`571-272-7822
`
`
`
`
`
`
`
`Paper 15
`Date: December 8, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`PINN, INC.,
`Patent Owner.
`
`PGR2020-00073
`Patent 10,609,198 B2
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, KARL D. EASTHOM, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`PETTIGREW, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324
`
`I. INTRODUCTION
`Petitioner, Apple Inc., filed a Petition for post-grant review of
`claims 1, 3, 5, 6, 9, 12, 15, 17, 19, 21, 25, 27, and 29 of U.S. Patent No.
`10,609,198 B2 (Ex. 1001, “the ’198 patent”). Paper 2 (“Pet.”). Patent
`Owner, Pinn, Inc., filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`Pursuant to our authorization for supplemental briefing, Petitioner filed a
`
`
`
`
`
`PGR2020-00073
`Patent 10,609,198 B2
`Reply to Patent Owner’s Preliminary Response, and Patent Owner filed a
`Sur-reply. Paper 8 (“Pet. Reply”); Paper 9 (“PO Sur-reply”). Following
`briefing, in response to a joint request from the parties, we authorized the
`parties to file several documents from a concurrent district court proceeding
`involving the ’198 patent. See Ex. 1060, 3:3–7:21, 23:11–24:6, 24:14–
`25:22, 27:22–29:1, 30:5–31:9 (transcript of telephone conference, Nov. 24,
`2020);1 Exs. 1055–1059, 2018; see also Ex. 2019; Paper 13.2
`We have authority to determine whether to institute a post-grant
`review. 35 U.S.C. § 324(a) (2018); 37 C.F.R. § 42.4(a) (2020). Having
`considered the parties’ submissions, and for the reasons explained below, we
`exercise discretion under 35 U.S.C. § 324(a) to deny institution of post-grant
`review.
`
`II. BACKGROUND
`A. Real Parties-in-Interest
`Petitioner identifies itself as a real party-in-interest. Pet. 92. Patent
`Owner identifies itself as a real party-in-interest. Paper 4, 2 (Patent Owner’s
`Mandatory Notices).
`
`B. Related Matters
`The parties identify the following pending district court proceeding
`related to the ’198 patent: Pinn, Inc. v. Apple Inc., No. 8:19-cv-1805 (C.D.
`Cal.). Pet. 92; Paper 4, 2. The parties also identify two related patents that
`
`
`1 Citations are to the numbered pages of the transcript (upper right corner)
`rather than the numbered exhibit pages (bottom center).
`2 Among other things, we authorized the parties to submit a transcript of a
`district court hearing and a joint submission identifying portions of interest.
`Ex. 1060, 27:22–29:1. The transcript, originally filed as Paper 12, has been
`reentered in the record as Exhibit 2019, and Paper 12 has been expunged.
`Paper 13 contains the parties’ joint submission of citations to the transcript.
`
`2
`
`
`
`PGR2020-00073
`Patent 10,609,198 B2
`are involved in the same district court proceeding and are the subject of
`other petitions: U.S. Patent No. 9,807,491 B2 (“the ’491 patent,” challenged
`in IPR2020-00999) and U.S. Patent No. 10,455,066 B2 (challenged in
`PGR2020-00066). Pet. 92; Paper 4, 2.
`C. Overview of the ’198 Patent
`The ’198 patent describes a personal wireless media station that
`includes a main body and a wireless earbud. Ex. 1001, 5:2–5. Figure 1 of
`the ’198 patent is reproduced below:
`
`
`Figure 1 above illustrates personal wireless media station 100 comprising
`main body 102 and earbud 104. Id. Wireless earbud 104 includes earbud
`connector 118 for mating with main body connector 116 so that wireless
`earbud 104 and main body 102 form a single integrated body. Id. at 5:26–
`30, 5:35–38.
`The wireless earbud may be wirelessly paired with a smartphone to
`receive and play back audio data from the smartphone. Id. at 1:34–37. A
`user can initiate pairing between the wireless earbud and the smartphone by
`pressing a button on the main body. Id. at 11:29–33. The main body can
`charge the wireless earbud when the earbud is inserted into the main body.
`Id. at 8:45–47.
`
`3
`
`
`
`PGR2020-00073
`Patent 10,609,198 B2
`
`D. Illustrative Claim
`Challenged claims 1, 21, and 25 are independent. Challenged
`claims 3, 5, 6, 9, 12, 15, 17, and 19 depend directly from claim 1, and
`challenged claims 27 and 29 depend directly from claim 25. Claim 1 is
`illustrative of the claimed subject matter:
`1. A mobile system comprising:
`a mobile base station comprising a connection hole, a user input
`button, at least one processor, at least one memory, and
`circuitry; and
`a wireless earbud configured for plugging into the connection
`hole of the mobile base station to form an integrated body with
`the mobile base station,
`wherein, while the wireless earbud is plugged in the connection
`hole of the mobile base station, the wireless earbud is
`configured to electrically connect with the circuitry of the
`mobile base station and further configured to perform wired
`data communication with the mobile base station,
`wherein, while the wireless earbud is plugged in the connection
`hole of the mobile base station, the circuitry of the mobile base
`station is configured to obtain characteristics of the wireless
`earbud and send the characteristics to the at least one processor,
`wherein, while the wireless earbud is plugged in the connection
`hole of the mobile base station, the at least one processor is
`configured to execute computer program instructions stored in
`the at least one memory to initiate charging of a battery of the
`wireless earbud,
`wherein the wireless earbud has wireless communication
`capability for wirelessly pairing with a smartphone to perform
`data communication with the smartphone,
`wherein the mobile system is configured to generate sound
`when a mobile application installed on the smartphone is
`searching for the mobile system while the wireless earbud is
`paired with the smartphone,
`
`4
`
`
`
`PGR2020-00073
`Patent 10,609,198 B2
`wherein, in response to pressing of the user input button of the
`mobile base station, the at least one processor is configured to
`execute computer program instructions stored in the at least one
`memory to initiate processing for the wireless pairing,
`wherein the wireless earbud is not capable of wirelessly sending
`data to the mobile base station.
`Ex. 1001, 15:12–48.
`E. Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims are unpatentable based on
`the following grounds (Pet. 2–3):
`Claim(s) Challenged
`35 U.S.C. §
`1, 21, 27
`112(b)
`1, 3, 5, 9, 15, 19, 21,
`103
`25, 27
`1, 3, 5, 9, 12, 15, 17,
`19, 21, 25, 27
`1, 3, 5, 6, 9, 12, 15, 17,
`19, 21, 25, 27
`1, 3, 5, 6, 9, 12, 15, 17,
`19, 21, 25, 27
`12
`
`12
`
`12
`
`12
`
`103
`
`103
`
`103
`
`
`3 U.S. Patent No. 8,401,219 B2, issued Mar. 19, 2013 (Ex. 1004).
`4 U.S. Patent No. 8,086,281 B2, issued Dec. 27, 2011 (Ex. 1005).
`5 U.S. Patent No. 8,270,915 B2, issued Sept. 18, 2012 (Ex. 1006).
`6 U.S. Patent Application Publication No. US 2008/0125040 A1, published
`May 29, 2008 (Ex. 1008).
`7 U.S. Patent No. 8,078,787 B2, issued Dec. 13, 2011 (Ex. 1007).
`8 U.S. Patent No. 8,548,381 B2, issued Oct. 1, 2013 (Ex. 1016).
`9 U.S. Patent No. 8,838,184 B2, issued Sept. 16, 2014 (Ex. 1012).
`
`5
`
`103
`
`103
`
`103
`
`103
`
`References/Basis
`Indefiniteness
`Hankey,3 Rabu,4 Sanford,5
`Kalayjian6
`Hankey, Rabu, Sanford,
`Kalayjian, Lydon7
`Hankey, Rabu, Sanford,
`Kalayjian, Dua8
`Hankey, Rabu, Sanford,
`Kalayjian, Lydon, Dua
`Hankey, Rabu, Sanford,
`Kalayjian, Burnett9
`Hankey, Rabu, Sanford,
`Kalayjian, Lydon, Burnett
`Hankey, Rabu, Sanford,
`Kalayjian, Dua, Burnett
`Hankey, Rabu, Sanford,
`Kalayjian, Lydon, Dua, Burnett
`
`
`
`PGR2020-00073
`Patent 10,609,198 B2
`Claim(s) Challenged
`29
`
`35 U.S.C. §
`103
`
`29
`
`29
`
`29
`
`103
`
`103
`
`103
`
`References/Basis
`Hankey, Rabu, Sanford,
`Kalayjian, Kim10
`Hankey, Rabu, Sanford,
`Kalayjian, Lydon, Kim
`Hankey, Rabu, Sanford,
`Kalayjian, Dua, Kim
`Hankey, Rabu, Sanford,
`Kalayjian, Lydon, Dua, Kim
`
`
`Petitioner asserts that Hankey incorporates by reference in their
`entirety the disclosures of Rabu and Sanford. Pet. 21–22 (citing Ex. 1004,
`1:28–41, 19:21–25, 48:18–30, 49:16–25, 50:39–50, 51:36–57). Throughout
`its papers, Petitioner uses “Hankey Group” to refer to the combined
`teachings of Hankey, Rabu, and Sanford. Id. at 22–23; see id. at 2 n.1.
`Petitioner argues in the alternative that a person of ordinary skill in the art
`(1) would have understood Hankey to be a single reference incorporating
`specific portions of Rabu and Sanford, or (2) would have found it obvious to
`combine the teachings of Hankey, Rabu, and Sanford. Id. at 23, 25–28.
`We need not determine whether Hankey expressly incorporates
`disclosure from Rabu and Sanford for purposes of this Decision. For
`convenience, we will sometimes refer collectively to Hankey, Rabu, and
`Sanford as the “Hankey Group” or the “Hankey Group references.”
`F. Eligibility for Post-Grant Review
`The post-grant review (“PGR”) provisions of the Leahy-Smith
`America Invents Act (“AIA”)11 apply only to patents subject to the first
`inventor to file provisions of the AIA. AIA § 6(f)(2)(A). Specifically, the
`
`
`10 U.S. Patent Application Publication No. US 2017/0272561 A1, published
`Sept. 21, 2017 (Ex. 1015).
`11 Pub. L. No. 112-29, 125 Stat. 284 (2011).
`
`6
`
`
`
`PGR2020-00073
`Patent 10,609,198 B2
`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
`be).” 35 U.S.C. § 321(c); see also 37 C.F.R. § 42.202(a) (setting forth the
`same).
`Petitioner asserts that the ’198 patent is available for post-grant
`review. Pet. 1. The ’198 patent is a continuation of the patent application
`leading to the ’491 patent, which is a continuation of a PCT application filed
`on April 4, 2016, and the ’198 patent claims priority to a provisional
`application filed on April 3, 2015. Ex. 1001, codes (60), (63); see Pet. 1.
`The Petition was filed on July 1, 2020, which is within nine months after
`March 31, 2020, the issue date of the ’198 patent. Ex. 1001, code (45),
`Pet. 1. On this record, we determine that the ’198 patent is eligible for post-
`grant review.
`
`III. ANALYSIS
`Patent Owner urges the Board to exercise discretion under 35 U.S.C.
`§ 324(a) to deny institution of post-grant review due to the advanced stage of
`the parallel proceeding in the U.S. District Court for the Central District of
`California. Prelim. Resp. 30–39 (citing, e.g., Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”);
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (PTAB May 13, 2020)
`(informative) (“Fintiv Decision”); NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential)).
`
`7
`
`
`
`PGR2020-00073
`Patent 10,609,198 B2
`According to Patent Owner, facts considered under each of the six Fintiv
`factors support denial of institution in this case. PO Sur-reply 12. Petitioner
`argues that denial under § 324(a) is not warranted because the issues raised
`in the Petition will not be resolved in the district court proceeding. Pet.
`Reply 3.
`
`A. 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”)12 at 55.
`In exercising the Director’s discretion under 35 U.S.C. §§ 314(a) and
`324(a), the Board may consider, for example, events in related district court
`proceedings. TPG at 58. The Board’s precedential decision in NHK
`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, Paper 8 at 20.
`Additionally, the Board’s precedential order in Fintiv identifies several
`
`
`12 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`8
`
`
`
`PGR2020-00073
`Patent 10,609,198 B2
`factors to be considered and balanced when a patent owner argues the Board
`should exercise discretion to deny institution in view of the advanced state
`of a parallel proceeding:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Fintiv, Paper 11 at 5–6. According to Fintiv, these factors relate to
`“efficiency, fairness, and the merits” and require the Board to take “a
`holistic view of whether efficiency and integrity of the system are best
`served by denying or instituting review.” Id. at 6.
`We recognize that NHK Spring and Fintiv 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 Petition for post-grant review. As noted above, however, the
`pertinent statutory language is the same in both section 314(a) and section
`324(a). Moreover, the overall policy justifications associated with the
`exercise of discretion—inefficiency, duplication of effort, and the risk of
`inconsistent results—apply to post-grant review proceedings under
`35 U.S.C. § 324(a). Accordingly, we consider the factors set forth in Fintiv
`in view of the facts presented here. See, e.g., Supercell Oy v. Gree, Inc.,
`
`9
`
`
`
`PGR2020-00073
`Patent 10,609,198 B2
`PGR2020-00034, Paper 13 at 5–26 (PTAB Sept. 3, 2020) (analyzing Fintiv
`factors and denying institution of post-grant review).
`B. Fintiv Factor 1: Stay in the Parallel Proceeding
`Petitioner argues in the Petition that “the trial could be stayed.”
`Pet. 8. On August 27, 2020, however, the district court denied Petitioner’s
`motion to stay the parallel proceeding pending post grant review
`proceedings. Ex. 2002; see Prelim. Resp. 32. The district court found that
`(1) the case was “further along than would merit a stay,” (2) the “potential
`savings of judicial resources” if a stay were granted “are outweighed by the
`need to delay the proceedings and find new dates in the Court’s busy
`calendar,” and (3) “the increased difficulty of proving its case after the stay
`is lifted [would] be especially prejudicial to Plaintiff.” Ex. 2002, 3. The
`court did not indicate it would consider a renewed motion or reconsider a
`motion to stay if the Board instituted a trial. See id. Petitioner does not
`subsequently address this first Fintiv factor in its Reply, which was filed
`after the district court denied the motion to stay. Pet. Reply 1–4.
`Under the circumstances presented here, when a district court has
`denied a motion to stay and has not indicated it would reconsider if a
`post-grant review is instituted, the facts underlying this factor weigh in favor
`of denying institution. See Fintiv, Paper 11 at 7–8.
`C. Fintiv Factor 2: Trial Date in the Parallel Proceeding
`A jury trial is scheduled to begin in the parallel district court
`proceeding on January 26, 2021, more than ten months before a final written
`decision would be due if we instituted a post-grant review. Ex. 1032, 2
`(Scheduling Order); see Pet. 8; Prelim. Resp. 32–33. Petitioner argues in the
`Petition that the scheduled trial date is “not reliable” for several reasons.
`Pet. 8. First, Petitioner asserts that the district court judge presiding over the
`
`10
`
`
`
`PGR2020-00073
`Patent 10,609,198 B2
`parallel proceeding “has historically postponed trials.” Id. (citing Ex. 1033,
`1; Ex. 1034, 1; Ex. 1035, 1; Ex. 1036, 3; Ex. 1037, 1; Ex. 1038, 1
`(scheduling orders from three other cases pending before the judge)). Next,
`citing cases from a different district court in a different state, Petitioner
`argues it is “possible (even likely)” that the trial in the parallel district court
`proceeding will be rescheduled due to the COVID-19 pandemic. Id. at 9
`(citing Ex. 1041, Ex. 1042, Ex. 1043, 1). Finally, Petitioner argues that
`“tentative trial schedules are generally speculative and unreliable.” Id. at 10.
`Patent Owner asserts that the district court repeatedly has reminded
`the parties that the January 26, 2021, trial date is firm. Prelim. Resp. 33
`(citing Ex. 2002, 2–3; Ex. 2003, 7:3–8 (scheduling conference); Ex. 2004,
`25:16–27:4 (discovery hearing)). In the order denying Apple’s motion to
`stay, for example, the district court reiterated that the trial is scheduled for
`January 26, 2021. Ex. 2002, 3. Patent Owner also notes that Apple “has not
`filed any sort of motion for continuance or motion to amend the scheduling
`order.” Prelim. Resp. 33–34.
`Although Petitioner makes general assertions as to the potential
`impact of the COVID-19 pandemic, Petitioner does not cite specific, non-
`speculative evidence to suggest that delay of the trial date is likely in the
`parallel district court proceeding at issue here. At the same time, Patent
`Owner presents evidence tending to show that the district court trial, set to
`begin in less than two months, likely will proceed as scheduled. Moreover,
`even if the district court were to delay the trial by a few months, the trial still
`would be completed well before a final written decision would issue in our
`proceeding. For these reasons, the facts underlying this second Fintiv factor
`strongly favor denying institution.
`
`11
`
`
`
`PGR2020-00073
`Patent 10,609,198 B2
`D. Fintiv Factor 3: Investment by the Court and the Parties in
`the Parallel Proceeding
`Patent Owner argues that this factor weighs heavily in favor of
`discretionary denial because the court and the parties have made significant
`investments in the parallel proceeding. Prelim. Resp. 35. At the time Patent
`Owner filed the Preliminary Response on October 1, 2020, the Technical
`Special Master appointed by the district court had conducted a claim
`construction hearing and issued a Report and Recommendation on Claim
`Construction. Id.; Ex. 2006. Further, fact discovery had been completed,
`and much expert discovery had taken place. Prelim. Resp. 35 (citing
`Ex. 2005). Since then, expert discovery has been completed, the district
`court has heard claim construction arguments and adopted the Technical
`Special Master’s Report and Recommendation on Claim Construction, and
`dispositive motions have been filed and argued by the parties and decided by
`the district court. See Ex. 3002 (district court docket sheet as of Nov. 30,
`2020); Ex. 2019 (transcript of district court motions hearing); Ex. 3003
`(Order Adopting Technical Special Master’s Report and Recommendation
`Regarding Claims Construction); Ex. 1059 (Order Granting in Part
`Defendant’s Motion for Summary Judgment); Ex. 1032 (Scheduling Order).
`Petitioner does not address this factor in its Petition or Reply. See Pet. 5–13;
`Pet. Reply 1–4.
`The parties and the district court have invested substantial time and
`effort addressing patent validity in preparing for the impending trial in the
`parallel proceeding. Accordingly, the facts underlying this factor strongly
`favor denying institution to prevent the inefficient use of Board resources as
`well as duplicative costs to the parties.
`
`12
`
`
`
`PGR2020-00073
`Patent 10,609,198 B2
`E. Fintiv Factor 4: Overlap Between Issues Raised in the
`Petition and Parallel Proceeding
`This fourth Fintiv factor involves consideration of inefficiency
`concerns and the possibility of conflicting decisions. Fintiv, Paper 11 at 12.
`Therefore, “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.” Id. “Conversely, if the petition
`includes materially different grounds, arguments, and/or evidence than those
`presented in the district court, this fact has tended to weigh against
`exercising discretion to deny institution . . . .” Id. at 12–13.
`Petitioner argues it “has eliminated any risk of duplicated efforts in
`Apple’s district court defense, by unconditionally stipulating to counsel for
`Pinn that Apple will not pursue district court invalidity challenges based on
`grounds featuring the same primary references as those featured in the
`grounds of the instant Petition.” Pet. 5–6 (emphasis omitted) (citing
`Ex. 1031, 1–3 (June 9, 2020, letter from Apple Counsel to Pinn Counsel)).
`Petitioner further notes that to avoid any future need for challenging the
`patentability or validity of claim 6, the Petition challenges dependent claim 6
`even though it is not currently asserted against Apple or included in Apple’s
`invalidity contentions in district court. Id. at 6 n.4. Therefore, Petitioner
`concludes, “the prior art-based grounds in the instant Petition are unique in
`terms of claims and prior art, neither of which will be addressed in Apple’s
`co-pending district court litigation,” and thus “Fintiv factor 4 strongly favors
`institution.” Id. at 6 (emphasis omitted).
`Patent Owner contends that “Petitioner is asserting the exact same
`invalidity grounds at the district court level” as those asserted here. Prelim.
`Resp. 36. Patent Owner further contends that Apple “violated at least the
`
`13
`
`
`
`PGR2020-00073
`Patent 10,609,198 B2
`spirit, if not the letter, of its ‘unconditional stipulation’” when Apple served
`Pinn with its expert report containing hundreds of pages of invalidity charts
`asserting the Hankey Group patents as primary references. Id. at 37; see id.
`at 28 (citing Ex. 2001 (excerpts from Opening Expert Report of Jonathan
`Wells)); see also Ex. 2001, 333–519 (invalidity claim charts based on the
`Hankey Group references for claims of the ’198 patent). Regarding claim 6,
`challenged in only two of the seventeen grounds asserted in the Petition,
`Patent Owner contends that “Apple seems to have included it in the Petition
`for the sole purpose of ensuring that the challenged claims of the Petition are
`not ‘identical’ to that of the parallel district court proceeding.” Prelim.
`Resp. 37.
`In its Reply, Petitioner asserts it has represented to the district court in
`writing that “Apple has unconditionally stipulated that it will not raise the
`invalidity grounds at trial in this case that are being resolved by the PTAB”
`and that Apple “will not use Hankey Group as primary invalidity
`references.” Pet. Reply 1 (quoting Ex. 1048, 7 (Motion to Stay)). Petitioner
`concedes that Dr. Wells’s claim charts map the Hankey Group to every
`claim limitation. Id. at 2 n.2. Nevertheless, Petitioner contends that
`Dr. Wells limited his analysis based on the Hankey Group to “discrete
`features and functions” and that, consistent with the stipulation, Dr. Wells
`may rely on the Hankey Group “as a secondary reference in combination
`with primary references to address discrete features.” Id. at 2 & n.2.
`Petitioner also asserts that Apple “has a business interest in challenging
`claim 6,” which “is directed, in part, to a volume control button, which is a
`component included in several Apple products.” Id. at 4.
`In its Sur-reply, Patent Owner argues, among other things, that in
`view of Apple’s invalidity contentions and its expert report in district court,
`
`14
`
`
`
`PGR2020-00073
`Patent 10,609,198 B2
`“Patent Owner has been forced to expend significant time and resources in
`addressing this duplicative proceeding when it has already had to address the
`exact same issues in the district court.” PO Sur-Reply 11. Patent Owner
`argues that the issues raised in the Petition regarding the Hankey Group are
`substantially the same as issues presented in the district court proceeding for
`another, independent reason—the Apple Bluetooth (BT) Headset product
`that Apple is asserting as prior art in district court is substantially identical to
`the Hankey Group references asserted here, which are all patents assigned to
`Apple. Id. at 12–13 (citing Ex. 1054, 78, 80, 100, 102, 147–149, 171;
`Ex. 2017, 41, 77, 114–115, 128; Ex. 1004, Fig. 66; Ex. 1005, Figs. 1, 5a, 5b,
`6a). Regarding claim 6, Patent Owner takes issue with Petitioner’s “vague[]
`suggest[ion]” that it “is relevant to some other unnamed and unaccused
`products” and argues that “under basic theories of claim preclusion, Patent
`Owner cannot assert unasserted claim 6 against Apple for any present or past
`acts.” Id. at 13.
`As noted above, we authorized the parties to submit several
`documents that were entered in the district court proceeding after the parties
`completed their briefing here. Several days after Patent Owner filed its
`Sur-reply in this proceeding, Apple reiterated its stipulation by filing a
`Notice of Stipulation in the parallel district court proceeding. Ex. 1055. In
`that Notice, Apple “inform[ed] the Court of its intent to be bound by the
`stipulation” that it “will not challenge in this forum validity of the patents-
`in-suit . . . based on the Hankey Group references as primary references.”
`Id. at 2.
`In its Response to Apple’s Notice, Pinn requested the district court to
`“strike Apple’s stipulation on the grounds that it is an improper attempt by
`Apple to forum-shop selected aspects of the validity issues before the Court
`
`15
`
`
`
`PGR2020-00073
`Patent 10,609,198 B2
`that will, if permitted, result in piecemeal litigation and unnecessarily
`prolong the parties’ dispute.” Ex. 1056, 2. Pinn also filed a Motion for
`Relief in which it requested “leave to amend its pleadings to add a claim for
`declaratory judgment that mirrors Apple’s contentions so Pinn can seek
`judgment of no invalidity in view of the Hankey Group prior art references.”
`Ex. 1057, 2; see also id. at 21 (“Pinn wants the Hankey Group invalidity
`issue resolved sooner rather than later and efficiently rather than through
`another proceeding in another forum.”).
`In opposition to Pinn’s request to amend its pleadings, Apple asserted
`that its unconditional stipulation not to use the Hankey Group references as
`primary references “should be enough for the PTAB to institute Apple’s
`requested IPRs.” Ex. 1058, 3. Nevertheless, Apple presented a revised
`stipulation in which it “agrees not to use the Hankey Group in this case for
`any purpose—even as secondary references—if the PTAB institutes all of
`the requested IPRs and post-grant reviews based on the Hankey Group,
`namely IPR2020-00999, PGR2020-00066, and PGR2020-00073.” Id. In
`reply, Pinn requested that the district court strike all of Apple’s proffered
`stipulations and reiterated its argument that good cause exists to add its
`requested declaratory judgment claim so that the Hankey Group invalidity
`issues can be tried “soon, finally, and economically.” Ex. 2018, 6.
`We begin our analysis of this factor by considering the degree of
`overlap between the unpatentability grounds raised in the Petition and the
`invalidity grounds presented in the district court proceeding. The Petition
`asserts obviousness grounds based on Hankey, Rabu, and Sanford (i.e., the
`Hankey Group references) in combination with one or more of the following
`references: Kalayjian, Lydon, Dua, Burnett, and Kim. Pet. 2–3.
`Petitioner’s invalidity contentions in the district court proceeding include all
`
`16
`
`
`
`PGR2020-00073
`Patent 10,609,198 B2
`of the references in the Petition. See, e.g., Ex. 2014, 16–18 (invalidity
`contentions); Ex. 2001, 3, 357, 417, 435, 452, 494, 501, 519 (Wells expert
`report). Contrary to Petitioner’s argument, its initial stipulation not to
`pursue obviousness challenges in district court with the Hankey Group
`patents as “primary references” has little mitigating effect. As Petitioner
`seems to acknowledge, the stipulation still would permit it to rely on the
`Hankey Group to teach the same claim limitations during the district court
`trial and in this proceeding. See Pet. Reply 2 & n.2. Whether Petitioner
`identifies an additional reference as “primary” and the Hankey Group as
`“secondary” is of no moment, because “where the relevant factual inquiries
`underlying an obviousness determination are otherwise clear,
`characterization . . . of prior art as ‘primary’ and ‘secondary’ is merely a
`matter of presentation with no legal significance.” In re Mouttet, 686 F.3d
`1322, 1333 (Fed. Cir. 2012) (citing In re Bush, 296 F.2d 491, 496 (CCPA
`1961) (Rich, J.); In re Krammes, 314 F.2d 813, 816–17 (CCPA 1963)).
`Weeks after the parties had completed briefing in this proceeding, and
`approximately a month before our statutory deadline for determining
`whether to institute a post-grant review, Petitioner proffered a revised
`stipulation by further agreeing not to use the Hankey Group references in the
`district court proceeding if the Board institutes review in this case and in
`both IPR2020-00999 and PGR2020-00066. Ex. 1058, 3. This added
`conditional stipulation is somewhat broader than the original and lessens to
`some degree the concerns about duplicative efforts between the Board and
`the district court. See Sand Revolution II, LLC v. Cont’l Intermodal Group –
`Trucking LLC, IPR2019-01393, Paper 24 at 12 (PTAB June 16, 2020)
`(informative). But even if Petitioner complies with the modified stipulation
`
`17
`
`
`
`PGR2020-00073
`Patent 10,609,198 B2
`in district court, Petitioner’s last minute attempt to tip this Fintiv factor in its
`favor does not completely eliminate overlap of issues.
`First, most of the obviousness grounds asserted in the Petition against
`the independent claims cite references other than the Hankey Group for
`certain key limitations, and Petitioner’s district court invalidity contentions,
`supported by Dr. Wells’s expert report, rely on these same references for
`teaching the same claim limitations. For example, independent claim 1
`requires instructions “to initiate processing for the wireless pairing” of the
`wireless earbud with the smartphone “in response to pressing of the user
`input button of the mobile station,” and independent claims 21 and 25 recite
`similar limitations. Ex. 1001, 15:42–46, 18:5–9, 18:52–56. In various
`obviousness grounds, the Petition relies on Lydon or Dua for teaching this
`limitation. See, e.g., Pet. 67–69, 72–73, 77–78, 80–81. Similarly, Dr. Wells
`cites both Lydon and Dua for teaching this limitation. See, e.g., Ex. 1054,
`73 (¶ 227), 110 (¶ 326), 162–165 (¶¶ 490–494, 497); Ex. 2001, 452;
`Ex. 2014, 63–64. As another example, independent claim 1 recites “wherein
`the mobile system is configured to generate sound when a mobile
`application installed on the smartphone is searching for the mobile system
`while the wireless earbud is paired with the smartphone,” and independent
`claims 21 and 25 recite similar limitations. Ex. 1001, 15:38–41, 18:1–4,
`19:4–7. The Petition relies on Kalayjian for teaching this limitation, and
`Dr. Wells similarly cites Kalayjian in his obviousness analysis. See, e.g.,
`Pet. 46–51; Ex. 1054, 75–77 (¶¶ 236–239), 118–120 (¶¶ 346–349), 169–171
`(¶¶ 509–512); Ex. 2001, 435; Ex. 2014, 70.
`Patent Owner also asserts that the Apple BT Headset, one of the main
`pieces of prior art presented in Petitioner’s district court invalidity
`contentions, is “subst