Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Date: July 7, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`Petitioner,
`
`Vv.
`
`GREE INC.,
`Patent Owner.
`
`PGR2021-00034
`Patent 10,610,771 B2
`
`Before LYNNE H. BROWNE, HYUN J. JUNG,and
`AMANDAF. WIEKER, Administrative Patent Judges.
`
`JUNG,Administrative Patent Judge.
`
`DECISION
`Denying Institution of Post-Grant Review
`35 US.C. § 324, 37 CFR. § 42.4
`Dismissing Petitioner’s Motion to Seal
`37 CFR. §§ 42.14, 42.54
`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`
`Supercell Oy (‘Petitioner’) filed a Petition (Paper 2, “Pet.”’)
`
`requesting institution of a post-grant review of claims 1—18 of
`
`U.S. Patent No. 10,610,771 B2 (Ex. 1001, “the ’771 patent”). Petitioner also
`
`
`571-272-7822
`
`Paper 10
`Date: July 7, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`Petitioner,
`
`Vv.
`
`GREE INC.,
`Patent Owner.
`
`PGR2021-00034
`Patent 10,610,771 B2
`
`Before LYNNE H. BROWNE, HYUN J. JUNG,and
`AMANDAF. WIEKER, Administrative Patent Judges.
`
`JUNG,Administrative Patent Judge.
`
`DECISION
`Denying Institution of Post-Grant Review
`35 US.C. § 324, 37 CFR. § 42.4
`Dismissing Petitioner’s Motion to Seal
`37 CFR. §§ 42.14, 42.54
`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`
`Supercell Oy (‘Petitioner’) filed a Petition (Paper 2, “Pet.”’)
`
`requesting institution of a post-grant review of claims 1—18 of
`
`U.S. Patent No. 10,610,771 B2 (Ex. 1001, “the ’771 patent”). Petitioner also
`
`
`
`PGR2021-00034
`Patent 10,610,771 B2
`
`filed a Motion to Seal Exhibit 1007 and for Entry of Protective Order.
`
`Paper 3. GREE,Inc. (“Patent Owner’’) filed a Preliminary Response
`
`(Paper7, “Prelim. Resp.”). With our authorization, Petitioner filed a Reply
`
`to Patent Owner’s Preliminary Response (Paper8, “Reply”), and Patent
`
`Ownerfiled a Sur-reply to Petitioner’s Reply to Patent Owner’s Preliminary
`
`Response (Paper9, “Sur-reply”’).
`Uponconsideration 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. We also dismiss
`
`as mootPetitioner’s Motion to Seal.
`
`B. Real Parties in Interest
`
`Petitioner states that “[t]he sole real party-in-interest for this Petition
`
`is Supercell Oy.” Pet. 1. Patent Ownerstates that “the real party-in-interest
`
`is GREE,Inc.” Paper4, 2.
`
`-C. Related Matters
`
`The parties indicate that the °771 patent is involved in GREE,Inc.v.
`
`Supercell Oy, No. 2:20-cv-00113-JRG-RSP (E.D. Tex.). Pet. 1; Paper4, 2.
`
`Trial is set for August 2, 2021, in the parallel district court proceeding.
`
`Ex. 2001, 1 (Fifth Amended Docket Control Order entered Apr. 12, 2021);
`
`Ex. 2011, 1 (Seventh Amended Docket Control Order entered May 14,
`
`2021).
`
`D. The ’771 Patent (Ex. 1001)
`
`The ’771 patent issued on April 7, 2020, from an application filed on
`
`July 10, 2019, that is a continuation of an application filed on July 29, 2014,
`
`and claimspriority to a foreign application filed on July 30, 2013. Ex. 1001,
`
`codes (22), (30), (45), (63), 1:6—9.
`
`
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`PGR2021-00034
`Patent 10,610,771 B2
`
`The ’771 patentrelates to “a technology in which messagesare
`
`transmitted or received using an information processing terminal.”
`
`Ex. 1001, 1:14-16. If “a message fromafirst user terminal of user terminals
`
`belonging to a chat group”is a “normal message,” the messageis
`
`transmitted to each of the user terminals.” Jd. at code (57).. If, however, the
`
`messageis a “selection of the gameicon,” a controller generates a game
`
`message accordingto logic corresponding to the gameicon and transmits the
`
`game messageto each ofthe user terminals.” Jd.
`
`For example, in embodiment, the game icon correspondsto a
`
`“srouping game”for grouping users of a chat group into two groups.
`
`Ex. 1001, 17:11-19:33. Figure 22 of the ’771 patent is reproduced below.
`
`FIG.22
`
`1 MINUTE
`
`ENTRY WAITING
`TIME LEFT:
`1 MINUTE
`
`ENTRY WAITING
`TIME LEFT:
`
`Figure 22 shows exemplary views 641-643, 645-647 of touch panel
`
`displays of user terminals. Ex. 1001, 17:34-38. In view 641, the touch
`
`
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`PGR2021-00034
`Patent 10,610,771 B2
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`panel of User A has icon menu M1 with game icon A9. Jd. at 17:39-41.
`
`Gameicon A9 correspondsto an icon for “Grouping.” Jd. at 17:41. When
`
`User A selects game icon A9, views 645-647 with standby messages 648
`
`with timeleft for entry are outputted. Jd. at 17:41-49. Figure 23 of the °771
`
`patent is reproduced below.
`
`FIG.23
`
`USERA
`
`651
`
`ENTRY CLOSE
`DIVIDING GROUP
`PARTICIPANTS
`ABCE
`
`ENTRY CLOSE
`DIVIDING GROUP
`
`PARTICIPANTS
`AB CE
`
`658
`
`658
`
`GROUP 1
`AB
`GROUP 2
`
`GROUP 1
`4.B
`GROUP 2
`CE
`
`ENTRY CLOSE
`DIMDING GROUP
`
`PARTICIPANTS
`A.BGE
`
`
`
`658
`
`GROUP 1
`AB
`GROUP 2
`CE
`
`(@) CHAT APPLICATION (@) CHAT APPLICATION
`C.E
`
`KCor]
`e 0 =
`
`Figure 23 shows exemplary views 651-653, 655-657 of touch panel
`
`displays of user terminals. Ex. 1001, 17:34-38. After users indicate entry,
`
`“the chat managementsection 21 performs the determination process on
`
`whetherit is possible to generate a group” and “‘acquires the numberof user
`
`IDs associated with ‘Participation’ ... , and compares the numberofusers
`
`(the numberofentries) expressing ‘Participation’ with the numberof
`
`groups.” Jd. at 18:6-17. When “the numberofentries is equal to orlarger
`
`than two times the numberof groups, the chat managementsection 21
`
`
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`PGR2021-00034
`Patent 10,610,771 B2
`
`determinesthatit is possible to generate a group.” Jd. at 18:17-20. The
`
`groups are generated, and the groupingresult is displayed to the users in the
`chat as shownin Figure 23. Id. at 18:29-47.
`
`E.
`
`Illustrative Claim
`
`The ’771 patent has 18 claims, all of which Petitioner challenges.
`
`Claims 1, 7, and 13 are independent, and claim 1 is reproduced below.
`
`A game control method comprising:
`1.
`transmitting, to terminals of a plurality of users, data for
`displaying a chat screen comprising a game icon for entry to a
`game and one or more messages sent from at least a part of the
`plurality of users;
`causing display of the game icon in the chat screen on a
`terminal of a first user of the plurality of users;
`in responseto selection of the gameiconbythefirst user,
`transmitting, to the terminalofthefirst user, data for
`displaying a waiting message indicating waiting for an entry of
`another user to the gamein the chat screen, and
`transmitting, to terminals other than the terminal of
`the first user, data for displaying an icon forthe entry to the game
`in the chat screen;
`in response to the icon for the entry to the game being
`selected by a second user other than the first user, receiving the
`entry of the second user;
`when a numberof a group associated with the game icon
`and a numberof users who haveentered the gamesatisfy a first
`relationship, transmitting,to at least a part of the terminals ofthe
`plurality of users, data for displaying a player group includingat
`least the first user and the second user whohasentered the game
`in the chat screen;
`conducting a battle by the player group; and
`transmitting, to at least part ofthe terminals oftheplurality
`of users, data for displaying a result of the battle in the chat
`screen.
`
`Ex. 1001, 19:36-64.
`
`
`
`PGR2021-00034
`Patent 10,610,771 B2
`
`F. Asserted Prior Art and Proffered Testimonial Evidence
`
`Petitioner relies upon the following evidence:
`
`Christie et al., U.S. Patent No. 8.458,278 B2, filed
`Mar. 20, 2007, issued June 4, 2013 (Ex. 1011, “‘Christie’”);
`
`Balahuraet al., U.S. Patent Application Publication
`No. 2005/0026697 A1, filed July 30, 2004, published Feb.3,
`2005 (Ex. 1010, “Balahura”’);
`
`Ping Pals Instruction Booklet, THQ Inc. (2005)
`(Ex. 1009, “Ping Pals Manual”);
`
`Nintendo DS, Wikipedia (May 21, 2005),
`https://web.archive.org/web/20050521010206/https://en.wikipe
`dia.org/wiki/Nintendo_DS(Ex. 1013, “Nintendo DS
`Wikipedia’’);
`
`Nintendo Official Magazine UK, issue 151 (2005)
`(Ex. 1016, “Nintendo Official Magazine”);
`
`Ping Pals, Amazon (Dec. 11, 2008),
`https://web.archive.org/web/20081211031417/http://www.amaz
`on.com/Ping-Pals-Nintendo-DS/dp/BOO069NVWE (Ex. 1014,
`“Ping Pals Amazon Product Page’’);
`
`Ping Pals, Metacritic (Sept. 3, 2011),
`https://web.archive.org/web/201 10903 171850/http://www.meta
`critic.com/game/ds/ping-pals/critic-reviewsvs
`(Ex. 1015, “Ping
`Pals Metacritic’);
`
`Ping Pals, Wikipedia (Dec. 1, 2011),
`https://web.archive.org/web/201 1120121491 4/https://en.wikipe
`dia.org/wiki/PingPals (Ex. 1012, “Ping Pals Wikipedia”); and
`
`Ping Pals Gameplay Video File (Ex. 1008, “Ping Pals
`Gameplay Video”).
`
`See Pet. xi—xii, 14; see also id. at 13 (arguing that the earliest effective filing
`
`date is July 30, 2013). Petitioner also provides a Declaration of José P.
`
`Zagal, Ph.D. in Support of Petition for Post Grant Review of U.S. Patent No.
`
`10,610,771 (Ex. 1005).
`
`
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`PGR2021-00034
`Patent 10,610,771 B2
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`Accordingto Petitioner, “Ping Pals is a video game published by THQ
`
`for the Nintendo DS and was released on December8, 2004 in North
`
`America.” Pet. 47. Petitioner relies upon certain pieces of evidence
`
`identified above—namely,the Zagal Declaration (Ex. 1005), the Ping Pals
`
`Manual (Ex. 1009), the Nintendo DS Wikipedia (Ex. 1013), the Nintendo
`
`Official Magazine (Ex. 1016), the Ping Pals Amazon Product Page
`
`(Ex. 1014), the Ping Pals Metacritic (Ex. 1015), the Ping Pals Wikipedia
`
`(Ex. 1012), and the Ping Pals Gameplay Video (Ex. 1008)—to describe the
`
`Ping Pals gamethat Petitioner contends wassold to the public and
`
`“constitutes prior art under 35 U.S.C. § 102(a).” Pet. 48; see id. at 47-50.
`
`G. Asserted Grounds
`
`Petitioner asserts that claims 1-18 would have been unpatentable on
`
`the following grounds:
`
`
`
`Claims Challenged|35 U.S.C. §
`
`
`Eligibili
`
`
`
`
`
`
`
`
` 5, 11,17
`
`Ping
`
`Pet. 13-14.
`
`H. Eligibilityfor 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
`
`inventorto file provisions of the AIA. AIA § 6(f)(2)(A). Specifically, the
`
`first inventorto 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,
`
`| Pub L. No. 112-29, 125 Stat. 284 (2011).
`
`7
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`
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`PGR2021-00034
`Patent 10,610,771 B2
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`2013. AIA § 3(n)(1). Because the application from which the ’771 patent
`
`issued wasfiled on July 10, 2019, and claimspriority to a foreign
`
`application filed on July 30, 2013, the ’771 patent is subject to thefirst
`
`inventorto file provisions of the AIA. Ex. 1001, codes (22), (30), 1:6-9.
`
`Also, “[a] petition for a post-grant review mayonly befiled notlater
`
`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 January 7, 2021, which is within nine months of April 7, 2020, the
`
`issue date of the °771 patent. Ex. 1001, code (45); see also Pet. 2 (arguing
`
`that the Petition is timely filed); Paper 6 (according a filing date of January
`
`7, 2021). On this record, the ’771 patent is eligible for post-grant review.
`
`II. 35 U.S.C. § 324(a)
`
`Patent Ownerarguesthat “the Board should exercise its discretion
`
`under 35 U.S.C. § 324(a) to deny the Petition because Petitioner raises the
`
`same grounds, arguments, andpriorart in a parallel district court proceeding
`
`filed more than one year ago and scheduledfortrial in three months (August
`
`2, 2021).” Prelim. Resp. 1.
`
`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.
`
`
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`PGR2021-00034
`Patent 10,610,771 B2
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`Like 35 U.S.C. § 314(a) that applies to inter partes reviews, the language of
`
`§ 324(a) expressly provides 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) and 324(a), the
`
`Board mayconsider “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 advancedstate of a related district
`
`court proceeding, among other considerations, as a “factor that weighsin
`
`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’) identifies several factors for analyzing
`
`issues related to the Director’s discretion to deny institution, with the goal of
`
`balancing efficiency, fairness, and patent quality.
`
`NHKSpring and the Fintiv Order apply the Director’s discretion
`
`pursuant to § 314(a), and do not specifically extend their application to
`
`§ 324(a). The statutory language of both §§ 314(a) and 324(a), however,
`
`provides the Director with discretion to deny institution of review.
`
`Moreover,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). Thus, as
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`9
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`PGR2021-00034
`Patent 10,610,771 B2
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`shown below, we weigh the factors set forth in the Fintiv Orderto this
`
`proceeding. See, e.g., Supercell Oy v. GREE, Inc., PGR2020-00034, Paper
`
`13 at S—7 (PTAB Sept. 3, 2020) and PGR2020-00038, Paper 14 at 6-8 (Sept.
`
`3, 2020) (applying the Fintiv Order factors to post-grant reviews and
`
`denyingtrial).
`
`Also, as discussed below,there are differences between inter partes
`
`reviews and post-grant reviews that, when relevant to specific Fintiv Order
`
`factors, must be considered. Those differences include the fact that the
`
`window forfiling 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,
`
`“Tt]he intent of the post-grant review processis to enable early challenges to
`
`patents, while still protecting the rights of inventors and patent owners
`
`against new patent challenges unboundedin time and scope.” H.R. Rep.
`
`No. 112-98, pt. 1, 47-48 (2011).
`
`B. Applying the Fintiv Factors
`
`1. Whether the Court Granted a Stay or Evidence Exists that one
`may be Granted ifa Proceeding is Instituted
`
`Patent Ownerarguesthat “Petitioner has not filed any motion to stay
`
`the parallel district court proceeding” and“thereis little evidence here to
`
`suggestthat the district court will grant a stay.” Prelim. Resp. 8. Patent
`
`Owneralso arguesthat a stay is “extremely unlikely” because stays are
`denied before institution and an institution decisionis “not due until a few
`
`days beforethe jury trial in the parallel district court proceeding.” Jd. at 9.
`
`Petitioner replies that “Factor | (Likelihood of Stay) requires speculation.”
`
`Reply 5. Patent Owner does not further address this factor. See generally
`
`Sur-reply.
`
`10
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`PGR2021-00034
`Patent 10,610,771 B2
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`Becausethedistrict court has not yet granted a stay and the record
`
`does not include any evidence that a stay, if requested, would be granted, we
`
`determinethat the facts underlying this factor are neutral.
`
`2. Proximity ofthe Court’s Trial Date to the Board’s Projected
`Statutory Deadlinefor a Final Written Decision
`
`Patent Ownerarguesthata “jury trial in the parallel district court.
`
`proceedingis set to begin on August 2, 2021” and thus, “scheduled to
`
`conclude more than eleven months before a final written decision would be
`
`due in this proceeding.” Prelim. Resp. 10 (citing Ex. 2001, 1). Patent
`
`Ownerlists several proceedings where the Board has denied institution when
`
`there was a smaller gap betweenthe trial date and the due date forafinal
`
`written decision. Jd. at 10-11. Patent Owneralso arguesthat thetrial date
`
`should be taken at “face value” and that “Petitioner fails to present any
`
`specific evidencethat the jury trial in in the parallel proceeding will not
`
`proceed on August 2, 2021, as scheduled.” Jd. at 11-12. Patent Owner
`
`further argues that there is no order modifying or continuing the jury trial in
`
`the parallel proceeding, like one for earlier trials due to the COVID-19
`
`pandemic.
`
`/d. at 13 (citing Ex. 2001, 1; Ex. 2008). Patent Owner
`
`additionally argues that generalized speculation should be outweighed by the
`
`jury trial scheduled to occurin the related parallel proceeding many months
`
`before a final written decision would be due. Jd. at 13-14 (citing Ex. 2001,
`
`1).
`
`Regarding any possible delay of the trial date, Patent Owner contends
`
`that “any such delay is not likely to impact the Board exercising its
`
`discretion to deny institution under § 324(a)” because a delayedtrial “will
`
`still conclude well before a final written decision would be due inthis
`
`proceeding.” Prelim. Resp. 14. Patent Owneralso contendsthat “any such
`
`11
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`PGR2021-00034
`Patent 10,610,771 B2
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`(speculative and hypothetical) delay does not ‘materially alter’ the weighing
`
`of this factor given the significant amountof time before a final written
`
`decision would be duein this proceeding,” and “[t]his factor thus weighs in
`
`favor of the Board exercising its discretion to deny institution.” Jd. at 15—
`
`16.
`
`Petitioner replies that “Factor 2 is impacted by the minimal overlap
`between the issues”and “should be affordedlittle weight because thetrial
`
`will address different art.” Reply 4. Petitioner also argues that “determining
`
`the true trial date requires speculation.” Jd.
`
`Patent Ownerreplies that “the district court confirmedthat trial in the -
`
`parallel district court proceeding will proceed on August 2, 2021” and
`
`“Petitioner’s cursory claim that trial may not so proceedis based entirely on
`
`Petitioner’s own speculation.” Sur-reply 1 (citing Ex. 2011, 1). Patent
`
`Owneralso arguesthat this factor weighs in favor of denyinginstitution
`
`“regardless of the scope of overlap ofprior art.” Jd. at 2 (citing Reply 4).
`
`Patent Ownerfurther argues that “substantial overlap exists here beyond
`
`solely the asserted prior art.” Id.
`
`The record clearly showsthat, if post-grant review were instituted in
`
`this proceeding, a final written decision would be due more than eleven
`
`monthsafter thetrial date in the parallel district court proceeding. Ex. 2011,
`
`1. Given the overlap in claims, prior art, and arguments as described below,
`
`institution would create a potential for the district court proceeding and the
`post-grant review to arrive at inconsistentresults spaced monthsapart.
`Asfor possible trial date adjustments, the record does not contain any
`
`evidence for such adjustments and, evenif the district court movesthetrial
`
`date, the trial would still occur several months before the due date for a final
`
`written decision in this proceeding. Ex. 2011, 1. Therefore, we agree with
`
`12
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`PGR2021-00034
`Patent 10,610,771 B2
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`Patent Ownerthatthis factor weighs in favor of denying institution. See
`
`Prelim. Resp. 10—16; Sur-reply 1-2.
`
`For the reasons above, becausea jury trial is set to begin more than
`
`eleven months before the statutory due date for a final written decision in
`
`this proceeding should review beinstituted in this proceeding, we determine
`
`that this factor weighs in favor of denying institution.
`
`3.
`
`Investmentin the Parallel Proceeding by the Court and the
`Parties
`
`Patent Ownerarguesthat the district court and the parties have
`
`invested substantial resources, such as shownby anorder on claim
`
`construction, and by the timeinstitution is considered, “will be on the eve of
`
`a jury trial” andthus, likely will have completed fact and expert discovery,
`
`briefing on dispositive and Daubert motions, pre-trial disclosures, and
`pretrial conference. Prelim. Resp. 17-18 (citing Ex. 2001, 2-3; Ex. 2009).
`Patent Owneralso arguesthat, “based on past and future deadlines. .
`. , the
`
`parallel district court proceeding regarding the subject ’771 Patent is at an
`
`‘advanced’ stage” andthat the district court and parties will have invested
`
`more resourcesbythe timeinstitution is decided. Jd. at 19 (citing Ex. 2001).
`
`Patent Owneralso arguesthatit initiated the parallel district court
`
`proceeding shortly after the 771 patent issued,but Petitioner did notfile its
`
`Petition until nine months after issuance. Prelim. Resp. 20 (citing Ex. 1001;
`
`Ex. 2002). According to Patent Owner, there is an unexplained delay and
`
`Petitioner must be using this proceeding “as a second-bite at the apple”to
`
`litigate validity again in a different venue, not as an alternativeto district
`court litigation. Jd. at 19-21. Patent Owneralso contendsthat Petitioner
`
`served the same groundsandasserted the same references in the same way
`
`13
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`PGR2021-00034
`Patent 10,610,771 B2
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`seven monthsbeforefiling its Petition in this proceeding. Jd. at 21 (citing
`
`Exs. 2003, 2005-2007).
`
`Petitioner replies that the “court’s and parties’ investments at the
`
`district court concerns issues not present here,” and, thus, “the court in this
`
`parallel litigation has made no investment with respectto the validity of the
`
`°771 patent in view of the references asserted in this PGR,nor will any
`
`further investment be made.” Reply 4.
`
`_ Patent Ownerreplies that the investmentsat the district court relate to
`issues in this proceeding. Sur-reply 2—3 (citing Prelim. Resp. 17-19;
`
`Reply 4). According to Patent Owner, the district court throughits claim
`
`construction order rejected the indefiniteness and written description
`
`arguments madein the Petition and the district court’s construction of “chat
`
`screen” precludesthe prior art challenges based on Ping Pals. Jd. at 3 (citing
`
`Prelim. Resp. 23, 24, 50-56, 61-64). Patent Owneralso arguesthat
`
`Petitioner’s stipulation acknowledgesthat these challenges did not survive
`
`claim construction at the district court. Jd. Patent Ownerfurther argues that
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`Petitioner presented the § 101 challenge in a motion for summary judgment
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`of invalidity under § 101, and related briefing and pretrial conference will be
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`completed by the time institution is decided. Jd. (citing Prelim. Resp. 22—
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`23; Ex. 2011,1; Ex. 2012; Ex. 2013). Patent Owner, thus, argues the district
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`court andthe parties have invested substantially in issues presented in this
`
`proceeding. /d. (citing Reply 4).
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`In the parallel proceeding, the district court and the parties have
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`completed claim construction, fact discovery, expert discovery,filing and
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`responding to dispositive motions and motionsto strike expert testimony,
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`filing motionsin limine, filing of a joint pretrial order, and attending a
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`pretrial conference. Ex. 2009 (Claim Construction Memorandum Opinion
`
`14
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`PGR2021-00034
`Patent 10,610,771 B2
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`and Order); Ex. 2001, 2-3; Ex. 2011, 1-3. The record showsthat the district
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`court and the parties have made substantial investments in the parallel
`
`proceeding, even thoughthe parties still have to expend significant resources
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`associated with conductingthetrial itself, as well as potential post-trial
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`proceedings. See id. at 1-3. We also agree with Patent Owner that the .
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`investments maderelate to invalidity positions presented in the Petition. See
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`Sur-reply 3; Ex. 2012. Therefore, the present investmentrelated to the
`
`parallel proceeding weigh in favor of denyinginstitution.
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`Asforthefiling date of the Petition, 35 U.S.C. § 321(c) affords
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`petitioner up to nine monthsafter issuance of the patentto file a petition for
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`post-grant review. Petitioner complied with 35 U.S.C. § 321(c), even
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`though the Petition wasfiled just before the end of the nine-month window.
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`Patent Owner does not makeclear whateffect filing late in the allowed
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`windowhas on the investments madein the parallel proceeding by the
`
`parties and the court. See Prelim. Resp. 20—21; Sur-reply 1-5. Thus, we are
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`not persuadedthat the timing of the Petition’s filing supports denying
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`institution underthis Fintiv Order factor.
`
`- Based on the record, we determine that substantial investments have
`
`been madeso far in the parallel proceeding, and thus, this factor weighs in
`
`favor of denying institution.
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`4. Overlap Between Issues Raised in the Petition andin the Parallel
`Proceeding
`
`Petitioner contends that “Ping Pals was presentedin the related
`
`litigation in Petitioner’s amendedinvalidity contentions,” but “[i]f the Board
`
`institutes, Petitioner stipulates that it will withdraw this reference in the
`
`related litigation.” Pet. 79. Petitioner, thus, argues that the references in the
`
`15
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`PGR2021-00034
`Patent 10,610,771 B2
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`obviousness challenges would notbe at issue in the related litigation and
`
`there would be no overlap. Jd.
`
`Patent Ownerarguesthat “[t]here is substantial overlap between the
`
`claims, grounds, arguments, and evidence presented in the Petition and what
`
`has been, and continuesto be,litigated in the parallel district court
`proceeding.” Prelim. Resp. 22. According to Patent Owner,Petitioner
`asserts the same groundsin the district court proceeding. Jd. (citing
`
`Exs. 2003-2007). Patent Owneralso argues that Petitioner relies on the
`
`same arguments for challenges under §§ 101, 112(a), and 112(b). Jd. at 22—
`
`24 (citing Pet. 27, 34, 35, 41-46; Ex. 2004, 2-6; Ex. 2005, 23, 24; Ex. 2009,
`
`32-37). Patent Ownernotes that the district court already rejected the
`
`§ 112(b) arguments.
`
`/d. at 24 (citing Ex. 2009, 32-37).
`
`For the § 103 challenge, Patent Ownerargues that Petitioner relies on
`
`Ping Pals in boththe related litigation and the present proceeding and any
`
`additionally cited prior art is immaterialto this factor. Prelim. Resp. 25 n.3,
`
`25-26 (citing Pet. 14, 47—50; Ex. 2006, 1; Ex. 2007); see also id. at 31
`
`(asserting that Petitioner incorrectly argues that, because the secondary
`
`references relied upon in the Petition are not assertedin the parallel
`
`proceeding,this factor favors institution and complete duplication of
`
`asserted priorart is not required). Patent Owneralso argues that
`
`substantially the same arguments regarding Ping Pals have been presented in
`
`district court and this proceeding. Jd. at 26 (citing Pet. 47-50, 53-67;
`
`Ex. 2007). Patent Owner further argues that the claims challenged here are
`
`the same onesasserted in district court. Prelim. Resp. 27 (citing Pet. 13-14;
`
`Ex. 2005, 1, 3).
`
`Patent Owneralso respondsthat Petitioner’s stipulation is too narrow
`
`because Petitionerfails to stipulate that it will not pursue in the related
`
`16
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`PGR2021-00034
`Patent 10,610,771 B2
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`litigation any groundraised or any ground that could have beenraisedin this
`
`proceeding. Prelim. Resp. 28-29 (citing Pet. 79). Patent Owner arguesthat
`
`“Petitioner’s narrow stipulation does not sufficiently mitigate the concerns
`
`of duplicative efforts between the district court and the Board, as wellas
`
`concernsof potentially conflicting decisions.” Jd. at 29. Patent Owneralso
`
`argues that Petitioner’s stipulation is especially ineffective because
`
`institution will be decided days before trial begins in district court and that
`
`the stipulation does not address the identical §§ 101 and 112 challenges
`
`asserted there and here. Jd. at 29-30. Patent Owner further argues that the
`
`outcomeof this factor should turn on the overlapping grounds and
`
`arguments, instead of one reference. Jd. at 30.
`
`Patent Ownerfurther respondsthat (1) Petitioner speculates that the
`
`claims asserted in district court will be narrowedpriorto trial, (2) complete
`
`identity of claims at issue is not required, and (3) the Board has found this
`
`factor to weigh towards denying institution when claimsat issue in the
`
`district court and the Board are not completely identical. Prelim. Resp. 32—
`
`33. Patent Owneralso contendsthat the district court will resolve key issues
`
`even if the asserted claims are narrowed because, for example, same claim
`
`limitations are at issue. Jd. at 34 (citing Pet. 27-46, 70—72).
`
`Petitioner replies that, because the secondary references are absent
`from the relatedlitigation, there are minimal concernsofinefficiency and
`
`possibility of conflicting decisions. Reply 1. Petitioner arguesthatit will
`stipulate not to pursuein district court the obviousness challenges presented
`in the Petition, if institution is granted, so the two proceedings will not be
`
`directly duplicative. Jd. at 1-2. Petitioner also arguesthat, if the Petition’s
`
`obviousness challengesare not presented in district court, then the district
`
`court will not resolve key issues of the Petition. Jd. at 2.
`
`17
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`PGR2021-00034
`Patent 10,610,771 B2
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`Petitioner also replies that Patent Owner speculates that the number of
`
`asserted claims will not be reduced, even though Patent Owner“has a
`
`history of reducing the numberofasserted claimsas the trial date draws near
`
`as is standard in the Eastern District of Texas” and “demonstrated
`
`willingness to mislead the Boardas to this fact.” Reply 2—3. Petitioner
`
`notes that Patent Owner “makes no commitments, stipulations, or other
`
`binding statements regarding which claimsit will actually assert attrial,”
`
`and therefore, “determining overlap of the claims asserted requires
`
`speculation and weighs against discretionary denial.” Jd. at 3. Petitioner
`
`further replies that public interest in early evaluation overcomes the concern
`
`regarding overlap in the § 101 challenge. Id.
`
`Patent Ownerreplies that Petitioner cannot dispute that the same
`
`grounds and arguments have been presented for the §§ 101 and 112
`challenges. Sur-reply 4 (citing Prelim. Resp. 22-24). Patent Owner also
`arguesthat Petitioner’s public interest argument has been rejected
`
`previously. Jd. (citing Reply 3). Patent Ownerfurther argues that
`
`Petitioner’s stipulation does not mitigate concerns of duplicative efforts and
`
`potentially conflicting decisions and Petitioner should have, but has not,
`expressly waivedin district court any overlapping invalidity challenges. Jd.
`
`at 4—5 (citing Prelim. Resp. 30; Reply 1). Patent Owner additionally argues
`
`that Petitioner speculates that the asserted claims will have to be reduced and
`
`that the district court will still resolve key issues on a smaller set of claims
`
`because the same arguments are presented forall the independent claims of
`
`the °771 patent. Jd. at 5 (citing Prelim. Resp. 32-35).
`
`The record showsthat presently claims 1-18 are at issue in both
`
`proceedings. Ex. 2004, 2; Ex. 2005, 1; Ex. 2007, 2-44. Based on the record
`
`in front of us, Petitioner’s argument that Patent Owner may reduce the
`
`18
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`numberof asserted claimsat issue in the parallel proceeding is speculative.
`
`The record also showsthat the same statutory groundsareat issue in this
`proceeding and therelated litigation. Ex. 2004 (Preliminary Ineligibility
`Contentions for the ’771 patent), 1-32; Ex. 2005 (Preliminary Invalidity
`
`Contentions under § 112 for the ’771 patent), 8, 22—24; Ex. 2007
`
`(Preliminary Invalidity Contentions based on Ping Pals). The record further
`
`showsthat similar arguments have been presented in both proceedings, and
`
`that Ping Pals is at issue in both proceedings. Compare Pet. 20-77, with
`
`Exs. 2004, 2005, 2007.
`
`“[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 “concernsof inefficiency and the
`
`possibility of conflicting decisions [are] particularly strong.” Fintiv Order,
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`Paper 11 at 12.
`
`Weagree with Patent Ownerthat Petitioner’s narrow stipulation to
`
`withdraw the § 103 challenges, if review is instituted, “is especially
`
`ineffective here given that it is dependent on the Board’s institution decision
`
`and that decision will likely not be issued until mere days before the August
`
`2, 2021 trial in the parallel district court proceeding,” and, therefore, “fails to
`
`. meaningfully mitigate the concerns of duplicative efforts between the district
`
`court and the Board.” Prelim. Resp. 29. As discussed supra regarding
`
`Fintiv Order factor 3, the parties already have completed all pretrial work
`
`regarding these grounds,including the Ping Pals reference.
`
`Based on the present record, we determinethat this factor weighs in
`
`favor of denying institution.
`
`19
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`PGR2021-00034
`Patent 10,610,771 B2
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`5. Whether Petitioner and the Defendantin the Parallel Proceeding
`are the Same Party
`
`Patent Ownerarguesthat “Petitioner and Patent Ownerare the
`
`defendantandplaintiff, respectively, in the parallel district court
`
`proceeding,” and “this factor weighs in favor of the Board exercisingits
`
`discretion to deny institution.” Prelim. Resp. 35 (citing Ex. 2002).
`
`Petitioner replies that “Factor 5 (Same Parties) should be givenlittle weight”
`
`andis not dispositive. Reply 5. Patent Owner doesnot provide a reply for
`
`this factor. See generally Sur-reply.
`
`The record showsthat Petitioner and Defendant in the parallel
`
`proceeding are the same. Ex. 2002. Thus,this factor weighs in favor of
`
`denyinginstitution.
`
`6. Other Circumstances that Impact the B
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