Filed: March 26, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________
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`COSENTINO S.A.U. and C & C NORTH AMERICA INC.,
`Petitioners,
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`v.
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`CAMBRIA COMPANY LLC,
`Patent Owner.
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`_________________
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`Case No. PGR2021-00010
`U.S. Patent No. 10,773,418
`_________________
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`PETITIONERS’ PRE-INSTITUTION REPLY
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________
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`COSENTINO S.A.U. and C & C NORTH AMERICA INC.,
`Petitioners,
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`v.
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`CAMBRIA COMPANY LLC,
`Patent Owner.
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`_________________
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`Case No. PGR2021-00010
`U.S. Patent No. 10,773,418
`_________________
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`PETITIONERS’ PRE-INSTITUTION REPLY
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`Petitioners’ Pre-Institution Reply
`U.S. Patent No. 10,773,418
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`TABLE OF CONTENTS
`Preliminary Statement ..................................................................................... 1
`I.
`Fintiv Factors 3, 4, and 6 Weigh Strongly In Favor of Institution .................. 1
`II.
`III. The Remaining Fintiv Factors Do Not Call for Discretionary Denial ............ 3
`IV. Conclusion ....................................................................................................... 5
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`Petitioners’ Pre-Institution Reply
`U.S. Patent No. 10,773,418
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Apple Inc. v. Seven Networks, LLC,
`IPR2020-00235, Paper 10 (PTAB July 28, 2020) ................................................ 4
`Apple, Inc. v. Fintiv Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) ........................................... 1, 2
`Beckman Coulter, Inc. v. Sysmex Corp.,
`IPR2020-01503, Paper 10 (PTAB Feb. 23, 2021) ........................................ 3, 4, 5
`Cizian, LLC v. Kerr Machine Co.,
`PGR2020-00065, Paper 10 (PTAB Dec. 3, 2020) ............................................ 3, 4
`Samsung Elecs. Am., Inc. v. Snik LLC,
`IPR2020-01325, Paper 10 (PTAB Mar. 9, 2021) ......................................... 2, 3, 5
`SK hynix Inc. v. Netlist, Inc.,
`IPR2020-01421, Paper 10 (PTAB Mar. 16, 2021) ................................... 1, 2, 3, 4
`Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) ......................................... 1, 2, 3
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`ii
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`I.
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`Petitioners’ Pre-Institution Reply
`U.S. Patent No. 10,773,418
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`Preliminary Statement
`Petitioners submit this Pre-Institution Reply pursuant to the Board’s March
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`17, 2021, order requesting additional briefing regarding the application of the Fintiv
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`factors. (Paper 8.) Fintiv outlined six non-exhaustive factors regarding the Board’s
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`discretionary determination at institution. Apple, Inc. v. Fintiv Inc., IPR2020-00019,
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`Paper 11 (PTAB Mar. 20, 2020) (precedential). The Board considers all the “relevant
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`circumstances, including the merits, in an effort to balance considerations[,] such as
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`system efficiency, fairness, and patent quality.” E.g., Sotera Wireless, Inc. v. Masimo
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`Corp., IPR2020-01019, Paper 12 at 12 (PTAB Dec. 1, 2020). If “much work remains
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`to be completed in the parallel proceeding, [if the p]etitioner[s] [are] diligent in filing
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`. . . , and [if the p]etitioner[s], by [their] broad stipulation, mitigated concerns about
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`duplication of effort and [a] potential for inconsistent results,” institution is “strongly
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`favor[ed]” and the “other factors favoring denial” such as having an “early trial date”
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`are “outweigh[ed].” SK hynix Inc. v. Netlist, Inc., IPR2020-01421, Paper 10, at 13
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`(PTAB Mar. 16, 2021). That is the case here. Institution is warranted.
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`II. Fintiv Factors 3, 4, and 6 Weigh Strongly In Favor of Institution
`Fintiv Factor 3 weighs in favor of institution because “much work remains to
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`be completed in the parallel proceeding.” Id. Judge Albright held a Markman hearing
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`on March 11, 2021, but “most of the work in a patent case” in his court “occurs after
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`the Markman hearing.” Id. at 9. The parties have engaged in limited fact discovery,
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`1
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`have not served final infringement and validity contentions, and have not yet started
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`Petitioners’ Pre-Institution Reply
`U.S. Patent No. 10,773,418
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`expert discovery. With the exception of declarations made early in the case without
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`substantive discovery or cross examination,1 few documents have been exchanged.
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`Because “much work remains,” Factor 3 weighs strongly in favor of institution. Id.
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`at 8-10; Sotera, IPR2020-01019, Paper 12 at 16-17; Samsung Elecs. Am., Inc. v. Snik
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`LLC, IPR2020-01325, Paper 10 at 9 (PTAB Mar. 9, 2021).
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`Likewise, Petitioners’ diligence in filing their Petition mitigates any concerns
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`about investment. SK hynix, IPR2020-01421, Paper 10, at 9. Petitioners filed this
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`Petition within two weeks of service of the complaint, and well before any litigation-
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`related efforts started. (See Paper 1 at 91; Ex. 1025.) “If the evidence shows that the
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`petitioner filed the petition expeditiously, . . . this fact has weighed against exercising
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`the authority to deny institution.” Id. (quoting Fintiv, IPR2020-00019, Paper 11 at
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`11); see also Sotera, IPR2020-01019, Paper 12 at 16-17; Samsung, IPR2020-01325,
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`Paper 10 at 9.
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`Fintiv Factor 4 addresses “overlap between issues raised in the petition and in
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`the parallel proceeding.” This factor also weighs in favor of institution. Petitioners
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`1 The parties submitted declarations in connection with Patent Owner’s request for
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`a preliminary injunction, which the district court denied. Few other documents have
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`been produced, and the declarants have not been deposed.
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`2
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`hereby stipulate that if the Board institutes this PGR, Petitioners will not pursue in
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`Petitioners’ Pre-Institution Reply
`U.S. Patent No. 10,773,418
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`the parallel proceeding any ground raised or that could have reasonably been raised
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`in this PGR. This stipulation obviates concerns about potential overlap between the
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`issues in this proceeding and the district court. As such, this weighs strongly in favor
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`of institution. E.g., SK hynix, IPR2020-01421, Paper 10, at 10-12; Sotera, IPR2020-
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`01019, Paper 12 at 18-19; Cizian, LLC v. Kerr Machine Co., PGR2020-00065, Paper
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`10 at 26 (PTAB Dec. 3, 2020).2
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`Fintiv Factor 6—“circumstances and considerations that impact the Board’s
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`exercise of discretion, including the merits”—likewise weighs in favor of institution.
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`The Petition submits a strong challenge to the ’418 claims. (See Paper 1.) And Patent
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`Owner does not meaningfully challenge the merits. (Paper 7.) This supports granting
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`institution here. See, e.g., Beckman Coulter, Inc. v. Sysmex Corp., IPR2020-01503,
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`Paper 10 at 27-29 (PTAB Feb. 23, 2021); Samsung, IPR2020-01325, Paper 10 at 10.
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`III. The Remaining Fintiv Factors Do Not Call for Discretionary Denial
`Fintiv Factor 1 addresses “whether the court granted a stay or evidence exists
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`that one may be granted if a proceeding is instituted.” The parallel court proceeding
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`is pending before Judge Albright in the Western District of Texas. Neither party has
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`2 This stipulation need not be entered in district court before it can be considered by
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`the Board in its analysis. SK hynix, IPR2020-01421, Paper 10, at 11.
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`3
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`sought a stay at this time, and the Board in similar situations has declined to “predict
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`Petitioners’ Pre-Institution Reply
`U.S. Patent No. 10,773,418
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`how the District Court would proceed” if a stay request is requested.3 See SK hynix,
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`IPR2020-01421, Paper 10, at 7-8; see also Beckman Coulter, IPR2020-01503, Paper
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`10 at 22-23; Apple Inc. v. Seven Networks, LLC (“Apple”), IPR2020-00235, Paper
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`10 at 7-8 (PTAB July 28, 2020). Factor 1 is therefore neutral.
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`Fintiv Factor 2 addresses the “proximity of the court’s trial date to the Board’s
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`projected statutory deadline for a final written decision.” As Patent Owner provides
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`in its Preliminary Response (Paper 7), the Western District of Texas set a trial date
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`of October 12, 2021. But whether a trial will begin on that date is uncertain. Factor 2
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`does not call for discretionary denial. See Apple, IPR2020-00235, Paper 10 at 8-9
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`(uncertainty in trial date did not weigh heavily in favor of denial, or outweigh factors
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`supporting institution); Cizian, PGR2020-00065, Paper 10 at 26.
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`First, Petitioners understand that Judge Albright has multiple trials scheduled
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`to begin the week of October 12, 2021. If multiple cases go forward, one or more of
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`them will likely be moved. Neither party in the parallel court proceeding involving
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`the ’418 patent has requested a jury trial, making it more susceptible to rescheduling.
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`3 Patent Owner’s contends “[h]aving chosen to expedite the case schedule . . . , there
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`is no basis to believe that the Court would grant a stay.” (E.g., Paper 7 at 5.) But this
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`contention only underscores the speculative nature of the stay inquiry.
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`4
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`Petitioners’ Pre-Institution Reply
`U.S. Patent No. 10,773,418
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`Second, Patent Owner received a notice of allowance for a patent related to
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`the ’418 patent. Petitioners expect Patent Owner to seek to assert this newly allowed
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`patent. If so, the parties will need to re-do claim construction and contentions.
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`Third, if the Board institutes, Petitioners request the Scheduling Order shorten
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`the deadline for Petitioners’ reply (Due Date 2) to two months from Patent Owner’s
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`response. Petitioners also request a shortened timeline for responding to motions to
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`amend, if any. Granting this request would not unfairly prejudice Patent Owner, for
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`the remaining deadlines need not change. This would reduce the time between when
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`the Board will issue its final written decision and the pending district court trial date,
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`neutralizing Factor 2.
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`Fintiv Factor 5 addresses whether “petitioner and the defendant in the parallel
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`proceeding are the same party.” Although Petitioners and Patent Owner are the same
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`parties involved in the district court case, this factor does not (and cannot) outweigh
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`the strength of factors 3, 4, and 6, weighing in favor of institution. See, e.g., Beckman
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`Coulter, IPR2020-01503, Paper 10 at 29 (strong factors 3, 4, and 6 outweighing the
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`remaining factors); Samsung, IPR2020-01325, Paper 10 at 10.
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`IV. Conclusion
`For the reasons set forth above, Petitioners respectfully request that the Board
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`institute this proceeding.
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`Dated: March 26, 2021
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`Petitioners’ Pre-Institution Reply
`U.S. Patent No. 10,773,418
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`Respectfully submitted,
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`/Jeffrey C. Totten/
`Jeffrey C. Totten (Reg. No. 65,229)
`Jennifer H. Roscetti (Reg. No. 71,998)
`Sydney R. Kestle (Reg. No. 78,725)
`Anthony J. Berlenbach (Reg. No. 77,963)
`Brooke M. Wilner (Reg. No. 79,068)
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`Attorneys for Petitioners
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`6
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`Petitioners’ Pre-Institution Reply
`U.S. Patent No. 10,773,418
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing Petitioners’ Pre-
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`Institution Reply was served electronically via email on March 26, 2021, in its
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`entirety on the following:
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`Katherine A. Vidal
`Louis L. Campbell
`Eimeric Reig-Plessis
`WINSTON & STRAWN LLP
`275 Middlefield Rd, Suite 205
`Menlo Park, California 94025
`Winston-Cambria-PTAB@winston.com
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`Jason Z. Pesick
`WINSTON & STRAWN LLP
`35 W. Wacker Drive
`Chicago, IL 60601
`Winston-Cambria-PTAB@winston.com
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`Patent Owner has consented to service by email.
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`Date: March 26, 2021
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`By: /William Esper/
`William Esper
`Legal Assistant
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`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
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