Paper 12
`Trials@uspto.gov
`Date: August 11, 2021
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`v.
`ECOFACTOR, INC.,
`Patent Owner.
`
`IPR2021-00488
`Patent 8,180,492 B2
`
`
`
`
`
`
`
`
`
`Before TREVOR M. JEFFERSON, CHRISTOPHER L. OGDEN,
`SCOTT B. HOWARD, Administrative Patent Judges.
`HOWARD, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`Date: August 11, 2021
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`v.
`ECOFACTOR, INC.,
`Patent Owner.
`
`IPR2021-00488
`Patent 8,180,492 B2
`
`
`
`
`
`
`
`
`
`Before TREVOR M. JEFFERSON, CHRISTOPHER L. OGDEN,
`SCOTT B. HOWARD, Administrative Patent Judges.
`HOWARD, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2021-00488
`Patent 8,180,492 B2
`
`INTRODUCTION
`A. Background and Summary
`Google LLC (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–4, 6–13, and 15–28 of U.S. Patent No. 8,180,492 B2
`(Ex. 1001, “the ’492 patent”). Paper 2 (“Petition,” “Pet.”). EcoFactor, Inc.
`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`We have authority, acting on the designation of the Director, to
`determine whether to institute an inter partes review under 35 U.S.C. § 314
`and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless
`“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.” 35 U.S.C. § 314(a) (2018).
`For the reasons set forth below, upon considering the Petition and the
`Preliminary Response, we do not institute an inter partes review of any of
`the challenged claims of the ’492 patent.
`B. Real Parties in Interest
`Petitioner identifies itself as the real party in interest. Pet. 5.
`Patent Owner identifies itself as the real party in interest. Paper 3, 1
`(Patent Owner’s Mandatory Notices).
`C. Related Matters
`The parties identify various district court proceedings, including
`EcoFactor, Inc. v. Google LLC, 6:20-cv-00075 (W.D. Tex. Jan. 31, 2020)
`(“the District Court proceeding”). Pet. 5; Paper 3, 2.
`D. The ’492 Patent
`The ’492 patent is entitled “System and Method for Using a
`Networked Electronic Device as an Occupancy Sensor for an Energy
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`Patent 8,180,492 B2
`Management System” and is directed generally “to the use of thermostatic
`HVAC and other energy management controls that are connected to a
`computer network” and, more specifically, “to the use of user interactions
`with an interface such as a personal computer or an Internet-enabled
`television as signal related to occupancy to inform an energy management
`system.” Ex. 1001, code (54), 1:19–25.
`According to the ’492 patent, “[h]eating and cooling systems for
`buildings (heating, ventilation and cooling, or HVAC systems) have been
`controlled for decades by thermostats.” Ex. 1001, 1:26–28. Thermostats
`“include[] a means to allow a user to set a desired temperature [(sometimes
`called a setpoint)], a means to sense actual temperature, and a means to
`signal the heating and/or cooling devices to turn on or off in order to try to
`change the actual temperature to equal the desired temperature.” Id. at 1:28–
`33; see also Ex. 1002 ¶ 35 (Shah declaration discussing the term setpoint).
`The ’492 patent discusses some problems associated with typical
`thermostat user interfaces. See Ex. 1001, 1:43–3:15. One problem is the
`thermostat’s “inability to take into account more than two variables: the
`desired temperature set by the user, and the ambient temperature sensed by
`the thermostat.” Id. at 1:43–48. “Users can generally only set one series of
`commands per day, and in order to change one parameter (e.g., to change the
`late-night temperature) the user often has to cycle through several other
`parameters by repeatedly, pressing one or two buttons.” Id. at 1:48–52. As
`a result, the significant theoretical costs savings are never achieved and most
`people never program their thermostats or program them suboptimally. Id.
`at 1:53–61.
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`Patent 8,180,492 B2
`The ’492 patent identifies a second problem associated with typical
`thermostats: “they represent only a small evolutionary step beyond the first,
`purely mechanical thermostats.” Ex. 1001, 1:62–64.
`The ’492 patent describes how the hotel industry has partially
`addressed those issues by adding occupancy detectors to hotel rooms and
`using occupancy status to alter the HVAC setpoint. Ex. 1001, 2:37–60.
`“Adding occupancy detection capability to residential HVAC systems could
`also add considerable value in the form of energy savings without significant
`tradeoff in terms of comfort.” Id. at 2:61–64. According to the ’492 patent,
`“[i]t would thus be desirable to provide a system that could detect occupancy
`without requiring the installation of additional hardware; that could
`accurately detect occupancy regardless of which room in the house is
`occupied, and could optimize energy consumption based upon dynamic and
`individually configurable heuristics.” Id. at 3:16–21.
`Figure 7 of the ’492 patent, not reproduced, “is a flowchart showing
`the steps involved in the operation of one embodiment of the subject
`invention.” Ex. 1001, 4:12–13. More specifically, Figure 7 shows the
`operation of system which has two setpoints—one for when the house is
`occupied and another when the house is unoccupied:
`to
`In step 1302, computer 104 transmits a message
`server 106 via the Internet indicating that there is user activity on
`computer 104. This activity can be in the form of keystrokes,
`cursor movement, input via a television remote control, etc. In
`step 1304 the application queries database 300 to retrieve setting
`information for the HVAC system. In step 1306 the application
`determines whether the current HVAC program is intended to
`apply when the home is occupied or unoccupied. If the HVAC
`settings then in effect are intended to apply for an occupied
`home, then the application terminates for a specified interval. If
`the HVAC settings then in effect are intended to apply when the
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`Patent 8,180,492 B2
`home is unoccupied, then in step 1308 the application will
`retrieve from database 300 the user’s specific preferences for
`how to handle this situation. If the user has previously specified
`(at the time that the program was initially set up or subsequently
`modified) that the user prefers that the system automatically
`change settings under such circumstances, the application then
`proceeds to step 1316, in which it changes the programmed
`setpoint for the thermostat to the setting intended for the house
`when occupied. If the user has previously specified that the
`application should not make such changes without further user
`input, then in step 1310 the application transmits a command to
`computer 104 directing the browser to display a message
`informing the user that the current setting assumes an
`unoccupied house and asking the user in step 1312 to choose
`whether to either keep the current settings or revert to the pre-
`selected setting for an occupied home. If the user selects to retain
`the current setting, then in step 1314 the application will write to
`database 300 the fact that the users has so elected and terminate.
`If the user elects to change the setting, then in step 1316 the
`application transmits the revised setpoint to the thermostat. In
`step 1314 the application writes the updated setting information
`to database 300.
`Id. at 6:53–7:20 (emphasis added). As the italicized language above shows,
`the user can set the system to send a message to the user prior to changing
`the settings from unoccupied to occupied. Id.
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`Patent 8,180,492 B2
`Figure 6 of the ’492 patent is reproduced below.
`
`
`Figure 6 “shows the browser as seen on the display of the computer used as
`part of the subject invention.” Ex. 1001, 4:10–11; see also id. at 6:33–34.
`Figure 6 further shows “a pop-up window 1202 that asks the user if the
`server should change the current setpoint, alter the overall programming of
`the system based upon a new occupancy pattern, etc. The user can respond
`by clicking the cursor on ‘yes’ button 1204 or ‘No’ button 1206.” Id. at
`6:40–49. The ’492 patent further describes that “[e]qui[]valent means of
`signaling activity may be employed with interactive television programming,
`gaming systems, etc.” Id. at 6:49–51.
`
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`Patent 8,180,492 B2
`E. Illustrative Claims
`Claims 1 and 10 are independent claims and claim 1, reproduced
`below, is illustrative of the subject matter of the challenged claims.
`1. A method for varying temperature setpoints for an
`HVAC system comprising:
`storing at least a first HVAC temperature setpoint
`associated with a structure that is deemed to be non-occupied and
`at least a second HVAC temperature setpoint associated with
`said structure deemed to be occupied;
`determining whether one or more networked electronic
`devices inside said structure are in use, wherein said networked
`electronic devices comprise a graphic user interface comprising
`a display, wherein said networked electronic devices receive
`input from one or more users and wherein use of said networked
`electronic devices comprises at least one of cursor movement,
`keystrokes or other user interface actions intended to alter a state
`of one or more of said networked electronic devices by one or
`more users;
`in response to use of said one or more networked devices,
`determining that said HVAC system is set to said first HVAC
`temperature setpoint indicating that said structure is deemed to
`be non occupied;
`determining that said one or more users has previously
`indicated a preference that said user's input be obtained before
`automatically changing said first HVAC temperature setpoint to
`said second HVAC temperature setpoint indicating that said
`structure is deemed to be occupied;
`prompting said one or more users based on said
`determining that said one or more of said user's input should be
`obtained, wherein said prompting sends a message to at least one
`of said networked electronic devices that said first HVAC system
`is set for a non-occupied structure and whether to change said
`first HVAC temperature setpoint to said second HVAC
`temperature setpoint associated with occupancy of said structure;
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`in response to said prompting, receiving input from said
`one or more users to keep said first HVAC temperature setpoint;
`and
`
`keeping said first HVAC temperature setpoint based upon
`said input from said one or more users.
`Ex. 1001, 8:6–43.
`F. Prior Art and Asserted Ground
`Petitioner asserts that claims 1–4, 6–13, and 15–18 would have been
`unpatentable on the following ground:
`Reference(s)/Basis
`Claim(s) Challenged
`35 U.S.C. §
`Chapman,2 Bray3
`1–4, 6–13, and 15–18 1031
`Additionally, Petitioner relies on the testimony of Rajendra Shah
`(Ex. 1002).
`
`ANALYSIS
`A. Legal Standard for Exercising Discretion under Section 314(a)
`Patent Owner argues that we should exercise our discretion and deny
`institution based on a trial in the District Court proceeding scheduled for
`January 31, 2022. See Prelim. Resp.; Ex. 1015, 3 (Modified Scheduling
`Order) (setting the trial for January 31, 2022)
`Under § 314(a), the Director has 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
`
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. §§ 102, 103 that became effective on March 16, 2013. Because
`the ’492 patent issued from an application field prior at March 16, 2013
`(Ex. 1001, code (22), we apply the pre-AIA version.
`2 US 2006/0208099 A1, published Sept. 21, 2006 (Ex. 1004).
`3 US 2006/0262086 A1, published Nov. 23, 2006 (Ex. 1005).
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`committed to the Patent Office’s discretion.”); Harmonic Inc. v. Avid Tech.,
`Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but
`never compelled, to institute an IPR proceeding.”).
`In NHK, the Board denied institution relying, in part, on § 314(a)
`because the parallel district court proceeding was scheduled to finish before
`the Board reached a final decision. NHK Spring Co. v. Intri-Plex Techs.,
`Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential)
`(Decision on Institution). “NHK applies to the situation where the district
`court has set a trial date to occur earlier than the Board’s deadline to issue a
`final written decision in an instituted proceeding.” Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 at 3 (PTAB Mar. 20, 2020) (precedential) (Order)
`(“Fintiv I”). When determining whether to exercise discretion to deny
`institution under NHK due to an earlier trial date, we consider the following
`factors (“Fintiv factors”):
`1. whether the court granted a stay or evidence exists that
`one may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and
`the parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Id. at 6. “These factors relate 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.” Id. In evaluating these factors, we take “a
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`holistic view of whether efficiency and integrity of the system are best
`served by denying or instituting review.” Id. (citing Patent Trial and Appeal
`Board Consolidated Trial Practice Guide November 2019 (“CTPG”), 584).
`We address the Fintiv factors below.
`B. Factual Background
`Patent Owner filed a complaint against Petitioner alleging, inter alia,
`infringement of the ’492 patent on January 31, 2020. Pet. 5; Paper 3, 2. In
`July 2020, the district court issued a scheduling order setting a Markman
`hearing for December 9, 2020, and jury selection on December 6, 2021.
`Ex. 1010 (Scheduling Order); EcoFactor, Inc. v. Google LLC, No. 6:20-cv-
`00075 (W.D. Tex. July 16, 2020) (text order entering proposed scheduling
`order). The district court preliminarily construed the disputed terms of the
`’492 patent. Ex. 1008 (email from the district court ourt providing
`preliminary constructions).
`Petitioner filed a motion to transfer venue (Ex. 1012) and a motion for
`a stay pending transfer (Ex. 1013). The district court granted the motion for
`a stay of all deadlines pending a decision on the motion to transfer; however,
`the stay was lifted when the motion to transfer was denied. See Prelim.
`Resp. 6; Ex. 2011 (Order Denying Motion to Transfer Venue). After the
`stay was lifted, the parties filed a joint motion resetting the due dates,
`including asking for a trial date of January 31, 2022, which was granted.
`Ex. 2002; Ex. 1015.
`
`
`4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`C. Analysis of the Fintiv Factors
`1. Factor 1: Whether a Stay Exists or Is Likely to Be Granted if a
`Proceeding Is Instituted
`Patent Owner argues that Petitioner has not requested a stay and “it is
`unlikely that the district court case will be stayed pending IPR.” Prelim.
`Resp. 5–6. Petitioner argues it “has moved for a transfer of venue to the
`Northern District of California (Ex. 1012), and has moved for a stay until the
`transfer motion is decided. (Ex. 1013).” Pet. 70.
`While Petitioner has asked for a stay, this stay does not appear to be
`related to this proceeding. Moreover, that limited stay was lifted when the
`motion to transfer was denied. See EcoFactor, Inc. v. Google LLC, No. 6-
`20-CV-000765-ADA (W.D. Tex. Mar. 21, 2021) (Order Granting Stay);
`Ex. 2011 (Order Denying Motion to Transfer).
`Because neither party has requested a stay pending this proceeding,
`we determine that Factor 1 is neutral. See Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative)
`(Institution Decision) (holding that “[t]his factor does not weigh for or
`against discretionary denial” when neither party requested a stay).
`2. Factor 2: Proximity of the Court’s Trial Date to the Board’s
`Projected Statutory Deadline
`Petitioner argues “the trial in the case against Google is not scheduled
`until December 2021, is subject to being delayed, and EcoFactor is not even
`required to narrow its asserted claims until September of 2021.” Pet. 70.
`Patent Owner argues that the trial in the District Court proceeding will
`begin in January 2022, (Prelim. Resp. 6–7 (citing Ex. 2002)), which is more
`than six months before a Final Written Decision would be due. Patent
`Owner further argues that “Petition[er]’s argument regarding Factor 2 (Pet.at
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`70) is baseless. For example, Google’s argument that the trial in the district
`court is ‘subject to being delayed’ is a baseless assertion, as the parties
`agreed that trial should proceed in the December 2021 or January 2022 time
`frame.” Prelim. Resp. 7.
`We are not persuaded by Petitioner’s argument. Petitioner’s motion
`to transfer venue—which might have delayed the trial had it been granted—
`has been denied. See Ex. 2011. Moreover, Petitioner’s argument regarding
`the timing of the Petition—which relates to whether Petitioner acted
`expeditiously—is related to Factor 3 and will be addressed below.
`The proximity factor in Fintiv I asks us to evaluate our discretion in
`light of trial dates that have been set in parallel litigations. See Fintiv I, at 3,
`5, 9. Because the trial in the District Court proceeding is scheduled more
`than six months before the due date for the Final Written Decision, even if
`there are some delays, the District Court proceeding is likely to result in a
`trial verdict in advance of our statutory due date. Accordingly, this factor
`weighs in favor of exercising our discretion to deny. Id. at 9.
`3. Factor 3: Investment in the Parallel Proceeding by the Court and
`Parties
`Petitioner argues “EcoFactor is not even required to narrow its
`asserted claims until September of 2021.” Pet. 70 (citing Ex. 1010, 11;5
`Fintiv I at 11). According to Petitioner, “[i]f a petition would be timely in
`
`
`5 Although our rules require a party—in this case Petitioner—to affix a label
`to each page of an exhibit which includes, inter alia, a page number (37
`C.F.R. § 42.63(d)(2)(i)), no such pagination was added to Petitioner’s
`exhibits. Accordingly, our citations are based on counting the pages,
`starting with 1. Petitioner and Petitioner’s counsel are advised to properly
`mark exhibits with future filings with the Board.
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`September 2021 [after Patent Owner narrows its claims], it must be timely
`months before then.” Id.
`Patent Owner argues that “the parties have expended substantial
`resources . . ., involving multiple motions, full claim construction
`proceeding, and discovery.” Prelim. Resp. 8. Patent Owner further argues
`that district court has already construed the claims, fact discovery will end
`on September 1, 2021, and that “the parties and the district court’s
`investment of time and resources in the district court case specifically
`relating to validity issues is also substantial.” Id. at 8–9 (discussing
`preliminary and final invalidity contentions and briefing on a motion for
`leave to amend invalidity contentions); Ex. 1015, 2 (setting the end of fact
`discovery).
`We are not persuaded by Petitioner’s argument. The Board in Fintiv I
`provided guidance on how the timing of various events can impact Factor 3:
`As a matter of petition timing, notwithstanding that a
`defendant has one year to file a petition, it may impose unfair
`costs to a patent owner if the petitioner, faced with the prospect
`of a looming trial date, waits until the district court trial has
`progressed significantly before filing a petition at the Office.
`Fintiv I at 11 (footnote omitted). However, “it is often reasonable for a
`petitioner to wait to file its petition until it learns which claims are being
`asserted against it in the parallel proceeding.” Id. Accordingly, a petitioner
`should act expeditiously once the patent owner has identified the claims
`being asserted against it so that the petitioner can file a petition challenging
`all asserted claims—if it chooses to do so.
`In this case, Petitioner waited almost the entire year before filing the
`Petition. Compare Paper 3, 2 (Complaint filed January 31, 2020), with Pet.
`(Petition filed January 30, 2021). Moreover, Patent Owner was required to
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`serve its preliminary infringement contentions—including asserted claims—
`no later than 7 days before the June 26, 2020, case management conference.
`Ex. 1010, 1, 6. Although the scheduling order allowed Patent Owner to limit
`the number of claims presented at trial at a later date, Petitioner knew which
`patent claims were being asserted by June 2020—seven months before the
`Petition was filed. See id. at 1 (requiring Patent Owner to file preliminary
`infringement contentions identifying asserted claims and providing
`infringement contentions seven days before the case management
`conference—June 19, 2020). In other words, although the Patent Owner
`might limit the number of claims presented at trial, Petitioner knew, by mid-
`June 2020, all of the claims which could be asserted and would have been
`able to file a single petition challenging all of those claims. Yet, Petitioner
`waited over seven months to file the Petition.
`Petitioner’s behavior is also highlighted by the amount of time that
`passed between when Petitioner served its initial invalidity contention in
`August 2020 and when Petitioner filed the Petition at the end of January
`2021—a period of over five months. Compare Ex. 1010, 11 (invalidity
`contentions due August 17, 2020), with Pet. (filed January 30, 2021).
`Petitioner has not explained why it could not file the Petition
`contemporaneously with serving its invalidity contentions. Therefore,
`contrary to Petitioner’s argument, Petitioner did not act in an expeditious
`manner in filing the Petition.
`We agree with Patent Owner that the district court and the parties
`have invested substantial resources during the District Court proceedings.
`The parties fully briefed claim construction issues and the district court held
`a Markman hearing and issued preliminary claim constructions. See
`Ex. 1008; Ex. 1009. Additionally, fact discovery—including any fact
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`discovery related to issues of invalidity—will be completed soon after this
`Decision issues. See Ex. 2002, 3. Moreover, the parties have briefed a
`disputed request to amend the invalidity contentions.
`Accordingly, this factor weighs in favor of exercising our discretion.
`4. Factor 4: Overlap Between Issues Raised in the Petition and in
`the Parallel Proceeding
`Petitioner stipulates “that, in the event the petition is instituted, it will
`not present the combination of Chapman and Bray under 35 U.S.C. §103
`before the district court.” Pet. 70. Additionally, ecobee and Vivint, who are
`also accused of infringing the ’492 patent, made similar stipulations.
`Ex. 1016 (ecobee stipulation); Ex. 1017 (Vivint stipulation); see also Paper
`3, 2 (identifying ecobee and Vivint as defendants in patent infringement
`“proceedings that may affect, or be affected by, a decision in this
`proceeding.”).
`Patent Owner argues “[t]his factor weighs against institution because
`the same claims and claim construction standard are at issue in both
`proceedings, and there is substantial overlap in invalidity theories and prior
`art.” Prelim. Resp. 10. More specifically, Patent Owner argues Petitioner
`argues in the District Court proceeding that the challenged claims are invalid
`based on U.S. Patent No. 7,469,550—which is the patent that issued from
`Chapman—and Bray. Id. at 10–11 (citing Exs. 2003–2010). Patent Owner
`further argues that “it is unclear whether Google’s ‘stipulation’ provides any
`additional concession on top of the estoppel that would apply under the
`law.” Id. at 11–12 (citing 35 U.S.C. § 315(e)).
`Petitioner’s stipulation is similar to the one made by the petitioner in
`Sand Revolution. See Sand Revolution II, LLC v. Cont’l Intermodal Grp. –
`Trucking LLC, IPR2019-01393, Paper 24 at 11–12 (PTAB June 16, 2020)
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`(Rehearing Decision) (informative). As in that case, Petitioner’s stipulation
`addresses the not insignificant overlap in issues between this proceeding and
`that in the district court. We agree with the reasoning in Sand Revolution
`and determine that the stipulation similarly “mitigates to some degree the
`concerns of duplicative efforts between the district court and the Board, as
`well as concerns of potentially conflicting decisions.” Id. at 12.
`Additionally, as we held in an earlier case, “the stipulations by ecobee and
`Vivint further mitigate the concern against duplicative efforts in additional
`district court proceedings.” Google LLC v. Eccofactor, Inc., IPR2021-
`00054, Paper 9 at 12–13 (PTAB Apr. 19, 2021) (Institution Decision) (citing
`MG FreeSites Ltd. v. Scorpcast, LLC, IPR2020-01697, Paper 11 at 25
`(PTAB Apr. 19, 2021) (Institution Decision)).
`We are not persuaded by Patent Owner’s argument that Petitioner’s
`stipulation does not provide any concession beyond what is provided by
`section 315(e). The issue is not whether Petitioner’s stipulation provides
`Patent Owner with something beyond the estoppel of section 315(e);
`properly framed, the issue is whether the stipulation is sufficient to eliminate
`duplicative work and the risk of inconsistent decisions and make “inter
`partes review . . . a ‘true alternative’ to the district court proceeding.”
`Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 19
`(PTAB Dec. 1, 2020) (Institution Decision) (precedential); see also Sand
`Revolution, Paper 24 at 11–12. As discussed above, it does to a limited
`extent.
`Accordingly, this factor weighs marginally against exercising our
`discretion.
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`5. Factor 5: Whether the Petitioner and the Defendant in the
`Parallel Proceeding Are the Same Party
`Because Petitioner is the defendant in the district court action, this
`factor somewhat favors exercising our discretion. Fintiv I, at 13–14.
`6. Factor 6: Other Circumstances that Impact the Board’s Exercise
`of Discretion, Including the Merits
`Petitioner argues “the merits of the petition are strong.” Pet. 70.
`Patent Owner argues that declining to exercise our discretion in cases
`such as this where the final written decision would be due after the district
`court trial would be “procedurally unfair to Patent Owner.” Prelim. Resp.
`12. Specifically, Patent Owner argues that based on the timing, it will lose
`the benefit of the estoppel: “For example, if the claims are confirmed in
`FWD, Petitioner would be bound by IPR estoppel and not be able to assert
`any invalidity grounds it raised or could have raised. But having a district
`court trial long before the IPR FWD would eliminate that benefit.” Id.
`We are not persuaded that Patent Owner’s argument regarding the
`estoppel is relevant to Fintiv Factor 6. Patent Owner’s argument about
`estoppel applies to every proceeding in which the trial occurs prior to the
`issuance of the final written decision. We already considered the timing of
`the District Court proceeding trial compared to the expected date of the Final
`Written Decision when considering Fintiv Factor 2. Accordingly, we do not
`consider it again when addressing Fintiv Factor 6. See Google, IPR2021-
`00054, Paper 9 at 13–14.
`Although we need not undertake a full merits analysis when
`evaluating Fintiv Factor 6, we consider the strengths and weaknesses of the
`merits, where stronger merits may favor institution and weaker merits may
`favor exercising discretion to deny institution. Fintiv I at 15–16. Based on
`
`17
`
`
`
`IPR2021-00488
`Patent 8,180,492 B2
`our review of the arguments and evidence presented on the preliminary
`record, we find that the merits do not tip the scale either for or against
`exercising our discretion to deny institution.
`Accordingly, we find Factor 6 to be neutral.
`7. Balancing the Fintiv Factors
`We have considered the circumstances and facts before us in view of
`the Fintiv factors. Because our analysis is fact driven, no single factor is
`determinative of whether we exercise our discretion to deny institution under
`§ 314(a). Considering the Fintiv factors as part of a holistic analysis, we are
`persuaded that the interests of the efficiency and integrity of the system
`would be best served by invoking our authority under 35 U.S.C. § 314(a) to
`deny institution.
`
`CONCLUSION
`For the foregoing reasons, we exercise our discretion to deny inter
`partes review in this proceeding based on 35 U.S.C. § 314(a).
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, Petitioner’s request for inter partes review is denied
`and no inter partes review is instituted.
`
`18
`
`
`
`IPR2021-00488
`Patent 8,180,492 B2
`FOR PETITIONER:
`
`Matthew A. Smith
`Elizabeth Laughton
`SMITH BALUCH LLP
`smith@smithbaluch.com
`laughton@smithbaluch.com
`
`
`FOR PATENT OWNER:
`
`Philip X. Wang
`Reza Mirzaie
`Kristopher Davis
`RUSSS AUGUST & KABAT
`rak_ecofactor@raklaw.com
`pwang@raklaw.com
`rmirzaie@raklaw.com
`kdavis@raklaw.com
`
`
`
`19
`
`
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