`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.”).
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`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
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`2
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`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
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`3
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`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”).
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`4
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`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.
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`5
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`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.
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`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
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`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;
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`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.
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`9
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`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
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`10
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`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,
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`11
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`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.
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`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.
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`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
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`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.
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`PGR2020-00039
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`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
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`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