throbber
Trials@uspto.gov
`571-272-7822
`
`Paper No. 14
`Date: September 14, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`Petitioner,
`v.
`GREE, INC.,
`Patent Owner.
`
`PGR2020-00039
`Patent 10,307,676 B2
`
`
`
`
`
`
`
`
`
`Before MICHAEL W. KIM, LYNNE H. BROWNE, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324
`
`INTRODUCTION
`I.
`A. Background and Summary
`On March 4, 2020, Supercell Oy (“Petitioner”) filed a Petition for
`post-grant review of claims 1–24 of U.S. Patent No. 10,307,676 B2 (“the
`’676 patent”) (Ex. 1003). Paper 2 (“Pet.”). On June 17, 2020, GREE, Inc.
`(“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`
`
`
`

`

`PGR2020-00039
`Patent 10,307,676 B2
`With authorization, on July 6, 2020, Petitioner filed a Petitioner’s Reply to
`Patent Owner’s Preliminary Response. Paper 9 (“Prelim. Reply”). With
`authorization, on July 20, 2020, Patent Owner filed a Patent Owner’s Sur-
`Reply. Paper 10 (“Prelim. Sur-Reply”).
`Having considered the arguments and evidence of record, and for the
`reasons explained below, we exercise our discretion under 35 U.S.C.
`§ 324(a) and deny institution of post-grant review.
`B. Real Parties in Interest
`Petitioner indicates that it is the real-party-in-interest. Pet. 1. Patent
`Owner indicates that it is the real-party-in-interest. Paper. 4, 2.
`C. Related Matters
`Petitioner identifies GREE, Inc. v. Supercell Oy, Civil Action No.
`2:19-cv-00200-JRG-RSP (E.D. Tx.) (“the parallel district court
`proceeding”), which involves the same patent and parties as the present case,
`as a related matter. Pet. 2. Patent Owner identifies the same case. Paper 4,
`3.
`
`Petitioner and Patent Owner each identify the following post-grant
`review proceedings as related matters:
`PGR2020-00034 (U.S. Patent No. 10,300,385 B2);
`PGR2020-00038 (U.S. Patent No. 10,307,675 B2);
`PGR2020-00041 (U.S. Patent No. 10,307,677 B2); and
`PGR2020-00042 (U.S. Patent No. 10,307,678 B2).
`Pet. 1–2; Paper 4, 2. Petitioner also identifies PGR2018-00008 (U.S.
`5,597,594) as a related matter. Pet. 2.
`D. The ’676 Patent
`The ’676 patent “relates to a method for controlling a computer, a
`recording medium and a computer.” Ex. 1003, 1:21–22. In particular, it
`
`2
`
`

`

`PGR2020-00039
`Patent 10,307,676 B2
`relates to city building games “wherein a player builds a city within a virtual
`space . . . provided in the game program.” Id. at 1:34–36. The method
`utilizes “a computer that is provided with a storage unit configured to store
`game contents arranged within a game space, positions of the game contents,
`and a template defining positions of one or more of game contents.” Id. at
`2:1–5. The method “progresses a game by arranging the game contents
`within the game space based on a command by a player.” Id. at 2:5–7.
`E. Illustrative Claim
`The ’676 patent includes 24 claims, all of which Petitioner challenges.
`Ex. 1003, 26:26–30:20; Pet. 1. Of these, claims 1, 7, 13, and 19 are
`independent claims. Ex. 1003, 26:26–48, 27:12–33, 28:5–21, 27:52–28:2.
`Illustrative claim 1 is reproduced below.
`1. An electronic device comprising:
`circuitry configured to
`execute a game by arranging, based on a command received
`from a first player, a plurality of game contents within a game
`space, the game contents including at least game contents for
`defending from an attack initiated by another player;
`receive a command to create a template for defending an
`attack initiated by another player from the first player;
`create, responsive to the received command to create the
`template, a plurality of templates defining the plurality of game
`contents and respective positions of the plurality of game
`contents within the game space;
`create a plurality of images that each correspond to one of
`the plurality of templates;
`display a screen including the plurality of images;
`receive a selection corresponding to one of the displayed
`images; and
`
`3
`
`

`

`PGR2020-00039
`Patent 10,307,676 B2
`apply a template corresponding to the received selection to
`a game space.
`F. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1–24 are unpatentable based on the
`following grounds:
`Reference(s)/Basis
`35 U.S.C. §
`Claim(s) Challenged
`Ineligible Subject Matter
`101
`1–24
`Inadequate Written Description
`112(a)
`1–12
`Indefiniteness
`112(b)
`1–12
`Clans,1 Mastermind,2 Kim3
`103(a)
`1–24
`Petitioner also relies on a Declaration of Mark L. Claypool, Ph.D.
`
`Ex. 1012.
`G. Eligibility for Post Grant Review
`The post-grant review (“PGR”) provisions of the Leahy-Smith
`America Invents Act (“AIA”) apply only to patents subject to the first
`inventor to file provisions of the AIA. AIA § 6(f)(2)(A). Specifically, the
`first inventor to file provisions apply to any application for patent, and to
`any patent issuing thereon, that contains or contained at any time a claim to a
`claimed invention that has an effective filing date on or after March 16,
`2013. AIA § 3(n)(1). Furthermore, “[a] petition for a post-grant review may
`only be filed not later than the date that is 9 months after the date of the
`grant of the patent or of the issuance of a reissue patent (as the case may
`
`
`1 Clash of Clans, version 4.120 (“Clash”) (Ex. 1014, “Takala Dec.”).
`2 “Mastermind’s In-Game Builder Idea (with LOADS of pictures!)”
`(“Mastermind”), available at
`https://web.archive.org/web/2013091508111/http:/forum.supercell.net:80/sh
`owthread/php/149687-Mastermind-s-In-Game-Builder-Idea-(with-LOADS-
`of-pictures!) (in two parts) (Ex. 1015, “Olesuik Dec.”).
`3 US 9,079,105 B2, issued July 14, 2015 (Ex. 1016, “Kim”).
`
`4
`
`

`

`PGR2020-00039
`Patent 10,307,676 B2
`be).” 35 U.S.C. § 321(c); see also 37 C.F.R. § 42.202(a) (setting forth the
`same).
`Petitioner asserts that the ’676 patent is available for post-grant
`review. Pet. 3. The ’676 patent was filed on June 29, 2017, and claims
`ultimate priority to a Japanese application filed September 27, 2013, both
`dates falling after March 16, 2013. Ex. 1001, codes (22), (30); see also id. at
`code (63) (identifying domestic priority claims); Pet. 9. The Petition was
`filed on March 4, 2020, which is within nine months of the June 4, 2019,
`issue date of the ’676 patent. Ex. 1001, code (45); Pet. 2. On this record, we
`determine that the ’676 patent is eligible for post-grant review.
`II. ANALYSIS
`A. Discretion Under 35 U.S.C. § 324(a)
`Patent Owner urges the Board to exercise discretion to deny
`institution of post-grant review under 35 U.S.C. § 324(a) “because Petitioner
`raises the same prior art and arguments in a parallel district court proceeding
`filed more than one year ago and scheduled for trial in less than six months.”
`Prelim. Resp. 1 (citing NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8, at 19–20 (PTAB Sept. 12, 2018) (precedential));
`accord Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, at 6 (PTAB,
`Mar. 20, 2020) (precedential) (the “Fintiv Order”). Patent Owner asserts
`that “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 and the potential for
`inconsistent results due to both tribunals considering overlapping issues is
`present.” Id. at 1–2 (citing Supercell Oy v. GREE, Inc., IPR2020-00215,
`Paper 10, at 6–19 (PTAB June 10, 2020)). Petitioner disagrees. Prelim.
`Reply 1–5.
`
`5
`
`

`

`PGR2020-00039
`Patent 10,307,676 B2
`1.
` Legal Standards
`35 U.S.C. § 324(a) states that
`
`[t]he Director may not authorize a post-grant review to be
`instituted unless the Director determines that the information
`presented in the petition filed under section 321, if such
`information is not rebutted, would demonstrate that it is more
`likely than not that at least 1 of the claims challenged in the
`petition is unpatentable.
`The portion of the statute reading “[t]he Director may not authorize . . .
`unless” mirrors the language of 35 U.S.C. § 314(a), which concerns inter
`partes review. This language of sections 314(a) and 324(a) provides the
`Director with discretion to deny institution of a petition. See Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision
`to deny a petition is a matter committed to the Patent Office’s discretion.”);
`Consolidated Trial Practice Guide November 2019 (“TPG”)4 at 55.
`In exercising the Director’s discretion under 35 U.S.C. §§ 314(a) and
`324(a), the Board may consider “events in other proceedings related to the
`same patent, either at the Office, in district courts, or the ITC.” TPG at 58.
`The Board’s precedential NHK Spring decision explains that the Board may
`consider the advanced state of a related district court proceeding, among
`other considerations, as a “factor that weighs in favor of denying the Petition
`under § 314(a).” NHK Spring Co., IPR2018-00752, Paper 8 at 20.
`Additionally, the Board’s precedential Fintiv Order identifies several
`factors to be considered when analyzing issues related to the Director’s
`discretion to deny institution, with the goal of balancing efficiency, fairness,
`and patent quality. See Fintiv Order, IPR2020-00019, Paper 11 at 5‒6.
`
`
`4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`6
`
`

`

`PGR2020-00039
`Patent 10,307,676 B2
`These factors include: 1) whether a stay exists or is likely to be granted if a
`proceeding is instituted; 2) proximity of the court’s trial date to the Board’s
`projected statutory deadline; 3) investment in the parallel proceeding by the
`court and 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 and
`considerations that impact the Board’s exercise of discretion, including the
`merits. Id.
`We recognize that NHK Spring and the Fintiv Order apply the
`Director’s discretion pursuant to 35 U.S.C. § 314(a), and do not specifically
`extend their application to 35 U.S.C. § 324(a), which is the relevant statute
`that applies to this PGR proceeding. As noted above, however, the pertinent
`statutory language is the same in both section 314(a) and section 324(a).
`Moreover, the policy justifications associated with the exercise of
`discretion—inefficiency, duplication of effort, and the risk of inconsistent
`results—apply equally to post-grant review proceedings under 35 U.S.C.
`§ 324(a). Accordingly, we weigh the factors set forth in the Fintiv Order to
`the facts here. See, e.g., Teva Pharms. USA, Inc. v. Corcept Therapeutics,
`Inc., PGR2019-00048, Paper 19 at 11 (Nov. 20, 2019) (analyzing NHK
`Spring and instituting trial); Stripe, Inc. v. Boom! Payments, Inc.,
`CBM2020-00002, Paper 22 (May 19, 2020) (analyzing the Fintiv Order and
`instituting trial); see also infra Factor 6 (considering Petitioner’s policy
`arguments).
`We, however, recognize that there are differences between inter
`partes review and post grant review, that when relevant to specific Fintiv
`factors, must be considered. Those differences include the fact that the
`window for filing a petition for post grant review is open only for nine
`
`7
`
`

`

`PGR2020-00039
`Patent 10,307,676 B2
`months from the date of issuance. See 35 U.S.C. § 321(c). Furthermore,
`“the intent of the post-grant review process is to enable early challenges to
`patents, while still protecting the rights of inventors and patent owners
`against new patent challenges unbounded in time and scope.” H.R. Rep.
`No., 112-98, pt. 1, 47–48 (2011).
`2. Factual Background
`The record before us presents the following facts related to the
`parallel proceeding, which are pertinent to discretion under 35 U.S.C.
`§ 324(a):
`“Patent Owner initiated the parallel district court proceeding on
`May 28, 2019, and amended the complaint to assert the ’676 Patent on
`June 4, 2019, the day the ’676 Patent issued.” Prelim. Resp. 16 (citing
`Ex. 2003; Ex. 1003).
`On November 13, 2019, Petitioner served ineligibility contentions in
`the parallel proceeding. Ex. 2005–2007; Prelim. Resp. 16.
`On December 6, 2019, Petitioner served invalidity contentions in the
`parallel proceeding. Ex. 2006; Prelim. Resp. 16.
`On March 4, 2020, Petitioner filed its Petition in this proceeding.
`Paper 1.
`Throughout February and March 2020, the parties submitted claim
`construction briefing in the parallel proceeding. See Ex. 1021, 1 (briefing
`between February 25, 2020 and March 17, 2020). On April 14, 2020, a
`Markman hearing was conducted. Id. On May 14, 2020, the Magistrate
`Judge issued a Claim Construction Memorandum Opinion and Order. Id.
`On April 23, 2020, Petitioner filed a motion in the parallel proceeding
`to continue all case deadlines for 45 to 60 days, “in view of the extraordinary
`impact caused by the COVID-19 virus on the Parties.” Ex. 2002, 1–2;
`
`8
`
`

`

`PGR2020-00039
`Patent 10,307,676 B2
`Prelim. Resp. 11. In response, the district court issued an amended docket
`control order, extending the trial date from October 5, 2020, to December 7,
`2020. Ex. 2001; Prelim. Resp. 11.
`Subsequently, on July 29, 2020, the district court in the parallel
`proceeding issued a third docket control order that maintained the trial date
`of December 7, 2020, but extended by approximately two to three weeks
`several due dates for expert disclosures and discovery, dispositive motions,
`and briefing on motions to strike and Daubert motions. Ex. 2011.
`And, on August 21, 2020, the district court in the parallel proceeding
`issued a fourth docket control order that, again, maintained the trial date of
`December 7, 2020, but extended by approximately two weeks several due
`dates for fact discovery, expert disclosures and discovery, dispositive
`motions, and briefing on motions to strike and Daubert motions. Ex. 2012.
`3. Fintiv Order Factors
`In determining whether to institute trial in this proceeding, we
`consider each of the factors set forth in the Fintiv Order below.
`a. Factor 1: whether a stay exists or is likely to be granted if a
`proceeding is instituted
`Patent Owner asserts that Petitioner has not moved to stay the parallel
`proceeding. Prelim. Resp. 9. Petitioner does not dispute this assertion, but
`argues that the district court typically denies such motions when they are
`made before the Board has determined whether to institute review. Prelim.
`Reply 3. Petitioner stipulates that “it will seek a stay,” if this proceeding is
`instituted. Id. Patent Owner indicates it would oppose such a motion, and
`argues that the “late stage” of the parallel proceeding weighs against
`Petitioner’s intended motion. Prelim. Sur-reply 3.
`
`9
`
`

`

`PGR2020-00039
`Patent 10,307,676 B2
`We recognize that many legitimate reasons may lead a party not to file
`a motion to stay a parallel proceeding prior to the Board’s institution
`decision, including because such a motion may be viewed as premature. Be
`that as it may, our precedential guidance instructs us to consider whether the
`court has granted a stay of the parallel proceeding, or whether evidence
`exists that a stay may be granted upon institution. Fintiv Order, Paper 11 at
`5–6. As it stands, the record lacks any evidence to suggest that a stay has
`been granted, or may be granted in the future.
`For these reasons, we determine that the facts underlying this factor
`are neutral.
`
`b. Factor 2: proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision
`Patent Owner states that a jury trial is scheduled to begin in the
`parallel proceeding on December 7, 2020, which is approximately nine
`months before a final written decision would issue in this proceeding.
`Prelim. Resp. 10. According to Patent Owner, the Board has consistently
`denied institution with even smaller periods of time between trial and a final
`written decision. Id. at 10–11 (identifying denials with gaps of six to ten
`months). Patent Owner also explains that the district court already moved
`the trial date from October to December, per Petitioner’s request. Id. at 11.
`Patent Owner contends there is no reason to believe any further adjustment
`would be necessary. Id. at 12.
`Petitioner argues that the trial date in the parallel proceeding should
`receive little weight because trial is scheduled to occur only 18-months after
`the ’676 patent issued. Pet Reply 3. Petitioner also argues that the trial date
`in the parallel proceeding is uncertain due to travel restrictions associated
`with the COVID-19 pandemic, which leaves Petitioner “unable to take
`
`10
`
`

`

`PGR2020-00039
`Patent 10,307,676 B2
`discovery of [Patent Owner]’s Japan-based witnesses.” Id. Petitioner
`explains that trial was delayed once already to accommodate these discovery
`difficulties and argues that “it appears unlikely that Japan’s travel ban will
`be lifted in time for a December trial.” Id. at 5.
`Patent Owner responds that Petitioner’s argument about continued
`travel restrictions is speculative and “fails to contemplate the numerous
`alternatives to in-person depositions Patent Owner has offered.” Prelim.
`Sur-Reply 4–5. Additionally, Patent Owner responds that “even if trial is
`ultimately delayed by a few months, it will still likely conclude well before a
`final written decision would be due in this proceeding.” Id. at 4.
`If we were to institute post-grant review in this proceeding, our Final
`Written Decision would be due in September of 2021—nine months after
`trial in the parallel proceeding. These facts create a cognizable risk of
`inconsistent results across the proceedings. See also infra Factor 4 (overlap
`in statutory grounds, prior art, and arguments). We recognize that some
`uncertainty exists, in theory, due to the COVID-19 pandemic. However, the
`record lacks specific, non-speculative evidence to suggest that further delay
`of the trial date is likely in the parallel proceeding at issue here. Apple Inc.
`v. Fintiv, Inc., IPR2020-00019, Paper 15 (PTAB May 13, 2020)
`(informative) (“We generally take courts’ trial schedules at face value absent
`some strong evidence to the contrary.”).
`These facts are unlike Sand Revolution. Prelim. Reply 3–4 (citing
`Sand Revolution II, LLC v. Cont’l Intermodal Grp., IPR2019-01393,
`Paper 24 (PTAB June 16, 2020) (informative)). In Sand Revolution, the
`parties jointly sought two extensions of the trial date in a related proceeding,
`which the district court granted. Sand Revolution, Paper 24 at 8. The
`district court identified a loose date at which trial might occur: “Nov. 9,
`
`11
`
`

`

`PGR2020-00039
`Patent 10,307,676 B2
`2020 (or as available),” which the Board found “indicates a continuing
`degree of recognized uncertainty of the court’s schedule by the court.” Id. at
`9. By contrast, here, the district court’s docket control order indicates a firm
`date for trial, which “cannot be changed without showing good cause. Good
`cause is not shown merely by indicating that the parties agree that the
`deadline should be changed.” Ex. 2011, 1, 4; Ex. 2012, 1, 4.
`Moreover, even if the district court in the parallel proceeding were to
`grant an additional continuance of the trial date, akin to that previously
`requested by Petitioner, trial in the parallel proceeding would still occur
`approximately seven months before our Final Written Decision is due.
`Prelim. Sur-Reply 4; Ex. 2002, 2 (“[Petitioner] thus respectfully moves for a
`45- to 60-day continuance of the remaining case deadlines, including the
`pretrial and trial dates.”). In keeping with precedent, a jury trial set to begin
`seven months before our statutory deadline would weigh in favor of denying
`institution. See, e.g., Prelim. Resp. 10–11.
`Petitioner argues that the trial date in the parallel proceeding should
`receive little weight, given its proximity to the patent’s issuance. Prelim.
`Reply 3. We, however, do not agree that we can afford it little weight.
`35 U.S.C. § 324(a) affords the Director discretion in determining whether to
`institute trial. The Director has shaped some contours of that discretion
`through the precedential guidance offered in NHK Spring and the Fintiv
`Order and, insofar as the overall policy goals for considering a parallel
`proceeding’s trial date apply equally to post grant reviews, it is accord the
`same weight. Petitioner does not explain why the timing of the patent’s
`issuance is pertinent. Regardless of when the ’676 patent issued, a jury trial
`is scheduled to begin on December 7, 2020, to determine whether it is
`infringed and is valid. Ex. 2012, 1.
`
`12
`
`

`

`PGR2020-00039
`Patent 10,307,676 B2
`For these reasons, where trial in the parallel proceeding is scheduled
`to occur nine months prior to our Final Written Decision, we determine that
`the facts underlying this factor weigh strongly toward denying institution.
`c. Factor 3: investment in the parallel proceeding by the court
`and the parties
`Patent Owner contends that “the parties and the district court have
`each already invested, and will have invested even more, substantial
`resources in the parallel proceeding—including preparing for and holding a
`jury trial—by the time this Board decides whether to institute.” Prelim.
`Resp. 13. Patent Owner explains that claim construction briefing and
`argument is complete, and the district court has issued its claim construction
`order. Id. Patent Owner also argues that fact and expert discovery, as well
`as the filing of dispositive and Daubert motions, will be complete before our
`institution decision. Id. at 14; Ex. 2001.5 Further, Patent Owner alleges that
`Petitioner delayed in filing the Petition and “was undisputedly aware of the
`grounds asserted in the Petition months before the filing of the instant
`Petition.” Prelim. Resp. 16.
`Petitioner does not dispute the investments in the parallel proceeding
`identified by Patent Owner but argues that the Board itself has invested
`substantial resources related to this matter, by virtue of the completed trial in
`PGR2018-00008, which concerns a patent from which the ’676 patent
`claims priority as a continuation. Prelim. Reply 4; see also Pet. 7–8 (priority
`claim), 21–23 (discussing PGR2018-00008). Petitioner contends that the
`
`
`5 Subsequent to the parties’ briefing, the district court extended these
`deadlines. Paper 12 (submitting Ex. 2011); Paper 13 (submitting Ex. 2012).
`Accordingly, fact discovery closed September 3, 2020, expert discovery is
`scheduled to close October 2, 2020, and dispositive and Daubert motions are
`due on October 5, 2020. Ex. 2012.
`
`13
`
`

`

`PGR2020-00039
`Patent 10,307,676 B2
`Board “is already familiar with the claimed subject matter, construed terms,
`and reached a decision regarding the unpatentability of claims that the
`Examiner found — and GREE argued — were not patentably distinct from
`those at issue here.” Prelim. Reply 4 (citing Pet. 21–24) (emphasis omitted).
`Patent Owner argues that due to Petitioner’s delay, “Patent Owner
`faces the prospect of—after resolving Petitioner’s invalidity challenge at the
`district court in December—having to re-litigate Petitioner’s same invalidity
`challenge in front of this Board almost a year later.” Prelim. Sur-Reply 6.
`Patent Owner also disagrees with Petitioner’s focus on the Board’s prior
`investments because the Fintiv Order identifies only the investments made in
`the parallel proceeding. Id. at 5.
`First, as instructed by the Fintiv Order, we consider the investments
`made in the parallel proceeding. In the parallel proceeding, claim
`construction is complete. Ex. 1021. Additionally, we understand that fact
`discovery closed on September 3, 2020, and expert discovery is schedule to
`close on October 2, 2020. Ex. 2012, 3–4. These activities demonstrate that
`the district court and the parties have made some investments in the parallel
`proceeding, which weighs in favor of denying institution. However, we do
`not find those investments to be substantial, especially when considered
`against the activity that remains and appears to be ongoing, despite any
`restrictions against travel to Japan. Contra Prelim. Reply 4. For example,
`activity appears ongoing related to expert discovery (scheduled to close on
`October 2, 2020); filing and responding to dispositive motions and motions
`to strike expert testimony (due October 5, 2020, and October 15, 2020,
`respectively); and various pretrial actions (scheduled to occur between
`October 15, 2020 and November 12, 2020). Ex. 2012, 1–3. Moreover, we
`are cognizant that there are significant resources associated with conducting
`
`14
`
`

`

`PGR2020-00039
`Patent 10,307,676 B2
`the trial itself, as well as potential post-trial proceedings. As such, the
`investments related to the parallel proceeding to date weigh minimally in
`favor of denying institution.
`Next, we consider Patent Owner’s argument that Petitioner delayed in
`filing its Petition. 35 U.S.C. § 321(c) affords petitioner up to nine months
`after issuance of the patent to file a petition for post-grant review. Petitioner
`filed its Petition on the eve of the nine month window, and complied with
`35 U.S.C. § 321(c). Although Petitioner filed its Petition late within the
`statutory filing window, the evidence before us demonstrates that only
`minimal investments have been made in the parallel proceeding. Thus, we
`are not persuaded that Petitioner’s “delay” is a compelling reason to exercise
`discretion to deny institution.
`Finally, we address Petitioner’s argument that we should consider the
`Board’s investments related to the ’676 patent. Post-grant review is an
`efficient mechanism by which a petitioner may bring a timely challenge to a
`newly-issued patent that may be related, e.g., as a continuation,
`continuation-in-part, or divisional, to a patent previously considered by the
`Board.6 See, e.g., H.R. Rep. No. 112-98, pt. 1, 47–48 (2011) (“The intent of
`the post-grant review process is to enable early challenges to patents, while
`still protecting the rights of inventors and patent owners against new patent
`challenges unbounded in time and scope.”). In the context of post-grant
`review, in which a patent must be challenged within nine months of
`issuance, and where a post-grant review petition may be filed substantially
`after the fling of an inter partes review petition challenging a related patent,
`
`
`6 By contrast, a petitioner typically files inter partes review petitions against
`related patents at or around the same time.
`
`15
`
`

`

`PGR2020-00039
`Patent 10,307,676 B2
`we agree that it may be pertinent to consider any prior investments by the
`Board that are related to the challenged patent.
`This is such a case. In PGR2018-00008, the Board considered
`patentability challenges directed to a parent of the ’676 patent that is now
`challenged here. See, e.g., Pet. 7–8, 21. Thus, we agree with Petitioner that
`the Board is familiar with the claimed subject matter, and we determine that
`this fact weighs in favor of institution. We note, however, the claims at
`issue in PGR2018-00008 differ from the challenged claims here. Although
`similarities certainly exist across the two proceedings, there are notable
`differences in claim scope. Nonetheless, we agree with Petitioner that, at
`least in the context of a post-grant review, the Board’s prior investments in
`related proceedings may be pertinent to our analysis of the Fintiv factors. In
`this case, those investments weigh moderately in favor of institution.
`Considering the foregoing, we find that, despite filing the Petition late
`within the statutory filing window, only minimal investments have been
`made in the parallel proceeding. Moreover, we find that that some
`investments related to this proceeding have been made by the Board.
`Accordingly, we determine that the facts underlying this factor weigh
`moderately in favor of institution.
`
`d. Factor 4: overlap between issues raised in the petition and
`in the parallel proceeding
`Patent Owner argues that “[t]here is substantial overlap between the
`claims, grounds, arguments and evidence presented in the Petition” and in
`the parallel proceeding. Prelim. Resp. 17–18 (citing Supercell, IPR2020-
`00215, Paper 10, at 16; Vizio v. Polaris PowerLED Technolgoies, LLC,
`IPR2020-00043, Paper 30, 10 (PTAB May 4, 2020)). For example, Patent
`Owner argues that the same prior art asserted in the Petition is also asserted
`
`16
`
`

`

`PGR2020-00039
`Patent 10,307,676 B2
`in the parallel proceeding (id. at 18) and that substantially the same
`arguments are made regarding both the prior art (id. at 19) and ineligibility
`under 35 U.S.C. § 101 (id. at 21).
`Petitioner does not dispute the identified overlap but argues that
`Patent Owner will likely reduce the number of claims it asserts in the
`parallel litigation, whereas all claims are challenged in the Petition. Prelim.
`Reply 4. Thus, Petitioner contends that “significant issues related to the un-
`asserted claims would be left unaddressed by the litigation, forever
`insulating those claims from PGR.” Id. at 4–5. Petitioner also argues that
`the different patent eligibility standards between district court and this
`proceeding “result[s] in different issues between the two forums.” Id. at 5.
`Under the Fintiv Order, “if the petition includes the same or
`substantially the same claims, grounds, arguments, and evidence as
`presented in the parallel proceeding, this fact has favored denial” because
`“concerns of inefficiency and the possibility of conflicting decisions [are]
`particularly strong.” Fintiv Order, Paper 11 at 12. In this case, the same
`statutory grounds,7 the same arguments, and the same prior art evidence are
`at issue. As to Petitioner’s argument that Patent Owner may reduce the
`number of asserted claims at issue in the parallel proceeding, we find this
`argument to be speculative. Finally, we recognize Petitioner’s policy
`arguments against this factor but we are constrained by binding Board
`precedent, which dictates that we consider this factor.
`
`
`7 Despite Petitioner’s argument that the “patent ineligibility standard[s]” are
`“different,” the fact remains that ineligibility under 35 U.S.C. § 101, as
`asserted in this Petition, overlaps with that issue in the parallel proceeding.
`Contra Prelim. Reply 5.
`
`17
`
`

`

`PGR2020-00039
`Patent 10,307,676 B2
`On this record, we determine that the facts underlying this factor
`weigh moderately in favor of denying institution. Id.
`e. Factor 5: whether the Petitioner and the defendant in the
`parallel proceeding are the same party
`The parties do not dispute that Petitioner is the defendant in the
`parallel proceeding. Prelim. Resp. 22; Prelim. Reply 5. However, Petitioner
`argues that this factor “should be given little weight in the PGR context, as
`the petitioner-defendant will always be the party most motivated to
`challenge a patent. No other party can file a PGR at this point.” Prelim.
`Reply 5.
`Petitioner is correct that—as of March 4, 2020 (nine months after the
`’676 patent issued)—no other party can file a post-grant review petition. See
`35 U.S.C. § 321(c). And Petitioner may be correct that a district court
`defendant is the party most motivated to file a petition. Nonetheless, Fintiv
`Factor 5 instructs that we consider whether Petitioner and the parallel
`proceeding defendant are the same party and, here, they are. Thus, the fact
`that Petitioner here is the defendant in the parallel proceeding, when viewed
`in the context of the other facts in this case, weighs in favor of denying
`institution.
`
`f. Factor 6: other circumstances that impact the Board’s
`exercise of discretion, including the merits
`When considering whether to exercise discretion to deny a petition,
`we undertake a balanced assessment of all relevant circumstances in the
`case, including the merits. Fintiv Order, Paper 11 at 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

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket