`Case No. IPR 2025-00877
`U.S. Patent No. 11,126,853 B2
`Request for Discretionary Denial
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`GOOGLE LLC
`Petitioner,
`v.
`CELLULAR SOUTH, INC.
`Patent Owner.
`____________
`Case No. IPR2025-00877
`U.S. Patent No. 11,126,853
`____________
`PATENT OWNER’S REQUEST FOR
`DISCRETIONARY DENIAL OF INSTITUTION
`
`
`
`
`
`
`
`
`Case No. IPR 2025-00877
`U.S. Patent No. 11,126,853 B2
`Request for Discretionary Denial
`
` Page i
`TABLE OF CONTENTS
`I. INTRODUCTION ........................................................................................ 1
`II. BACKGROUND .......................................................................................... 2
`A. THE TECHNOLOGY AND THE PATENTS ...................................................... 2
`B. THE PARALLEL DISTRICT COURT LITIGATION ........................................... 6
`III. DISCRETIONARY DENIAL IS WARRANTED......................................... 7
`A. FINTIV FACTORS FAVOR DISCRETIONARY DENIAL .................................... 8
`1. Fintiv Factor 1 – Neither party has sought a stay........................... 8
`2. Fintiv Factor 2 – The district court trial date is only three
`months after the Board’s projected statutory deadline ................... 9
`3. Fintiv Factor 3 – The district court and the parties have
`heavily invested time and resources in the parallel proceeding ... 11
`4. Fintiv Factor 4 – The IPR is not a “true alternative” to the
`parallel proceeding ...................................................................... 13
`5. Fintiv Factor 5 – The Petitioner is also the defendant in the
`parallel proceeding ...................................................................... 16
`6. Fintiv Factor 6 – Other considerations favor denial ..................... 17
`IV. CONCLUSION .......................................................................................... 25
`V. CERTIFICATE OF SERVICE.................................................................... 27
`VI. CERTIFICATE OF COMPLIANCE WITH 37 C.F.R. § 42.24 ................... 28
`
`
`
`
`
`
`
`
`
`Case No. IPR 2025-00877
`U.S. Patent No. 11,126,853 B2
`Request for Discretionary Denial
`
` Page ii
`TABLE OF AUTHORITIES
` Page(s)
`Cases
`Apple, Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ................................. passim
`Canadian Solar Inc. v. Maxeon Solar Pte. Ltd.,
`IPR2024-01194, 2025 WL 290559 (P.T.A.B. Jan. 24, 2025) ............................. 9
`Cuozzo Speed Techs., LLC v. Lee,
`579 U.S. 261 (2016) ........................................................................................... 7
`Dabico Airport Sols. Inc. v. Axa Power Aps,
`IPR2025-00408, 2025 WL 1710857 (P.T.A.B. June 18, 2025) ........................ 18
`Formycon Ag v. Regeneron Pharms., Inc.,
`IPR2025-00233, 2025 WL 1558889 (P.T.A.B. June 2, 2025)
`......................................................................................................... 9, 12, 13, 14
`Hanwha Sols. Corp. v. Maxeon Solar Pte. Ltd.,
`IPR2024-01199, 2025 WL 634837 (P.T.A.B. Feb. 26, 2025)........................... 16
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) .......................................................................... 7
`Innoscience Am., Inc. v. Infineon Techs. Americas Corp.,
`IPR2025-00010, 2025 WL 1421087 (P.T.A.B. May 16, 2025) .................. 13, 21
`Intel Corp. v. VLSI Tech. LLC,
`IPR2019-01192, Paper 15 (P.T.A.B. Jan. 9, 2020) ............................................. 7
`IRhythm Techs., Inc. v. Welch Allyn, Inc.,
`IPR2025-00363, 2025 WL 1605274 (P.T.A.B. June 6, 2025) .............. 10, 19, 20
`Kahoot! AS v. Interstellar Inc.,
`IPR2025-00696, Paper 12 (P.T.A.B. July 31, 2025) ......................................... 10
`Kinetic Techs., Inc., Petitioner, v. Skyworks Sols., Inc.,
`IPR2014-00529, 2014 WL 4787238 (P.T.A.B. Sept. 23, 2014)........................ 23
`
`
`
`
`
`
`
`
`Case No. IPR 2025-00877
`U.S. Patent No. 11,126,853 B2
`Request for Discretionary Denial
`
` Page iii
`Murata Manufacturing Co. v. Georgia Tech Research Corp.,
`IPR2025-00383, IPR2025-00384, Paper 13 (P.T.A.B. July 29,
`2025) ............................................................................................................... 19
`NHK Spring Co. v. Intri-Plex Techs. Inc.,
`IPR2018-00752, Paper 8 (P.T.A.B. Sept. 12, 2018) ........................................... 7
`Nokia of Am. Corp. v. Wireless All. LLC,
`IPR2024-00619, 2024 WL 4183018 (P.T.A.B. Sept. 13, 2024).................... 9, 16
`Phison Electronics Corporation v. Vervain, LLC,
`IPR2025-00212, 2025 WL 1518096 (P.T.A.B. May 28, 2025) .......................... 8
`Samsung Bioepis Co., Ltd. v. Regeneron Pharms., Inc.,
`IPR2025-00176, 2025 WL 1561086 (P.T.A.B. June 2, 2025) .......................... 11
`Samsung Elecs. Co., Ltd. v. Secure Wi-Fi LLC,
`IPR2024-01367, 2025 WL 899424 (P.T.A.B. Mar. 24, 2025) .......................... 14
`SAP America, Inc. v. Cyandia, Inc.,
`IPR2024-01496, Paper 13 (P.T.A.B. April 7, 2025) ......................................... 17
`Smartsky Networks LLC v. Gogo Business Aviation LLC,
`IPR 2025-00672, Paper 10 (P.T.A.B. July 31, 2025) .................................. 10, 20
`In re Stepan Co.,
`868 F.3d 1342 (Fed. Cir. 2017) ........................................................................ 25
`US Venture Inc v. Sunoco Partners Marketing & Terminals LP,
`IPR2020-00728, Paper 10 (Oct. 1, 2020) ......................................................... 12
`Xerox Corp. v. Bytemark, Inc.,
`IPR2022-00624, 2022 WL 3648989 (P.T.A.B. Aug. 24, 2022) ........................ 23
`
`
`
`
`
`
`
`
`
`
`Case No. IPR 2025-00877
`U.S. Patent No. 11,126,853 B2
`Request for Discretionary Denial
`
` Page iv
`EXHIBIT LIST
`Exhibit
`No. Description
`2001 U.S. Patent No. 9,940,972
`2002 U.S. Patent No. 10,218,954
`2003 U.S. Patent No. 11,126,853
`2004 Article, Vū Digital Wins Coveted TMC Communications Solutions
`2015 Product of the Year Award
`2005 Article, NAB Show Unveils Final 10 Participants Selected for
`SPROCKIT 2015
`2006 Notice of References Cited in U.S. Patent Application No.
`15/444,054 (Oct. 30, 2019)
`2007 Information Disclosure Statement by Applicant in U.S. Patent
`Application No. 17/423,623 (July 20, 2021)
`2008 CSI’s Complaint for Patent Infringement against Google in
`Cellular South, Inc. v. Google, LLC, Case No. 6:24-cv-00245
`(W.D. Tex. May 9, 2024)
`2009 Proof of Service of Complaint
`2010 Joint Case Management and Pretrial Order as Modified in Cellular
`South, Inc. v. Google, LLC, Case No. 4:25-cv-01487-YGR (N.D.
`Cal.) Dkt. No. 102, August 5, 2025
`2011 Transcript of Conference held July 7, 2025 in Cellular South, Inc.
`v. Google, LLC, Case No. 4:25-cv-01487-YGR (N.D. Cal.) Dkt.
`No. 100, July 21, 2025
`
`
`
`
`
`
`
`
`Case No. IPR 2025-00877
`U.S. Patent No. 11,126,853 B2
`Request for Discretionary Denial
`
` Page v
`Exhibit
`No. Description
`2012 Preliminary Infringement Contentions in Cellular South, Inc. v.
`Google, LLC, Case No. 6:24-cv-00245 (W.D. Tex.) (served Dec.
`13, 2024)
`2013 Comparison of portions of Paper 2 with Ex. 1002
`
`
`
`
`
`
`
`
`
`
`Case No. IPR 2025-00877
`U.S. Patent No. 11,126,853 B2
`Request for Discretionary Denial
`
` Page 1
`
`I. INTRODUCTION
`Pursuant to the “Interim Processes for PTAB Workload Management”
`(“Workload Memo”) issued March 26, 2025 ,1 Patent Owner Cellular South , Inc.
`(“CSI” or “Patent Owner”) respectfully requests that the Director exercise discretion
`and deny institution of Google LLC’s (“Google”) inter partes review petition. See
`35 U.S.C. § 314(a).
`The Workload Memo states that —in addition to the discretionary
`considerations set forth in existing Board precedent (e.g., Fintiv ) and the
`Consolidated Trial Practice Guide (Nov. 2019)—the Director will take into account
`“all relevant considerations,” including but not limited to “[t]he strength of the
`unpatentability challenge, ” “[t]he extent of the petitioner’s reliance on expert
`testimony,” “ settled expectations of the parties ” and the ability of the PTAB to
`comply with its statutory deadlines. Workload Mem o at 2-3. Given the
`circumstances presented here, discretionary denial is warranted based on these and
`other considerations.
`
`1 https://www.uspto.gov/sites/default/files/documents/InterimProcesses-
`PTABWorkloadMgmt-20250326.pdf.
`
`
`
`
`
`
`
`
`Case No. IPR 2025-00877
`U.S. Patent No. 11,126,853 B2
`Request for Discretionary Denial
`
`Page 2
`Here, Petitioner and Patent Owner are already involved in a litigation in the
`Northern District of California. That case , which involves the same patents and
`same claims as in this petition and others filed by Petitioner , has been pending for
`over fifteen months. See IPR2025-00875; IPR2025-00876; IPR2025-00877. Yet
`Petitioner waited until the very last day to file its petition. In particular, denial is
`warranted here because Petitioner has been aware of Patent Owner’s patents and
`Patent’s Owner’s techno logy and products for nearly a decade. Moreover, the
`petition is weak on the merits. The petition relies solely on obviousness grounds,
`which each rely heavily on conclusory expert testimony that merely parrots the
`petition. Accordingly, the Petition is not a good use of the Board’s time and
`resources, and discretionary denial is warranted.
`II. BACKGROUND
`A. The Technology and the Patents
`Patent Owner is a diversified telecommunications and technology company
`that focuses on delivering connectivity and technology solutions to advance the field
`and its community. While Patent Owner is a relatively small company compared to
`its competitors in the telecommunications industry, it has always been an innovator.
`For example, Patent Owner has worked to diversify its product offerings to remain
`innovative and competitive in the telecommunications and technology marketplace.
`
`
`
`
`
`
`
`
`Case No. IPR 2025-00877
`U.S. Patent No. 11,126,853 B2
`Request for Discretionary Denial
`
`Page 3
`Through one of these efforts, Patent Owner, through its subsidiary Vu Digital,
`created and offered “Video-to-Data” (or “V2D”), a cloud-based digital profiling and
`analytics system that could scan and turn video into searchable data faster than the
`real-time viewing of the video by using multiple servers that run simultaneously and
`in parallel.
`V2D breaks down a video frame -by-frame and identifies the objects —for
`example, text, audio, images, faces, locations, logos—within each frame. V2D then
`creates a chronological record of all the objects identified within the video. V2D
`was a transformativ e product that made video content as easy to search as text,
`thereby providing users with unprecedented video classification and clustering
`capabilities, as well as significantly enhanced search engine indexing, content
`personalization, and targeted advertising capabilities.
`The applications for V2D are far reaching. V2D could be an incredibly useful
`technology for video data processing and content personalization. For example,
`V2D could be used by law enforcement to process body camera footage which was
`becoming more widely adopted.
`Patent Owner launched its V2D product in May 2015. Mere months later ,
`Patent Owner’s V2D product was recognized by TCM—a global integrated media
`conglomerate and leading source of news and information for the communications
`
`
`
`
`
`
`
`
`Case No. IPR 2025-00877
`U.S. Patent No. 11,126,853 B2
`Request for Discretionary Denial
`
`Page 4
`and technology industries worldwide—as the “best-of-the-best technology solutions
`available on the market today.” V2D received TCM’s coveted Communications
`Solutions 2015 Product of the Year Award that recognizes exceptional voice, data,
`and video communications products and services. (Ex. 2004).
`Patent Owner was also selected in 2015 to be part of the National Association
`of Broadcasters’ year-long SPROCKIT accelerator program for innovative startups
`in media and entertainment. (Ex. 2005). SPROCKIT is a global innovation platform
`created to help large media, entertainment, and technology companies meet
`emerging tech start -ups to fast -track investment, acquisition, and partnerships
`between the two groups on new products and services. Petitioner is a corporate
`partner of SPROCKIT. Id.
`SPROCKIT Sync is an invitation-only event put on three times a year by
`SPROCKIT that includes a series of private meetings between selected startups and
`corporate players in the media and entertainment industry. Following the launch of
`its V2D product, Patent Owner was invited to attend the SPROCKIT Sync
`conference that was held on June 18, 2015 at Google Tech Corners in Sunnyvale,
`California. There, Patent Owner presented its V2D technology at the conference.
`Google was one of the corporate partners for this event.
`
`
`
`
`
`
`
`
`Case No. IPR 2025-00877
`U.S. Patent No. 11,126,853 B2
`Request for Discretionary Denial
`
`Page 5
`Patent Owner protect s its intellectual property. As is relevant here, Patent
`Owner is the assignee of three patents related to its V2D technology: U.S. Patent
`Nos. 9,940,972 (“the ’972 patent”) (Ex. 2001), 10,218,954 (“the ’954 patent”) (Ex.
`2002), and 11,126,853 (“the ’853 patent”) (Ex. 2003), each entitled “Video to data.”
`The ’972 patent and ’954 patent are related patents, with the ’954 patent being a
`continuation of the ’972 patent. The ’853 patent, while not related, shares some
`inventors and similar technology with the ’972 patent and the ’954 patent. At a high
`level, these patents are directed to an improvement in the functionality of machine
`learned video recognition and classification systems, particularly with regard to
`specific techniques for improving the accuracy of predictions made using image,
`audio, text, and other video data.
`Beyond being aware of Patent Owner’s technology at least from its
`involvement with SPROCKIT, Petitioner is also aware of Patent Owner’s patents,
`including these patents. On October 30, 2019, U.S. Patent No. 10,204,274 (parent
`of the ’853 patent) was one of six references cited by the examiner in Petitioner’s
`U.S. Patent Application No. 15/444,054. (Ex. 2006). And on July 20, 2021, the
`’954 patent (child to the ’972 patent) was one of seven references cited in an
`Information Disclosure Statement filed by Petitioner in U.S. Patent Application No.
`17/423,623. (Ex. 2007).
`
`
`
`
`
`
`
`
`Case No. IPR 2025-00877
`U.S. Patent No. 11,126,853 B2
`Request for Discretionary Denial
`
`Page 6
`B. The Parallel District Court Litigation
`On May 9, 2024, Patent Owner filed a complain t against Petitioner for
`infringement of the ’972 patent, the ’954 patent, and the ’853 patent in the Western
`District of Texas. (Ex. 2008, Ex. 2009). Petitioner moved to transfer the case to the
`Northern District of California. On February 12, 2025, the court in the Western
`District of Texas granted Google’s Motion to Transfer Venue to the Northern
`District of California.
`Since the initial filing , Patent Owner has provided its infringement
`contentions, the parties have fully briefed motions to dismiss 2 and transfer venue.
`Since moving to the Northern District of California, case deadlines have been set,
`with trial scheduled for March 15, 2027. (Ex. 2010). Under that schedule, by the
`time the Institution Decision is due, the parties will be deep into fact discovery,
`having exchanged source code, amended infringement contentions, and invalidity
`contentions, as well as beginning the claim construction process. Id. Petitioner has
`not filed a motion to stay the district court litigation.
`
`2 Google’s Motion to Dismiss was mooted by the later venue transfer and Google
`did not refile its motion in the Northern District of California.
`
`
`
`
`
`
`
`
`Case No. IPR 2025-00877
`U.S. Patent No. 11,126,853 B2
`Request for Discretionary Denial
`
`Page 7
`On May 10, 2025—the last possible day allowed under § 315(b)—Petitioner
`filed this petition. Petitioner also filed IPRs challenging the ’972 patent and the ’954
`patent. See IPR2025-00875; IPR2025-00876.
`III. Discretionary Denial Is Warranted
`“[T]he PTO is permitted, but never compelled, to institute an IPR
`proceeding.” Harmonic Inc. v. Avid Tech., Inc. , 815 F.3d 1356, 1367 (Fed. Cir.
`2016); 35 U.S.C. § 314(a) (“[t]he Director may not authorize an inter partes to be
`instituted unless . . .”); Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 273 (2016)
`(“[T]he agency’s decision to deny a petition is a matter committed to the Patent
`Office’s discretion.”). The Director may deny institution of an IPR when there is a
`parallel district court proceeding under § 314(a). See, e.g., Apple, Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 at 3 (P .T.A.B. Mar. 20, 2020) (“ Fintiv”) (precedential,
`designated May 5, 2020); NHK Spring Co. v. Intri-Plex Techs. Inc., IPR2018-00752,
`Paper 8 (P .T.A.B. Sept. 12, 2018) (precedential, designated May 7, 2019); Intel
`Corp. v. VLSI Tech. LLC , IPR2019-01192, Paper 15 at 11 (P .T.A.B. Jan. 9, 2020)
`(“When considering the impact of parallel litigation in a decision to institute, the
`Board seeks, among other things, to minimize the duplication of work by two
`tribunals to resolve the same issue.”).
`
`
`
`
`
`
`
`
`Case No. IPR 2025-00877
`U.S. Patent No. 11,126,853 B2
`Request for Discretionary Denial
`
`Page 8
`A. Fintiv Factors Favor Discretionary Denial
`The Director frequently evaluates the following six Fintiv factors in
`determining whether to exercise their discretion to deny institution:
`1. whether the court granted a stay or evidence exists that one may be
`granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected statutory
`deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the parties;
`4. overlap between issues raised in the petition and in the parallel
`proceeding;
`5. whether the petitioner and the defendant in the parallel proceeding are
`the same party; and
`6. other circumstances that impact the Board’s exercise of discretion,
`including the merits.
`Fintiv, Paper 11 at 5-6. As discussed below, these factors favor discretionary
`denial when weighed together.
`1. Fintiv Factor 1 – Neither party has sought a stay
`No stay has been granted and neither party has asked for one. Further, Patent
`Owner does not intend to move for a stay. This factor is therefore neutral. See
`Formycon Ag v. Regeneron Pharms., Inc. , IPR2025-00233, 2025 WL 1558889, at
`*5 (P.T.A.B. June 2, 2025) (“No stay has been granted and neither party has asked
`for one. Accordingly, this factor is neutral.”).
`
`
`
`
`
`
`
`
`Case No. IPR 2025-00877
`U.S. Patent No. 11,126,853 B2
`Request for Discretionary Denial
`
`Page 9
`Petitioner may argue that the district court is likely to grant a stay. However,
`as no such motion has even been filed, speculation is not warranted. See, e.g., Phison
`Electronics Corporation v. Vervain, LLC, IPR2025-00212, 2025 WL 1518096, at *4
`(P.T.A.B. May 28, 2025) (“We decline to speculate on whether the district court
`would enter a stay if inter partes review were granted in this case.”); Canadian Solar
`Inc. v. Maxeon Solar Pte. Ltd., IPR2024-01194, 2025 WL 290559, at *12 (P.T.A.B.
`Jan. 24, 2025) ( “Each party offers data regarding the number of stays granted and
`denied by Judge Gilstrap in support of their speculation about how Judge Gilstrap
`would rule on a motion to stay should one be filed . . . . We, however, decline to
`speculate on how Judge Gilstrap may rule on a future motion for a stay should one
`be filed.”); Nokia of Am. Corp. v. Wireless All. LLC , IPR2024-00619, 2024 WL
`4183018, at *4 (P.T.A.B. Sept. 13, 2024) (“Although Patent Owner is likely correct
`that no stay would be granted even if requested at this late date, we decline to
`speculate as to whether the district court would grant a stay if requested.”). This is
`particularly so here, where the district court has expressed that the situation could be
`“complicated” if not all of the IPRs are instituted. (Ex. 2011 at 4:17-20).
`2. Fintiv Factor 2 – The district court trial date is only three
`months after the Board’s projected statutory deadline
`Trial in the district court case is set for March 15, 2027. (Ex. 2010). The
`projected deadline for the Board to issue its final written decision is December 16,
`
`
`
`
`
`
`
`
`Case No. IPR 2025-00877
`U.S. Patent No. 11,126,853 B2
`Request for Discretionary Denial
`
`Page 10
`2026, which is only three months before the trial date. The proximity of these dates
`renders this factor neutral. Fintiv , Paper 11 at 9 ( “If the court’s trial date is at or
`around the same time as the projected statutory deadline or even significantly after
`the projected statutory deadline, the decision whether to institute will likely
`implicate other factors.”).
`Moreover, this factor is not dispositive, and the Director regularly exercises
`discretion under 35 U.S.C. § 314(a) to deny petitions even where trial is set for or is
`likely after the final written decision. See, e.g., IRhythm Techs., Inc. v. Welch Allyn,
`Inc., IPR2025 -00363, 2025 WL 1605274, at *1 (P .T.A.B. June 6, 2025)
`(“Petitioner’s awareness of Patent Owner ’s applications and failure to seek early
`review of the patents favors denial and outweighs the above -discussed
`considerations.”); Kahoot! AS v. Interstellar Inc. , IPR2025-00696, Paper 12 at 2
`(P.T.A.B. July 31, 2025) (finding that “ Patent Owner’s strong settled expectations
`tip the balance in favor of discretionary denial” even where the parallel district court
`proceeding involving Petitioner and Patent Owner has been stayed”); Smartsky
`Networks LLC v. Gogo Business Aviation LLC , IPR 2025 -00672, Paper 10 at 2
`(P.T.A.B. July 31, 2025) (exercising discretionary denial where the final written
`decision was due nearly five months before the district court’s schedule trial date
`because “the Office is disinclined to disturb the strong settled expectations of Patent
`
`
`
`
`
`
`
`
`Case No. IPR 2025-00877
`U.S. Patent No. 11,126,853 B2
`Request for Discretionary Denial
`
`Page 11
`Owner”); Samsung Bioepis Co., Ltd. v. Regeneron Pharms., Inc. , IPR2025-00176,
`2025 WL 1561086, at *10 (P.T.A.B. June 2, 2025).
`3. Fintiv Factor 3 – The district court and the parties have
`heavily invested time and resources in the parallel
`proceeding
`This factor requires considering “the amount and type of work already
`completed in the parallel litigation by the court and the parties at the time of the
`institution decision.” Fintiv , Paper 11 at 9. Although the Northern District of
`California litigation is just beginning, the parties were actively litigating in the
`Western District of Texas before Google’s Motion to Transfer Venue was granted.
`Specifically, the parties had fully briefed Google’s Motion to Dismiss, served initial
`disclosures, and CSI had served detailed infringement contentions. And by the time
`the Institution Decision is due, the parties will be deep into fact discovery, having
`exchanged source code, discovery, amended infringement contentions, and
`invalidity contentions, as well as beginning the claim construction process. (Ex.
`2010).
`Further, this factor takes into account whether the Petitioner “filed the petition
`expeditiously, such as promptly after becoming aware of the claims being asserted.”
`US Venture Inc v. Sunoco Partners Marketing & Terminals LP , IPR2020-00728,
`Paper 10 at *10 (Oct. 1, 2020). “If, however, the evidence shows that the petitioner
`
`
`
`
`
`
`
`
`Case No. IPR 2025-00877
`U.S. Patent No. 11,126,853 B2
`Request for Discretionary Denial
`
`Page 12
`did not file the petition expeditiously,” this has favored denial of institution. Id .
`Here, Petitioner did not file its petition expeditiously. Instead of filing the petition
`once it was aware of Patent Owner’s claims, Petitioner waited until the very last day
`to file its petition. Compare Ex. 2009 (complaint served May 10, 2024) with Paper
`2 (petition filed May 10, 2025). And Petitioner cannot justify its delay, waiting until
`May 2025 to file the petition. Petitioner has known of or should have known of the
`’853 patent since at least October 2019 , when the examiner cited the parent patent
`to the ’853 patent during prosecution of one of Petitioner’s patents . (See Section
`III.A.6.a below). Further, Petitioner has known of the specific asserted claims since
`at least December 13, 2024, when Patent Owner served its infringement contentions
`in the district court case. (Ex. 2012 ). This factor therefore favors denial of
`institution. See US Venture Inc v. Sunoco Partners Marketing & Terminals LP ,
`IPR2020-00728, Paper 10 at *10 -11 (Oct. 1, 2020) (finding that “the evidence
`showing that Petitioner did not file the petition expeditiously” favors denial where
`Petitioner waited approximately a year to file petition); Formycon Ag v. Regeneron
`Pharms., Inc., IPR2025 -00233, 2025 WL 1558889, at *7 (P.T.A.B. June 2, 2025)
`(“Petitioner was aware of the particular claims being asserted against it as early as
`February 2024 and could have filed a Petition challenging them far earlier than it
`did. Petitioner’s delay in doing so is another fact in favor of denial.”).
`
`
`
`
`
`
`
`
`Case No. IPR 2025-00877
`U.S. Patent No. 11,126,853 B2
`Request for Discretionary Denial
`
`Page 13
`4. Fintiv Factor 4 – The IPR is not a “true alternative” to the
`parallel proceeding
`“This factor evaluates ‘concerns of inefficiency and the possibility of
`conflicting decisions’ when substantially the same claims, challenges, arguments,
`and evidence are submitted in both the inter partes review proceeding and the parallel
`proceeding.” Innoscience Am., Inc. v. Infineon Techs. Americas Corp. , IPR2025-
`00010, 2025 WL 1421087, at *6 (P.T.A.B. May 16, 2025).
`This factor weighs in favor of discretionary denial. Here, there is nearly
`complete overlap of claims. Petitioner has challenged every claim of the ’853 patent,
`and Patent Owner has asserted every claim of the ’853 patent, except claim 7, in its
`infringement contentions .3 (Compare Ex. 2012 with Paper 2 ). Claim 7 is a
`
`3 While Petitioner has not yet served invalidity contentions, it is expected that
`Petitioner will rely heavily on the same references from the IPR in the district
`court. To the extent that Petitioner chooses not to rely heavily on such references
`in the district court, it is clear that Petitioner would be engaging in gamesmanship
`and such act would render Petitioner’s stipulation toothless. Moreover,
`Petitioner’s assertion that it “reserves the right to pursue any grounds of invalidity,
`including but not limited to the grounds raised or that reasonably could have been
`
`
`
`
`
`
`
`
`
`Case No. IPR 2025-00877
`U.S. Patent No. 11,126,853 B2
`Request for Discretionary Denial
`
`Page 14
`dependent claim (specifically, claim 7 depends from claim 6, which depends from
`claim 5, which depends from claim 4, which depends from claim 3, which depends
`from claim 1). This sole dependent claim, which depends from several claims, does
`not change the analysis. Samsung Elecs. Co., Ltd. v. Secure Wi -Fi LLC, IPR2024-
`01367, 2025 WL 899424, at *6 (P.T.A.B. Mar. 24, 2025) (“we agree with Patent
`Owner that, in this circumstance, challenging several dependent claims does not
`mitigate any of the concerns that guide our analysis.”); Formycon Ag v. Regeneron
`Pharms., Inc., IPR2025-00233, 2025 WL 1558889, at *9 (P.T.A.B. June 2, 2025)
`(“Finally, while the Petition challenges a broader set of claims than those asserted in
`the Formycon case, that difference does not materially affect the overlap. The claims
`challenged in the Petition collectively raise the same disputed and overlapping issues
`identified above.”).
`Moreover, the petitions related to the district court litigation rely on
`overlapping references. For example, IPR 2025-00875 and IPR2025-00876, which
`deal with related patents, both rely heavily on the Fontana and Lau references.
`
`raised in this IPR, in the related pending litigation” (Paper 2 at 3) strongly suggests
`that Petitioner intends to rely on the same art in the district court litigation that it
`relied on in the petition.
`
`
`
`
`
`
`
`
`Case No. IPR 2025-00877
`U.S. Patent No. 11,126,853 B2
`Request for Discretionary Denial
`
`Page 15
`Compare IPR 2025 -00875, Paper 2 ( all Grounds ) with IPR2025-00876, Paper 2
`(Grounds 1 and 2). And IPR2025 -00876 and IPR2025-00877 (this IPR) both rely
`heavily on the Kritt reference. Compare IPR2025-00876, Paper 2 (all Grounds) with
`IPR2025-00877 (all Grounds). Thus, if any of the IPRs are not instituted, it would
`likely result in a scenario where both the Board and the district court are deciding
`the same central issues based on the same evidence, duplicating efforts and resulting
`in the risk of inconsistent results. This too weighs in favor of discretionary denial.
`Further, the petition is not a “true alternative” to the parallel district court
`litigation. Petitioner has not submitted a Sotera stipulation, but instead appears to
`limit its stipulation to only the prior art discussed in the IPR: “Petitioner hereby
`stipulates that if this IPR is instituted, then Petitioner will not pursue in the related
`pending litigation the specific grounds of invalidity that were raised or that
`reasonably could have been raised under 35 U.S.C. §§ 102 or 103 on the basis of
`prior art patents or printed publications in this IPR .” (Paper 2 at 3 (emphasis
`added)). This Sand Revolution-type stipulation leaves the door open for Petitioner
`to try to pursue different prior art at trial against the same claims as it challenges in
`the petition. See Nokia of Am. Corp. v. Wireless All. LLC , IPR2024-00619, 2024
`WL 4183018, at *5 (P.T.A.B. Sept. 13, 2024) (“Petitioner’s stipulation not to pursue
`only the specific grounds in the Petition leaves open the possibility of duplication of
`
`
`
`
`
`
`
`
`Case No. IPR 2025-00877
`U.S. Patent No. 11,126,853 B2
`Request for Discretionary Denial
`
`Page 16
`efforts.”). “The breadth of the stipulation affects the weight given in the
`discretionary denial analysis. . . . [A] petitioner stipulating not to pursue the ‘same
`grounds’ presented in a petition only marginally favors not exercising [] discretion
`to deny institution.” Hanwha Sols. Corp. v. Maxeon Solar Pte. Ltd. , IPR2024-
`01199, 2025 WL 634837, at *7 (P.T.A.B. Feb. 26, 2025) (emphasis in original). As
`a result, Google’s petition is not a true alternative to the district court litigation.
`On balance, this factor weighs in favor of discretionary denial, as there is
`complete overlap of claims and Petitioner’s narrow stipulation does not achieve the
`goals of avoiding duplication.
`5. Fintiv Factor 5 – The Petitioner is also the defendant in the
`parallel proceeding
`Petitioner does not and cannot dispute it is the defendant in the parallel
`proceeding. Paper 2 at 1 (“Petitioner was served on May 10, 2024.”). Accordingly,
`this factor weighs in favor of denying institution. “The fact that Petitioner is also
`the defendant in the Litigation weighs in favor of discretionarily denying
`institution.” SAP America, Inc. v. Cyandia, Inc ., IPR2024 -01496, Paper 13 at 9
`(P.T.A.B. April 7, 2025).
`
`
`
`
`
`
`
`
`Case No. IPR 2025-00877
`U.S. Patent No. 11,126,853 B2
`Request for Discretionary Denial
`
`Page 17
`6. Fintiv Factor 6 – Other considerations favor denial
`The Workload Memo states that the Director will consider “all relevant
`considerations” when determining whether discretionary denial is warranted.
`Workload Memo at 2-3. These considerations include without limitation:
`• Settled expectations of the parties, such as the length of time the claims
`have been in force;
`• The strength of the unpatentability challenge; and
`• The extent of the petition’s reliance on expert testimony.
`(Id.)
`Discretionary denial is warranted here based on these considerations.
`a. The parties’ settled expectations favor discretionary
`denial
`The Director may consider the “[s]ettled expectations of the parties, such as
`the length of time the claims have been in force.” Workload Memo at 2. Here, the
`parent application to the ’853 patent was filed on June 29, 2016, the application
`leading to the ’853 patent was filed on February 8, 2019 and published on November
`7, 2019, and the patent issued on September 21, 2021. (Ex. 2003.) Accordingly,
`Petitioner could have challenged the ’ 853 patent when it issued. Instead, despite
`
`
`
`
`
`
`
`
`Case No. IPR 2025-00877
`U.S. Patent N