding in an advanced state
`
`implicates considerations of efficiency and fairness, which can serve as an
`
`independent reason to apply discretion to deny institution.” Apple Inc. v. Fintiv, Inc.,
`
`IPR2020-00019, Paper 15, at 11 (P.T.A.B. May 13, 2020). Indeed, in NHK Spring,
`
`the Board held that the state of a parallel district court proceeding may be an
`
`1 Since the NHK Spring decision, the claim construction standard to be employed in
`
`an inter partes review changed from broadest reasonable interpretation to “the same
`
`claim construction standard used by Article III federal courts … which follow
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and its progeny.”
`
`Edwards Lifesciences Corp. v. Evalve, Inc., IPR2019-01479, Paper 7, at 8 n.7
`
`(P.T.A.B. Feb. 26, 2020) (citing 37 C.F.R. § 42.100(b) (2019)).
`
`4
`
`

`

`additional factor (beyond those identified in General Plastic) that weighs in favor of
`
`denying a petition under § 314(a). IPR2018-00752, Paper 8, at 20.
`
`Here, the Board should similarly exercise its discretion under § 314(a) and
`
`deny the Petition because institution of this proceeding would not be consistent with
`
`the objective of the AIA to “provide an effective and efficient alternative to district
`
`court litigation.” Id. at 20. Like in NHK Spring, there exists here a parallel district
`
`court proceeding between the same parties (Petitioner and Patent Owner) regarding
`
`the same subject patent: GREE, Inc. v. Supercell Oy, No. 2:19-cv-00311 (E.D. Tex.
`
`filed Sept. 16, 2019). Pet. at 2; see Ex. 2004. And the advanced state of that parallel
`
`district court proceeding favors denial of the Petition. In fact, a jury trial regarding
`
`the validity of the subject patent is currently set to begin on March 1, 2021 (Ex. 2013,
`
`at 1), while trial before the Board on the same prior art and arguments will not
`
`conclude until March 2022—twelve months later. As such, the jury trial will
`
`conclude long before any final written decision in this proceeding, and may well
`
`conclude before the Board issues a decision regarding institution in this proceeding.
`
`The totality of these circumstances is thus contrary to the AIA’s goal of providing
`
`for an efficient alternative means to resolve questions of validity.
`
`Indeed, the Board has identified factors relating to “whether efficiency,
`
`fairness, and the merits support the exercise of authority to deny institution in view
`
`of an earlier trial date in the parallel proceeding” in line with NHK Spring—each of
`
`5
`
`

`

`which supports denial here. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, at
`
`6 (P.T.A.B. Mar. 20, 2020) (precedential). The Fintiv factors include:
`
`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.
`
`As set forth below, a balancing of these factors demonstrates that efficiency
`
`and integrity of the AIA are best served by denying institution. And the Board has
`
`previously held as such with respect to eleven different petitions filed by this same
`
`Petitioner against this same Patent Owner in view of nearly identical circumstances.
`
`See, e.g., Supercell, IPR2020-00215, Paper 10, at 18; Supercell, IPR2020-00310,
`
`Paper 13, at 19; Supercell, IPR2020-00513, Paper 11, at 17–18; Supercell,
`
`PGR2020-00034, Paper 13, at 26; Supercell, PGR2020-00038, Paper 14, at 28;
`
`Supercell, PGR2020-00039, Paper 14, at 26–27; Supercell, PGR2020-00041, Paper
`
`14, at 25; Supercell, PGR2020-00043, Paper 13, at 18; Supercell, PGR2020-00046,
`
`Paper 13, at 24; Supercell, PGR2020-00049, Paper 14, at 22; Supercell, PGR2020-
`
`6
`
`

`

`00053, Paper 12, at 25. Indeed, a number of those decisions—stemming from
`
`Petitions filed months before this one—found that denial was appropriate in view
`
`of the same March 1, 2021 trial date. See, e.g., Supercell, PGR2020-00049, Paper
`
`14, at 9–10 (denying institution of Petition filed on April 1, 2020 and noting “March
`
`1, 2021” trial date in parallel proceeding); see also Supercell, PGR2020-00043,
`
`Paper 13, at 18 n.8.
`
`A.
`
`Factor 1: whether the court granted a stay or evidence exists that
`one may be granted if a proceeding is instituted
`“A district court stay of the litigation pending resolution of the PTAB trial
`
`allays concerns about inefficiency and duplication of efforts,” and thus “weigh[s]
`
`against exercising the authority to deny institution under NHK.” Fintiv, IPR2020-
`
`00019, Paper 11, at 6. But here, Petitioner has not filed any motion to stay the parallel
`
`district court proceeding in view of the instant Petition. See Pet. at 65 (“Petitioner
`
`has not yet sought a stay ….”). And while, overall, a judge determines whether to
`
`grant a stay based on the facts of each case, there is little evidence here to suggest
`
`that the district court will grant a stay.
`
`In fact, any stay of the parallel district court proceeding in view of the instant
`
`Petition is extremely unlikely. The district court “has a consistent practice of denying
`
`motions to stay when the PTAB has yet to institute post-grant proceedings.” Saint
`
`Lawrence Commc’ns LLC v. ZTE Corp., No. 2:15-cv-349-JRG, 2016 WL 7338600,
`
`at *1 (E.D. Tex. July 15, 2016). And, any decision from this Board regarding
`
`7
`
`

`

`institution is not due until after the jury trial in the parallel district court proceeding
`
`(set to begin on March 1, 2021). See 35 U.S.C. § 316(a)(11); Ex. 2013, at 1. At that
`
`time, the “late stage” of the district court proceeding will necessarily “weigh[]
`
`against a stay.” Realtime Data LLC v. Actian Corp., No. 6:15-CV-463-RWS-JDL,
`
`2016 WL 9340796, at *4–5 (E.D. Tex. Nov. 29, 2016) (denying motion to stay
`
`“[g]iven the advanced stage of litigation”).
`
`As such, the district court has undisputedly not granted any stay and the record
`
`does not include any evidence to even suggest that a stay, if requested, would be
`
`granted. Indeed, the fact that a jury trial is scheduled to occur before institution
`
`confirms that a stay is extremely unlikely. Accordingly, this factor weighs in favor
`
`of the Board exercising its discretion to deny institution pursuant to § 314(a). Cf.
`
`Comcast Cable Communications, LLC v. Rovi Guides, Inc., IPR2020-00800, -
`
`00801, -00802, Paper 10, at 12–13 (P.T.A.B. Oct. 22, 2010) (finding this factor
`
`“weigh[s] in favor of exercising [] discretion to deny institution” where ITC trial
`
`was completed prior to decision on institution and thus “the ITC is unlikely to stay
`
`its investigation”). At a minimum, the factor is, at most, “neutral” as to the Board
`
`exercising its discretion to deny institution. See Supercell, IPR2020-00215, Paper
`
`10, at 9; Supercell, IPR2020-00310, Paper 13, at 10; Supercell, IPR2020-00513,
`
`Paper 11, at 7–8; Supercell, PGR2020-00034, Paper 13, at 9–10; Supercell,
`
`PGR2020-00038, Paper 14, at 9–10; Supercell, PGR2020-00039, Paper 14, at 9–10;
`
`8
`
`

`

`Supercell, PGR2020-00041, Paper 14, at 9–10; Supercell, PGR2020-00043, Paper
`
`13, at 8–9; Supercell, PGR2020-00046, Paper 13, at 7–8; Supercell, PGR2020-
`
`00049, Paper 14, at 7–8; Supercell, PGR2020-00053, Paper 12, at 9–10.
`
`B.
`
`Factor 2: proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision
`As demonstrated above by NHK Spring, “[i]f 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, IPR2020-
`
`00019, Paper 11, at 9. Such is the case here. A jury trial in the parallel district court
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`proceeding is currently set to begin on March 1, 2021. Ex. 2013, at 1. Accordingly,
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`trial in that proceeding is scheduled to conclude more than twelve months before a
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`final written decision would be due in this proceeding (i.e., March 2022), if the
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`Board were to institute. See 35 U.S.C. § 316(a)(11).
`
`The Board has consistently denied institution in similar—and, in fact, even
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`less similar—factual circumstances. See, e.g., Supercell, IPR2020-00513, Paper 11,
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`at 8–10 (eleven-month gap between trial and deadline for final written decision);
`
`Supercell, IPR2020-00215, Paper 10, at 10–12 (ten-month gap); Google LLC v.
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`Personalized Media Communications, LLC, IPR2020-00719, Paper 16, at 11
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`(P.T.A.B. Aug. 31, 2020) (ten-month gap); Kranos Corporation v. Apalone, Inc.,
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`IPR2020-00501, Paper 13, at 10 (P.T.A.B. July 16, 2020) (ten-month gap); Edwards
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`Lifesciences, IPR2019-01479, Paper 7, at 7 (nine-month gap); Apple Inc. v. Maxell,
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`9
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`Ltd., IPR2020-00203, Paper 12, at 10 (P.T.A.B. July 6, 2020) (eight-month gap);
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`Intel Corporation v. VLSI Technology LLC, IPR2020-00106, Paper 17, at 7
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`(P.T.A.B. May 5, 2020) (seven-month gap); Vizio, Inc. v. Polaris PowerLED
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`Technologies, LLC, IPR2020-00043, Paper 30, at 8 (P.T.A.B. May 4, 2020) (seven-
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`month gap); NHK Spring, IPR2018-00752, Paper 8, at 20 (six-month gap);
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`Supercell, IPR2020-00310, Paper 13, at 10–12 (six-month gap); see also
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`Amazon.com, Inc. v. Vocalife LLC, IPR2020-00864, Paper 22, at 10 (P.T.A.B. Oct.
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`28, 2020) (“the trial date has passed” and thus “is substantially earlier than the
`
`projected statutory deadline for the Board’s final decision”).
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`Patent Owner acknowledges that concerns and precautions with respect to the
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`novel coronavirus (COVID-19) have recently impacted many aspects of the legal
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`system, including both before this Board and before district courts. But the district
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`court has already adjusted the case schedule numerous times in view of that impact.
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`See, e.g., Ex. 2001 (“Sixth Amended Docket Control Order”). For example, in
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`October 2020 the district court extended the deadlines regarding fact discovery,
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`expert discovery, dispositive motions, and Daubert motions (see Exs. 2001, 2002)
`
`in response to a joint motion by the parties (Ex. 2003) requesting additional time for
`
`the parties to complete discovery due to complications stemming from the COVID-
`
`19 pandemic. Those short extensions, however, undisputedly did not require any
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`modification of the March 1, 2021 trial date. Ex. 2001, at 1; Ex. 2003, at 1; see also
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`Ex. 2012, at 1; Ex. 2013, at 1.2
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`The Board takes the court’s current schedule at “face value.” See Fintiv,
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`IPR2020-00019, Paper 15, at 13 (“We generally take courts’ trial schedules at face
`
`value absent some strong evidence to the contrary. We have no reason to believe that
`
`the [] trial date, which already has been postponed by several months due to
`
`complications stemming from the COVID-19 pandemic, will be postponed again.”);
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`see also Supercell, PGR2020-00034, Paper 13, at 11 (same); Supercell, PGR2020-
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`00038, Paper 14, at 11 (same). This is especially true when the record “lacks specific,
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`non-speculative evidence to suggest that [] delay of the trial date is likely in the
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`parallel proceeding at issue [],” notwithstanding the fact that “some uncertainty
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`exists, in theory, due to the COVID-19 pandemic.” Supercell, PGR2020-00034,
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`Paper 13, at 11; Supercell, PGR2020-00038, Paper 14, at 11; Supercell, PGR2020-
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`00039, Paper 14, at 11; Supercell, PGR2020-00041, Paper 14, at 11.
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`2 This month, the district court further modified (albeit slightly) certain deadlines
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`regarding dispositive motions, Daubert motions, and pretrial disclosures due to,
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`inter alia, the holidays, and in response to joint motions from the parties. See Exs.
`
`2012–2013. Those short extensions, however, undisputedly did not require any
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`modification of the March 1, 2021 trial date. Ex. 2012, at 1; Ex. 2013, at 1.
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`11
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`

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`Petitioner’s unsubstantiated claim that the March 1, 2021 trial date in the
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`parallel proceeding is “uncertain” or “very like to change” (Pet. at 65–66) ignores
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`these precedents—as well as the fact that the parties here recently completed an in-
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`person jury trial before the district court in September 2020. Ex. 2009. Indeed,
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`Petitioner’s speculative claim is based simply on articles reporting the general
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`potential for movement in trial dates in district courts. See Exs. 1014, 1015. The
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`Board has previously rejected this same argument from Petitioner as lacking
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`“adequate support.” Supercell, PGR2020-00043, Paper 13, at 11. The Board
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`explained: “[T]he cited article at most establishes that moving trial dates occur with
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`some frequency in other district courts, without citing any specific examples.
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`Because the district court litigation involving the [challenged] patent is pending in
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`the Eastern District of Texas, and Petitioner cites to no examples of studies of
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`shifting trial dates in that forum, we take the current trial date at face value.” Id.
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`The same conclusion holds here. Petitioner fails to present any specific
`
`evidence that the jury trial in the Eastern District of Texas in the parallel proceeding
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`will not proceed on March 1, 2021, as currently scheduled.3 Cf. id. Quite the opposite
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`3 Patent Owner acknowledges that the district court recently continued all in-person
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`jury trials “during December of 2020 and January through February of 2021.” Ex.
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`2010. But that order expressly does not modify, let alone continue, the jury trial in
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`12
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`from Petitioner’s speculative claims in the instant Petition, Petitioner has
`
`affirmatively represented to the district court that the March 1, 2021 trial date need
`
`not be modified. Ex. 2003, at 1. This Board thus takes the court’s current schedule
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`at “face value.” Supercell, PGR2020-00043, Paper 13, at 11; see Fintiv, IPR2020-
`
`00019, Paper 15, at 13 (“We generally take courts’ trial schedules at face value
`
`absent some strong evidence to the contrary.”).4
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`parallel proceeding here, which is scheduled for March 1, 2021. Ex. 2013, at 1.
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`Indeed, each of the court’s subsequent Seventh Amended Docket Control Order and
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`Eighth Seventh Amended Docket Control Order in the parallel proceeding here
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`confirms that the jury trial in the parallel proceeding here remains scheduled for
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`March 1, 2021. Ex. 2013, at 1; Ex. 2012, at 1.
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`4 The facts here are also unlike those in Sand Revolution II, LLC v. Cont’l Intermodal
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`Group-Trucking LLC, IPR2019-01393, Paper 24 (P.T.A.B. June 16, 2020). There,
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`the district court had entered a “loose date at which trial might occur” (Supercell,
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`PGR2020-00039, Paper 14, at 11), which the Board found “indicates a continuing
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`degree of recognized uncertainty of the court’s schedule by the court.” Sand
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`Revolution, IPR2019-01393, Paper 24, at 9. By contrast, here, the district court’s
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`docket control order indicates a “firm date for trial” (March 1, 2021). Ex. 2013, at
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`1; Supercell, PGR2020-00039, Paper 14, at 12.
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`13
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`

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`Further, Petitioner can offer no credible complaint that the schedule will need
`
`to be modified to allow Petitioner to take further discovery in the parallel proceeding
`
`due to travel restrictions associated with COVID-19. Patent Owner has made several
`
`witnesses available for deposition, and Petitioner recently withdrew its motion to
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`compel additional discovery from Patent Owner in the parallel proceeding. GREE,
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`Inc. v. Supercell OY, No. 2:19-cv-00311, Dkt. 116 (E.D. Tex. Nov. 25, 2020). And
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`both fact discovery and expert discovery are now closed, as discussed further below.
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`Ex. 2013, at 4; Ex. 2012, at 3; Ex. 2002, at 1.
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`Moreover, the Board has recognized that any “generalized speculation as to
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`trial dates universally (e.g., due to impacts of COVID-19), are outweighed by the
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`fact that the jury trial in this case is scheduled to occur approximately ten months
`
`before the Board’s statutory deadline.” Supercell, IPR2020-00215, Paper 10, at 11;
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`Google, IPR2020-00719, Paper 16, at 11–12 (same); see also Supercell, IPR2020-
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`00310, Paper 13, at 12 (“[T]he fact that the jury trial in this case is scheduled to
`
`occur approximately six months before the Board’s statutory deadline outweighs,
`
`albeit narrowly, a combination of generalized speculation as to trial dates universally
`
`(e.g., due to impacts of COVID-19) and the one specific fact of record that the jury
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`trial is in doubt at this time due to the recent movement of the trial date from October
`
`5, 2020 to December 7, 2020.”). The same holds even more true here, given that the
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`14
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`jury trial is scheduled to occur more than twelve months before the Board’s statutory
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`deadline to issue a final written dec