EcoFactor, Inc.

Patent Trials and Appeals Board

Oct 14, 2021

IPR2020-00946 (P.T.A.B. Oct. 14, 2021)

Trials@uspto.gov Paper 16
571-272-7822 Entered: October 14, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

GOOGLE LLC,
Petitioner,

v.

ECOFACTOR INC.,
Patent Owner.
____________

IPR2020-00946
Patent 8,131,497 B2

____________

Before WESLEY B. DERRICK, JEFFREY W. ABRAHAM, and
SCOTT B. HOWARD, Administrative Patent Judges.

ABRAHAM, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request on Rehearing of Decision Denying Institution
of Inter Partes Review
37 C.F.R. § 42.71(d)

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I. INTRODUCTION
Google LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
inter partes review of claims 1–12 of U.S. Patent No. 8,131,497 B2
(Ex. 1001, “the ’497 patent”). EcoFactor Inc. (“Patent Owner”) filed a
Preliminary Response to the Petition (Paper 7, “Prelim. Resp.”). After
receiving authorization from the Board (Paper 8), Petitioner filed a Reply to
Patent Owner’s Preliminary Response (Paper 9, “Reply”), and Patent Owner
filed a Sur-reply (Paper 10, “Sur-reply”). On November 18, 2020, we issued
a Decision denying institution of inter partes review. Paper 11 (“Decision”
or “Dec.”).
Petitioner filed a Request for Rehearing of our Decision. Paper 12
(“Rehearing Request” or “Req.”). For the reasons that follow, Petitioner’s
Rehearing Request is denied.
II. STANDARD OF REVIEW
The party challenging a decision in a request for rehearing bears the
burden of showing the decision should be modified. 37 C.F.R. § 42.71(d)
(2019). A request for rehearing “must specifically identify all matters the
party believes the Board misapprehended or overlooked, and the place where
each matter was previously addressed.” 37 C.F.R. § 42.71(d). When
rehearing a decision on a petition, the decision will be reviewed for an abuse
of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs where
the decision is based on an erroneous interpretation of the law, on factual
findings that are not supported by substantial evidence, or represents an
unreasonable judgment in weighing relevant factors.” Star Fruits S.N.C. v.
U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005).
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III. DISCUSSION
In our Decision, in the exercise of the Director’s discretion under
35 U.S.C. § 314(a), we declined to institute an inter partes review in view of
parallel proceedings, including an ITC proceeding involving the same
parties and the ’497 patent. Dec. 5–16. Petitioner contends that we
misapplied the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019,
Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), for determining
when discretionary denial of institution is warranted. Req. 1. According to
Petitioner, “[t]he Board erred in several ways that collectively amount to a
misapprehension of the relevant law and facts leading to an abuse of
discretion.” Req. 2–3. We disagree.
Instead of specifically identifying matters the Board purportedly
misapprehended, Petitioner uses the Rehearing Request as an opportunity to
express its disagreement with our Decision and present new arguments. A
request for rehearing, however, is not an opportunity merely to disagree with
the Board’s assessment of the arguments or weighing of the evidence, or for
Petitioner to present new arguments or evidence.
Petitioner first disagrees with our use of the co-pending ITC
proceeding as a benchmark for assessing several Fintiv factors. Req. 2–11.
In particular, Petitioner contends doing so was “improper” and that we failed
to adequately consider the differences between an ITC investigation and
district court cases. Req. 3–4. Petitioner presented similar arguments in its
Reply (e.g., compare Req. 5–7, with Reply 2–5), which we considered, but
determined were not persuasive. Dec. 9–10. Specifically, in our Decision,
we noted that Fintiv expressly addresses ITC investigations, and the Board
has considered ITC investigations in weighing whether or not to exercise its
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discretion under 35 U.S.C. § 314. Dec. 9–10 (citing Fintiv, Paper 11 at 8
(“[E]ven though the Office and the district court would not be bound by the
ITC’s decision, an earlier ITC trial date may favor exercising authority to
deny institution under NHK if the ITC is going to decide the same or
substantially similar issues to those presented in the petition.”); Garmin
Int’l, Inc. v. Koninklijke Philips N.V, IPR2020-00754, Paper 11 (PTAB Oct.
27, 2020)1; Comcast Cable Commc’ns, LLC v. Rovi Guides, Inc., IPR2020-
00800, Paper 10 (PTAB Oct. 22, 2020)). Petitioner’s continued
disagreement with our treatment of the ITC proceeding for purposes of
analyzing Fintiv, based largely on arguments already considered
unpersuasive, does not warrant granting its Rehearing Request.
Petitioner also presents several policy-based arguments, including the
asssertion that the Decision “undermines the IPR statutory regime.” Req. 4;
see also Req. 7–8 (discussing the reason Congress made ITC rulings on
patent issues non-binding, and contending that “it would contravene
Congressional design for the Board to defer to an agency that had no role in
the original issuance of the challenged patents”); Req. 9 (arguing that
denying an IPR petition because of an ITC action where there is also a
pending district court case undercuts the one-year safe harbor provision in
35 U.S.C. § 315). Petitioner’s policy-based arguments are not only new, but
are not directed at anything specific we misapprehended or overlooked in the
Petition, Petitioner’s Reply, or Petitioner’s evidence. Moreover, parties have

1 Petitioner notes that the petitioners in IPR2020-00754 requested review of
the Board’s decision by the Precedential Opinion Panel (“POP”), and “such
a review could have a direct effect on the outcome of this proceeding.” Req.
6–7 (emphasis omitted). The request for POP review, however, was denied
on June 25, 2021. IPR2020-00754, Paper 16.
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made similar policy arguments in POP requests in other proceedings, which
have been denied. See IPR2020-01097, Papers 11, 13; IPR2020-00754,
Papers 12, 16.
Additionally, Petitioner disagrees with our assessment that Fintiv’s
fourth factor weighs “slightly in favor of institution,” arguing that we “gave
insufficient weight to [this] factor, which looks to the overlap between the
issues.” Req. 3–4, 11–12; Dec. 12–14. Contrary to Petitioner’s assertion,
we did consider sufficiently all of the evidence regarding whether the ITC
proceeding would resolve all or substantially all of the patentability disputes
between the parties. See Req. 11–12. Specifically, in our Decision we
expressly stated that “[b]ecause the ITC proceeding involves only claims 1,
2, and 5 of the ’497 patent, whereas Petitioner’s challenges in this
proceeding involve claims 1–12, resolution of the ITC proceeding will not
directly resolve the parties’ dispute concerning patentability of claims 3, 4,
and 6–12 of the ’497 patent.” Dec. 13. Moreover, consistent with
Petitioner’s arguments, we determined “[t]his weighs in favor of institution.”
Dec. 13.
Petitioner would have us end our evaluation of Fintiv’s fourth factor
there, but doing so would require that we overlook additional information in
the record relevant to the overlap of issues in the ITC and in this proceeding.
This additional information includes Patent Owner’s undisputed assertions
and evidence demonstrating some overlapping claims, prior art, and
invalidity theories in the ITC investigation and the Petition. Dec. 12; Prelim.
Resp. 12; Sur-reply 6 (noting “there is substantial overlap in issues between
the Petition and the ITC case when looking at the overlap of claims”). As
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explained in the Decision, the overlap between the prior art challenges
asserted before the Board and the ITC weighs against institution. Dec. 13.
Therefore, after considering all relevant evidence, we determined that
“[o]n balance, based on the fact that the Petition is directed to some
substantively different claims than those before the ITC, we determine
[Fintiv’s fourth] factor weighs slightly in favor of institution.” Dec. 14. Our
consideration of all relevant facts regarding the the overlap of issues
presented to the Board and the ITC undermines Petitioner’s assertion that we
erred in the application of Fintiv’s fourth factor. Furthermore, with regard to
Petitioner’s argument that we failed to give a single Fintiv factor sufficient
weight, we note that our Fintiv analysis is fact driven and no single factor is
determinative of whether we exercise our discretion to deny institution under
§ 314(a).
For the foregoing reasons, we are not persuaded by Petitioner’s
assertions that we “erred in several ways” in our Decision. As this assertion
forms the basis for Petitioner’s Rehearing Request, we determine Petitioner
has not satisfied its burden of demonstrating that the Decision should be
modified.
IV. ORDER
In consideration of the foregoing, it is hereby
ORDERED that Petitioner’s Rehearing Request is denied.

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FOR PETITIONER:

Matthew Smith
smith@smithbaluch.com

Elizabeth Laughton
laughton@smithbaluch.com

FOR PATENT OWNER:

Philip Wang
pwang@raklaw.com

C. Jay Chung
jchung@raklaw.com

Kent Shum
kshum@raklaw.com

Kristopher Davis
kdavis@raklaw.com