Trials@uspto.gov
`571-272-7822
`
`Paper 13
`Date: October 14, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`Petitioner,
`v.
`GREE INC.,
`Patent Owner.
`
`PGR2020-00043
`Patent 10,328,346 B2
`
`
`
`
`
`
`
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`MARSCHALL, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 13
`Date: October 14, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`Petitioner,
`v.
`GREE INC.,
`Patent Owner.
`
`PGR2020-00043
`Patent 10,328,346 B2
`
`
`
`
`
`
`
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`MARSCHALL, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
`PGR2020-00043
`Patent 10,328,346 B2
`
`INTRODUCTION
`Supercell Oy (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting institution of a post-grant review of claims 1–15 of
`U.S. Patent No. 10,328,346 B2 (Ex. 1001, “the ’346 patent”). GREE, Inc.
`(“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”).
`With our authorization, Petitioner filed a Reply to Patent Owner’s
`Preliminary Response (Paper 8, “Reply”) and Patent Owner filed a Sur-reply
`to Petitioner’s Reply (Paper 9, “Sur-reply”).
`Upon consideration of the parties’ briefs and the evidence of record
`and for the reasons explained below, we exercise our discretion under 35
`U.S.C. § 324(a) to deny institution of a post-grant review.
`BACKGROUND
`A. Real Parties in Interest
`Petitioner states that “[t]he sole real party-in-interest for this Petition
`is Supercell Oy.” Pet. 1. Patent Owner states that “the real party-in-interest
`is GREE, Inc.” Paper 3, 2.
`B. Related Matters
`The parties indicate that the ’346 patent is involved in GREE, Inc. v.
`Supercell Oy, No. 2:19-cv-00237-JRG-RSP (E.D. Tex.) (“district court
`litigation”). Pet. 2–3; Paper 3, 3. Trial is set for March 1, 2021, in the
`district court litigation. Ex. 1051 (Amended Docket Control Order entered
`Oct. 7, 2020). Petitioner also identifies several post-grant review
`proceedings involving patents related to the ’346 patent. See Pet. 2 (citing
`Supercell Oy v. Gree, Inc., PGR2018-00047, Paper 39 at 55, 58, 60 (PTAB
`Sept. 6, 2019); Supercell Oy v. Gree, Inc., PGR2018-00029, Paper 45 at 52,
`54, 56 (PTAB Aug. 14, 2019)).
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`PGR2020-00043
`Patent 10,328,346 B2
`C. The ’346 Patent
`The ’346 patent issued on June 25, 2019, from an application filed on
`August 25, 2017, that claims priority to a series of three continuation
`applications and three foreign applications. Ex. 1001, codes (22), (30), (45),
`(63), 1:9–17. The earliest application to which the ’346 patent claims
`priority was filed on May 30, 2014. Id. at codes (30), (63).
`The ’346 patent relates to a computer that stores “game program code
`instructions for a game in which a first user and a second user do battle.” Id.
`at code (57). The computer “perform[s] a data storage function of storing a
`first panel data that includes a plurality of panels associated with the first
`user” and “a control function of receiving information regarding a selection
`by the first user, the selection being for one or more panels indicating
`characters to be disposed in one or more divisions of a game display screen.”
`Id. “[T]he control function transmits information for displaying the panel as
`a moving character according to the information of motion associated with
`the panel when the panel is disposed in a target division.” Id.
`D. Illustrative Claim
`The ’346 patent has 15 claims, all of which Petitioner challenges.
`Claims 1, 6–8, 14, and 15 are independent, and claim 1 is reproduced below.
`1. A non-transitory computer readable recording medium
`storing game program code instructions for a game in which a
`first user and a second user do battle, and when the game program
`code instructions are executed by a computer, the game program
`code instructions cause the computer to perform:
`a data storage function of storing a first panel data that
`includes a plurality of panels associated with the first user
`to a storage unit; and
`a control function of receiving information regarding a
`selection by the first user, the selection being for one or
`more panels indicating one or more characters, wherein
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`PGR2020-00043
`Patent 10,328,346 B2
`the data storage function further stores each panel associated
`with information of motion to the storage unit, and
`the control function further receives information related to
`selection of one or more divisions in which the one or
`more characters indicated in the selected one or more
`panels are to be displayed as one or more moving
`characters in a game display screen including one or more
`regions formed by the one or more divisions, and transmits
`information for displaying the one or more moving
`characters according to the information of motion
`associated with each panel stored in the storage unit.
`Ex. 1001, 10:33–57.
`E. Asserted Grounds
`Petitioner asserts that claims 1–15 would have been unpatentable on
`the following grounds:
`Claims Challenged
`1–15
`1–3, 6–10, 13–15
`1–15
`
`35 U.S.C. §
`101
`102
`103
`
`References/Basis
`Eligibility
`Clash Royale1
`Sakamoto,2 Kings & Legends,3
`general knowledge
`Sakamoto, Kings & Legends,
`Cho,4 general knowledge
`
`13
`
`103
`
`
`Petitioner also provides a Declaration of Stephen H. Lane, Ph.D.
`Ex. 1003.
`
`1 Petitioner’s own “Clash Royale” product is an app for the iOS and Android
`operating systems, which Petitioner contends it released on January 4, 2016,
`distributed in February 2016, and launched globally on March 2, 2016. Pet.
`23 (citing Ex. 1025 ¶¶ 3–4; Ex. 1026; Ex. 1027); Exs. 1029, 1030 (videos of
`Clash Royale).
`2 US 6,419,584 B1, issued July 16, 2002 (Ex. 1004) (“Sakamoto”).
`3 Petitioner presents a YouTube web page print-out and YouTube video
`depicting an online game known as “Kings & Legends.” See Ex. 1005 (web
`page print-out); Ex. 1006 (video) (“Kings & Legends”).
`4 US 2007/0105626 A1, published May 10, 2007 (Ex. 1010) (“Cho”).
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`PGR2020-00043
`Patent 10,328,346 B2
`F. Eligibility for Post-Grant Review
`The post-grant review (“PGR”) provisions of the Leahy-Smith
`America Invents Act (“AIA”)5 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). Because the application from which the ’346 patent
`issued was filed on August 25, 2017, and claims priority to applications filed
`on or after March 5, 2014, the ’346 patent is subject to the first inventor to
`file provisions of the AIA. Ex. 1001, codes (22), (30), (63), 1:9–17.
`Also, “[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 be).” 35 U.S.C. § 321(c);
`see also 37 C.F.R. § 42.202(a) (setting forth the same). The Petition was
`filed on March 24, 2020, which is within nine months of June 25, 2019, the
`issue date of the ’346 patent. Ex. 1001, code (45); see also Pet. 3 (arguing
`that the Petition is timely filed); Paper 5 (according a filing date of March
`24, 2020). On this record, the ’346 patent is eligible for post-grant review.
`ANALYSIS OF 35 U.S.C. § 324(a)
`Patent Owner argues that “the Board should exercise its discretion
`under 35 U.S.C. § 324(a) to deny the Petition 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 five months.”
`Prelim. Resp. 1.
`
`
`5 Pub L. No. 112-29, 125 Stat. 284 (2011).
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`PGR2020-00043
`Patent 10,328,346 B2
`Legal Standards
`A.
`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 relevant language of § 324(a) mirrors that in 35 U.S.C. § 314(a), which
`applies to inter partes reviews and has been interpreted to provide the
`Director with discretion to deny institution of a post-grant review. See
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he
`agency’s decision to deny a petition is a matter committed to the Patent
`Office’s discretion.”); Consolidated Trial Practice Guide November 2019
`(“TPG”) at 55.
`In exercising the Director’s discretion under § 314(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. NHK Spring 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. v. Intri-Plex Techs.,
`Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential).
`Additionally, the Board’s precedential order in Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 at 5‒6 (PTAB Mar. 20, 2020) (precedential) (“the
`Fintiv Order” or “Fintiv factors”) identifies several factors for analyzing
`issues related to the Director’s discretion to deny institution in view of an
`earlier trial date in the parallel proceeding, with the goal of balancing
`efficiency, fairness, and patent quality.
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`Patent 10,328,346 B2
`NHK Spring and the Fintiv Order apply the Director’s discretion
`pursuant to § 314(a) addressing inter partes reviews, and do not specifically
`extend their application to § 324(a) addressing post-grant reviews.
`Nevertheless, because both §§ 314(a) and 324(a) employ the same language
`that Supreme Court and binding Board precedent interpret as providing the
`Director with discretion, that language in §324(a) supports a conclusion that
`the Director has discretion to deny institution of post-grant reviews.
`Moreover, in related post-grant review proceedings involving these
`same parties, the Board found that the overall policy justifications associated
`with exercising discretion under § 314(a)—inefficiency, duplication of
`effort, and the risk of inconsistent results—apply to exercising discretion
`under § 324(a). See, e.g., Supercell Oy v. GREE, Inc., PGR2020-00034,
`Paper 13 at 5‒7 (PTAB Sept. 3, 2020); PGR2020-00038, Paper 14 at 6–8
`(PTAB Sept. 3, 2020) (applying the Fintiv Order to deny post grant
`reviews); PGR2020-00046, Paper 13 at 6–26 (PTAB Oct. 5, 2020);
`PGR2020-00049, Paper 14 at 6 (PTAB Oct. 13, 2020); PGR2020-00053,
`Paper 12 at 7 (PTAB Oct. 9, 2020). Based on binding precedent addressing
`similar statutory language in the inter partes review context and the analysis
`in these related cases, we weigh the Fintiv factors in considering whether to
`exercise our discretion to deny institution of the post-grant review here.
`The parties present various policy arguments addressing whether NHK
`Spring and its progeny are consistent with the AIA, and the applicability of
`NHK Spring and the Fintiv Order to post-grant reviews. See Pet. 89–90;
`Prelim. Resp. 3–4, 27–29; Reply 1–2; Sur-reply 1. We agree with Patent
`Owner that the precedential NHK Spring decision and Fintiv Order have
`already addressed the majority of Petitioner’s policy arguments. See Prelim.
`Resp. 29; Sur-reply 1. As to the policy arguments against application of that
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`PGR2020-00043
`Patent 10,328,346 B2
`precedent to post-grant reviews, the Board addressed similar policy
`arguments in related PGR2020-00034, involving the same parties. See
`Supercell Oy, PGR2020-00034, Paper 13 at 7, 20–21. For the same reasons
`explained in that case, we apply our precedent to post-grant reviews. See id.
`Although we apply the Fintiv factors, there are differences between
`inter partes reviews and post-grant reviews that we consider when relevant
`to specific Fintiv factors. Those differences include the fact that the window
`for filing a petition for post-grant review is open only for nine months from
`the date of issuance. See 35 U.S.C. § 321(c). Furthermore, “[t]he 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). We consider these issues when applying the Fintiv factors below.
`B. Applying the Fintiv Factors
`1. Whether the Court Granted a Stay or Evidence Exists that one
`may be Granted if a Proceeding is Instituted
`Patent Owner argues that “Petitioner has not filed any motion to stay
`the parallel district court proceeding” and “there is little evidence here to
`suggest that the district court will grant a stay.” Prelim. Resp. 9. Patent
`Owner also argues that a stay is “extremely unlikely” because stays are
`denied before institution in the Eastern District of Texas and an institution
`decision is due only a “couple months before the jury trial in the parallel
`district court proceeding.” Id. at 9–10.
`Petitioner replies that institution is highly significant in determining
`whether to stay district court cases and states that it “has not yet sought a
`stay but will seek a stay in the parallel litigation should the PGR be
`instituted.” Reply 3 (citing Prelim. Resp. 10). Patent Owner replies that
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`Patent 10,328,346 B2
`“there is no evidence here to suggest that the district court will grant a stay
`should this proceeding be instituted,” an intent to seek a stay is not evidence
`that the district court will grant a stay, and a “stay pending an administrative
`proceeding is not automatic.” Sur-reply 2 (citing Prelim. Resp. 9–10; Reply
`3).
`
`Because the district court has not yet granted a stay and the record
`does not include any evidence that a stay, if requested, would be granted, we
`determine that the facts underlying this factor are neutral.
`2. Proximity of the Court’s Trial Date to the Board’s Projected
`Statutory Deadline for a Final Written Decision
`Related to the trial date, Petitioner argues that the “most efficient
`course of action” is a post-grant review because “courts are wrestling with
`how to manage their calendars and ensure public safety during the
`pandemic.” Pet. 90. Petitioner notes that the parallel litigation is occurring
`in a district operating under “emergency procedures and restricted
`operations.” Id. (citing Ex. 1042; Ex. 1045).
`Patent Owner argues that a “jury trial in the parallel district court
`proceeding is set to begin on December 7, 2020” and thus, “scheduled to
`conclude approximately ten months before a final written decision would be
`due in this proceeding.” Prelim. Resp. 10. Patent Owner lists several
`proceedings where the Board has denied institution when there was a smaller
`gap between trial date and due date for a final written decision. Id. at 10–11.
`Patent Owner notes that “the district court has already adjusted the trial date
`in view of [the COVID-19] impact in response to Petitioner’s recent
`request.” Prelim. Resp. 11 (citing Ex. 2001, 1; Ex. 2002). Patent Owner
`also argues that the trial date should be taken at “face value” and the
`scheduled trial date should outweigh speculation about delay. Id. at 11–12.
`
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`PGR2020-00043
`Patent 10,328,346 B2
`Patent Owner further argues that any delay of the trial date “is not likely to
`impact the Board exercising its discretion to deny institution under § 324(a)”
`because a delayed trial “will still likely conclude well before a final written
`decision would be due in this proceeding.” Prelim. Resp. 12; see also Sur-
`reply 3 (presenting similar argument).
`Petitioner replies that the trial date is “very likely to change,” “‘often
`reset’” after the Board’s institution decision, and “‘tend[s] to slip in
`significant regard.’” Reply 3 (citing Ex. 1048, 3; Ex. 1049, 2–3). Petitioner
`also argues that “delays are only getting worse in light of COVID-19.” Id.
`(citing Ex. 1049, 3). Petitioner further contends that the trial date has
`already been delayed because “Petitioner is unable to take discovery of
`GREE’s Japan-based witnesses” and “it is unlikely that the parties will be
`able to complete discovery and . . . conduct a December trial.” Id. at 3–4
`(citing Ex. 1045; Ex. 2002, 3–8).
`In its Sur-reply, Patent Owner contends that Petitioner’s arguments
`regarding discovery of the Japan-based witness and Japan’s travel ban are
`“based on pure speculation.” Sur-reply 2 (citing Reply 4). Patent Owner
`also argues that any speculation about further delays in trial date does not
`outweigh that “trial will still end many months before October 2021, when a
`final written decision would be due.” Id. at 3 (citing Prelim. Resp. 12–13;
`Reply 3).
`After the parties briefed these issues, the parties filed a Joint Motion
`to Amend Docket Control Order in the district court litigation, agreeing to
`move the trial date to March 1, 2021. Supercell Oy v. GREE, Inc.,
`PGR2020-00034, Paper 14 at 4 (filed Oct. 5, 2020) (citing Ex. 1019, 1).
`Last week, the district court entered the Amended Docket Control Order,
`setting a trial date of March 1, 2021. Ex. 1051, 1.
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`Patent 10,328,346 B2
`Although the trial date has been delayed, we are not persuaded by
`Petitioner’s arguments that this factor weighs in favor of instituting review.
`First, Petitioner’s argument that district court trial dates “tend to slip” after
`the Board issues its decisions lacks adequate support. While evidence that a
`particular district court often moves its trial dates may suggest that we
`should not take a particular trial date at face value, and weigh this factor
`neutral or in favor of institution, the evidence cited by Petitioner does not
`support such a conclusion here. See Reply 3; Ex. 1049, 2–3. Instead, the
`cited article at most establishes that moving trial dates occur with some
`frequency in other district courts, without citing any specific examples. Id.
`Because the district court litigation involving the ’346 patent is pending in
`the Eastern District of Texas, and Petitioner cites to no examples or studies
`of shifting trial dates in that forum, we take the current trial date at face
`value. Second, a March 1, 2021 trial would begin less then five months
`from the date of this Decision, and the deadline for a final decision in this
`matter would be due more than seven months from that date. While this
`change in the trial date supports Petitioner’s arguments that the December
`2020 trial date would not remain in place, a new trial date less than five
`months away does not, standing alone, weigh in favor of institution.
`The record shows that, if post-grant review were instituted in this
`proceeding, a final written decision would be due seven months after the
`currently scheduled trial date in the parallel district court proceeding. Given
`the considerable overlap in claims, prior art, and arguments as described
`below, there is a risk that the majority of any trial in this proceeding would
`occur after the jury renders a verdict in the district court proceeding,
`resulting in an inefficient use of Board and party resources.
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`Patent 10,328,346 B2
`For the reasons above, because a jury trial is set to begin seven
`months before the statutory due date should review be instituted in this
`proceeding, we determine that this factor weighs slightly in favor of denying
`institution.
`3. Investment in the Parallel Proceeding by the Court and the
`Parties
`Patent Owner argues that the parties have completed claim
`construction briefing, the district court issued a claim construction order, and
`by the time of this decision the parties will have completed, inter alia, fact
`discovery, expert discovery, and pretrial disclosures. Prelim. Resp. 14
`(citing Ex. 1047;6 Ex. 2001, 2, 3). Patent Owner, thus, argues that the
`parallel district court proceeding is at an advanced stage and that the district
`court and parties have and will have invested substantial resources by the
`time institution is decided. Id. at 16.
`Patent Owner also argues that Petitioner did not file its Petition until
`nine months after the ’346 patent issued and the complaint was amended to
`include the ’346 patent. Prelim. Resp. 17 (citing Ex. 1001; Ex. 2003).
`According to Patent Owner, there is an unexplained delay and Petitioner
`must be using this proceeding “as a second-bite at the apple” to relitigate
`validity in a different venue, not as an alternative to district court litigation.
`Id. Patent Owner also contends that Petitioner served the same grounds and
`asserted the same references in the same way four months before filing its
`Petition in this proceeding. Id. at 17–18 (citing Exs. 2004–2007).
`
`
`6 Patent Owner cites to Exhibit 1017 as the claim construction order, which
`we view as a typographical error because Exhibit 1017 is a video file, and
`the claim construction order is found at Exhibit 1047. See Exs. 1017, 1047.
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`Patent 10,328,346 B2
`Petitioner replies that “it is unclear which claims [Patent Owner] will
`pursue in district court” and Patent Owner “does not identify any unfair
`costs specifically resulting from the timing.” Reply 4–5. In its Sur-reply,
`Patent Owner argues that Petitioner’s delay in filing imposes an unfair cost
`because “Patent Owner necessarily faces the prospect of having to re-litigate
`Petitioner’s same invalidity challenges . . . in front of this Board almost a
`year later.” Sur-reply 4 (citing Prelim. Resp. 16–18; Reply 4). Patent
`Owner further argues that it “disclosed its asserted claims months before the
`Petition was filed” and “Petitioner challenges all claims of the ’346 Patent.”
`Id. (citing Ex. 2004, 2).
`In the parallel proceeding, due to the recently amended docket control
`order and new trial date several pertinent deadlines will be extended, and
`close of fact and expert discovery will occur past the date of this Decision.
`Ex. 1051, 2–3. The district court and the parties have made some
`investments in the parallel proceeding, which weigh in favor of denying
`institution. The investments thus far, however, are not substantial when
`compared to the activity that remains and appears to be ongoing. For
`example, activity related to filing and responding to dispositive motions and
`motions to strike expert testimony, and various pretrial actions remain, as
`well as depositions of foreign witnesses. See id. at 1–3. The parties also
`still have to expend significant resources associated with conducting the trial
`itself, as well as likely post-trial proceedings. Therefore, the present
`investment related to the parallel proceeding are not so significant that we
`should weigh this factor in favor of denying institution.
`As for the filing date of the 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 complied with 35 U.S.C. § 321(c), even
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`though the Petition was filed just before the end of the nine month window.
`Patent Owner does not make clear what effect filing late in the allowed
`window has on the investments made in the parallel proceeding by the
`parties and the court. See Prelim. Resp. 16–18. We disagree with Patent
`Owner’s argument that merely because portions of a trial and our final
`decision in this matter are slated to occur after a jury verdict in the district
`court litigation, that Petitioner’s decision to file the Petition amounts to an
`improper “second[]bite at the apple.” See id. at 17. Petitioner did nothing
`improper by filing its Petition within the statutorily-required nine-month
`window. Thus, we are not persuaded that the timing of Petitioner’s filing of
`its petition is a reason to deny institution under this Fintiv factor.
`Based on the record, we determine that this factor weighs moderately
`in favor of institution.
`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 what
`has been, and continues to be, litigated in the parallel district court
`proceeding.” Prelim. Resp. 18. According to Patent Owner, Petitioner
`asserts the same prior art in the district court proceeding. Id. at 19–20
`(citing Pet. 4; Ex. 1003; Ex. 1004; Ex. 2005, 8–9, 12; Ex. 2006; Ex. 2007;
`Ex. 2008, 2). Patent Owner also argues that any additionally cited prior art
`is immaterial to this factor. Id. at 19 n.3. Patent Owner further argues that
`Petitioner presented substantially the same anticipation and obviousness
`arguments against the same claims in the related district court proceeding.
`Id. at 20–23 (citing Pet. 17, 28–48, 53–68, 86–88; Ex. 2004, 6–41; Ex. 2005,
`8–9, 12; Ex. 2006, 2–24; Ex. 2007, 2–12; Ex. 2008, 2). Patent Owner also
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`contends that Petitioner challenges all of the claims at issue in the district
`court litigation, as well as a few additional dependent claims. Id. at 23–24
`(citing Pet. 1; Ex. 1001, 11:7–48, 12:66–13:39; Ex. 2004, 2; Ex. 2005, 1).
`Petitioner replies that “[s]hould [Patent Owner] reduce the number of
`claims it asserts in the parallel litigation and, institution is denied, significant
`issues related to the unasserted claims would be left unaddressed and forever
`insulated from PGR,” and “the patent ineligibility standard under the current
`USPTO Guidance is different from the clear and convincing standard for
`jury trials” and thus, “different standards result in different issues between
`the two forums.” Reply 5.
`In its Sur-reply, Patent Owner contends that “Petitioner argues that the
`challenged claims effectively rise or fall together.” Sur-reply 5 (citing Pet.
`28–86; Reply 5). Patent Owner also argues that it may still be inefficient to
`institute review because the district court may decide the validity of enough
`claims to decide key issues in this proceeding. Id.
`The record shows that the same statutory grounds,7 the same
`arguments, and the same prior art evidence are at issue with respect to the
`exact same challenged claims. “[I]f 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. Also, Petitioner’s
`
`
`7 Despite Petitioner’s argument that the “patent ineligibility standard” at the
`Office “is different” from the standard for jury trials (Reply 5), the fact
`remains that ineligibility under 35 U.S.C. § 101, as asserted in this Petition,
`overlaps with that issue in the parallel proceeding.
`
`15
`
`
`
`PGR2020-00043
`Patent 10,328,346 B2
`argument that Patent Owner may reduce the number of asserted claims at
`issue in the parallel proceeding is speculative.
`On this record, we determine that this factor weighs in favor of
`denying institution.
`5. Whether Petitioner and the Defendant in the Parallel Proceeding
`are the Same Party
`Patent Owner argues that “Petitioner and Patent Owner are the
`defendant and plaintiff, respectively, in the parallel district court
`proceeding.” Prelim. Resp. 26 (citing Pet. 1; Exs. 2001–2003). Petitioner
`replies that “[t]he ‘same party’ 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” and “[n]o other party can file a PGR at this
`point.” Reply 5. Patent Owner does not provide a reply for this factor. See
`generally Sur-reply.
`The record shows that Petitioner and Defendant in the parallel
`proceeding are the same. Although Petitioner correctly notes that no other
`party can file a petition for post-grant review of the ’346 patent because the
`filing window has closed and a defendant would be the most motivated to
`file such a petition, this factor only considers whether the petitioner and
`defendant are the same. Thus, this factor weighs in favor of denying
`institution.
`6. Other Circumstances that Impact the Board’s Exercise of
`Discretion, Including the Merits
`Petitioner filed petitions seeking inter partes and post-grant review
`against a number of Patent Owner’s patents, including patents related to the
`’346 patent and sharing the same trial date in the district court litigation.
`The most recent decisions addressing Petitioner’s requests for post-grant
`
`16
`
`
`
`PGR2020-00043
`Patent 10,328,346 B2
`review have been denied pursuant to § 324(a) after weighing the Fintiv
`factors. We consider those decisions as one of the “other considerations”
`that impacts our exercise of discretion, to ensure uniformity and consistency
`in our decisions addressing the same or substantially the same issues
`involving the same parties.
`In Supercell Oy, PGR2020-00034, decided just over one month ago,
`the Board considered a similar § 324(a) issue as presented here, involving
`the same December 2020 trial date that was in place at that time. See
`PGR2020-00034, Paper 13 at 10. The Board exercised its discretion to deny
`institution pursuant to § 324(a) after considering a trial date scheduled nine
`months before the statutory deadline for a final written decision, an overlap
`in issues and parties, minimal investment in the parallel proceeding, and a
`strong case on the merits of Petitioner’s §101 challenge. Id. at 25–26.
`Three additional decisions have issued within the past two weeks,
`each addressing § 324(a) issues very similar to those presented here, and
`involving the same trial date in the related district court litigation. In all
`three cases, the Board came to the same conclusions as to the first five
`factors as indicated in the analysis above, finding factor 1 neutral, factors 2,
`4, and 5 weighing towards denying institution, and factor 3 weighing against
`denying institution. Supercell Oy v. GREE, Inc., PGR2020-00046, Paper 13
`at 24; PGR2020-00049, Paper 14 at 21–22; PGR2020-00053, Paper 12 at 24.
`In addition, all three cases ultimately denied institution even though
`Petitioner’s § 101 challenge was deemed strong in each case, and
`Petitioner’s § 103 challenge was also deemed strong in two of the three
`cases. See Supercell Oy, PGR2020-00046, Paper 13 at 24 (denying
`institution despite strength of Petitioner’s § 101 challenge); PGR2020-
`00049, Paper 14 at 21–22 (denying institution despite Petitioner’s “strong”
`
`17
`
`
`
`PGR2020-00043
`Patent 10,328,346 B2
`§ 101 challenge and persuasive §103 challenge); PGR2020-00053, Paper 12
`at 24–25 (denying institution despite “strong” § 101 and § 103 challenges).
`Because these recent decisions address issues and briefing that substantially
`overlaps with the issues and briefing we address here, and the same district
`court litigation trial date,8 they support reaching the same outcome, and
`denying institution in this case.
`Accordingly, after considering our recent, closely related decisions
`and the merits as a whole, we conclude that this factor weighs in favor of
`denying institution.
`7. Holistic Analysis of Fintiv Order Factors
`We undertake a holistic analysis of the Fintiv Order factors,
`considering “whether efficiency and integrity of the system are best served
`by denying or instituting review.” Fintiv Order, Paper 11 at 6. As discussed
`above, factor 1 is neutral; factors 2, 4, 5, and 6 weigh towards denying
`institution; but factor 3 weighs moderately against denying institution.
`The evidence in the record indicates that duplication of efforts and
`inefficiency will result if we institute a trial because both the district court
`and the Board would consider substantially identical issues and the district
`court will reach trial seven months before we would reach a final decision.
`In addition, in related proceedings, the Board has already exercised its
`discretion to deny institution based on the same district court litigation and
`trial date. We deter
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