Maxell, Ltd.

Patent Trials and Appeals Board

Jul 6, 2020

IPR2020-00203 (P.T.A.B. Jul. 6, 2020)

Trials@uspto.gov Paper 12
571-272-7822 Date: July 6, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

APPLE INC.,
Petitioner,
v.
MAXELL, LTD.,
Patent Owner.

IPR2020-00203
Patent 6,408,193 B1

Before LYNNE E. PETTIGREW, MINN CHUNG, and KEVIN C. TROCK,
Administrative Patent Judges.
PETTIGREW, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314
I. INTRODUCTION
Petitioner, Apple Inc., filed a Petition for inter partes review of
claims 1, 6, and 7 of U.S. Patent No. 6,408,193 B1 (Ex. 1001, “the
’193 patent”). Paper 1 (“Pet.”). Patent Owner, Maxell, Ltd., filed a
Preliminary Response. Paper 7 (“Prelim. Resp.”). Pursuant to our
authorization for supplemental briefing on the issue of discretionary denial
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Patent 6,408,193 B1
2
under 35 U.S.C. § 314(a), Petitioner filed a Reply to Patent Owner’s
Preliminary Response, and Patent Owner filed a Sur-reply. Paper 9 (“Pet.
Reply”); Paper 11 (“PO Sur-reply”); see Paper 8, 3 (authorizing reply and
sur-reply).
Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to
institute an inter partes review if “the information presented in the
petition . . . and any response . . . shows that there is a reasonable likelihood
that the petitioner would prevail with respect to at least 1 of the claims
challenged in the petition.” 35 U.S.C. § 314(a). The Board, however, has
discretion to deny a petition even when a petitioner meets that threshold.
Id.; see, e.g., 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.”); NHK Spring Co. v. Intri-Plex Techs., Inc.,
IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential, designated
May 7, 2019).
Having considered the parties’ submissions, and for the reasons
explained below, we exercise our discretion under 35 U.S.C. § 314(a) to
deny institution of inter partes review.
II. BACKGROUND
A. Related Matters
The parties identify the following district court proceeding related to
the ’193 patent: Maxell, Ltd. v. Apple Inc., No. 5:19-cv-00036 (E.D. Tex.,
filed Mar. 15, 2019) (“the underlying litigation”). Pet. 69; Paper 4, 1 (Patent
Owner’s Mandatory Notices). The parties also identify an earlier PTAB
proceeding in which institution of inter partes review of claims 1–7 of the
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Patent 6,408,193 B1
3
’193 patent was denied: ZTE Corp. v. Maxell, Ltd., IPR2018-00237,
Paper 10 (PTAB June 14, 2018). Pet. 69; Paper 4, 1.
B. Overview of the ’193 Patent
The ’193 patent describes a cellular telephone used in a Code Division
Multiple Access (CDMA) system. Ex. 1001, 1:5–8. In order to
communicate with base stations in a cellular network, cellular telephones
must transmit signals at a power level sufficient to be received by the base
stations. Id. at 1:11–23. Distance from the base station and surrounding
terrain are among the factors that influence the amount of power required.
Id. at 1:17–23. At the same time, it is important to minimize power
consumption in a cellular telephone in order to increase battery life and the
length of time the telephone can operate without requiring recharging. See
id. at 2:7–9. In order to operate effectively, cellular telephones adjust
transmission power to ensure that transmission power falls within a range
required to reach a particular base station. See id. at 1:32–35, 1:45–59. The
’193 patent purports to address the problem of balancing transmission power
with battery life in cellular telephones by correlating the gain of a variable
amplitude amplifier in a cellular telephone transmitter with the bias
condition of a power amplifier in the transmitter. Id. at 2:40–44, 6:6–54.
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Patent 6,408,193 B1
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Figure 2 of the ’193 patent is reproduced below:

Figure 2 above is a block diagram of components in a main part of a cellular
telephone disclosed in the ’193 patent. Id. at 3:44–45. The cellular
telephone in Figure 2 includes receiver 100, controller 300, duplexer 400,
and antenna 450. Id. at 4:33–36. The cellular telephone in Figure 2 also
includes variable amplitude amplifier 230 and power amplifier means 250,
which are part of transmitter 200 (not shown in Figure 2). Id. at 5:17–20.
In one embodiment, controller 300 controls a gain of variable
amplitude amplifier 230 so that transmitter 200 can provide a required
transmitting power to antenna 450. Id. at 2:40–43, 6:1–12. Controller 300
also controls a bias condition of power amplifier means 250. Id. at 2:40–43,
6:12–15. Values of the gain and bias condition are correlated according to a
function and are stored in memory 330 within controller 300. Id. at 6:35–46.
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Patent 6,408,193 B1
5
Examples of predetermined values of the gain and bias stored in memory are
shown in Figure 4 of the ’193 patent, reproduced below:

Figure 4 above illustrates a characteristic curve of power amplifier
means 250 when its bias is controlled according to predetermined bias
values corresponding to predetermined gain values for variable amplitude
amplifier 230. Id. at 3:52–53, 6:4–19. The value of the bias decreases as the
value of the gain decreases, so that the characteristic curve of power
amplifier means 250 gradually decreases from that of [bias condition] Bn to
that of B1 as the transmitter output power decreases. Id. at 6:29–35.
C. Illustrative Claims
Independent claims 1 and 7 are illustrative of the claimed subject
matter and reproduced below:
1. A cellular telephone adapted to be used in a CDMA system,
comprising:
an antenna for receiving a first communication signal and a
transmitting power control signal from a cell-site station and
transmitting a second communication signal to the cell-site
station,
a duplexer connected to said antenna,
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Patent 6,408,193 B1
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a receiver connected to said antenna through said duplexer for
converting said first communication signal into a voice signal
code, and for outputting a power control signal derived from
said transmitting power control signal sent from said cell-site
station,
an encoder/decoder apparatus connected to said receiver and an
acoustic transducer for converting said voice signal code into an
audio signal for driving said acoustic transducer and converting
an audio input signal from said acoustic transducer into an input
voice code signal,
a transmitter connected to said encoder/decoder apparatus and
to said antenna through said duplexer for converting said input
voice code signal into said second communication signal, and
a controller connected to said receiver and said transmitter for
controlling an amplitude of said transmitter,
wherein said transmitter includes a variable amplitude amplifier
and a power amplifier, said controller includes a central
processing unit and a memory, said controller controls said
transmitter so that an open-loop power control is performed and
then a closed-loop power control is performed according to said
power control signal so as to control the transmitted power to
converge into a range required by said cell-site station, and said
controller controls a gain of said variable amplitude amplifier
and a bias condition of said power amplifier using a set of bias
and gain data stored in said memory.
7. A cellular telephone adapted to be used in a CDMA system,
comprising:
an antenna for receiving a first communication signal and a
transmitting power control signal from a cell-site station and
transmitting a second communication signal to the cell-site
station,
a duplexer connected to said antenna,
a receiver connected to said antenna through said duplexer for
converting said first communication signal into a voice signal
code, and for outputting a power control signal derived from
said transmitting power control signal sent from said cell-site
station,
IPR2020-00203
Patent 6,408,193 B1
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an encoder/decoder apparatus connected to said receiver and an
acoustic transducer for converting said voice signal code into an
audio signal for driving said acoustic transducer and converting
an audio input signal from said acoustic transducer into an input
voce code signal,
a transmitter connected to said encoder/decoder apparatus and
to said antenna through said duplexer for converting said input
voice code signal into said second communication signal, and
a controller connected to said receiver and said transmitter for
controlling an amplitude of said transmitter,
wherein said transmitter includes a variable amplitude amplifier
and a power amplifier, said power amplifier includes a
maximum power detector, said controller includes a central
processing unit and a memory, said controller controls said
transmitter so that an open-loop power control is performed and
then a closed-loop power control is performed according to said
power control signal so as to control the transmitted power to
converge into a range required by said cell-site station, said
controller controls a gain of said variable amplitude amplifier
using a function defining a relation between bias data and gain
data stored in said memory, and said maximum power detector
controls an[] output power of said power amplifier.
Ex. 1001, 10:62–11:31, 12:8–47.
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D. Asserted Ground of Unpatentability
Petitioner asserts that the challenged claims are unpatentable based on
the following ground (Pet. 7):
Claims Challenged 35 U.S.C. § References
1, 6, 7 103(a)1 Waldroup,2 Nakayama3
In support of its contentions, Petitioner relies on the Declaration of
Dr. William Redman-White (Ex. 1006).
III. ANALYSIS
Patent Owner contends we should exercise our discretion under
35 U.S.C. § 314(a) to deny institution of inter partes review due to the
advanced stage of the underlying litigation in the United States District
Court for the Eastern District of Texas. Prelim. Resp. 2–24; PO
Sur-reply 1–10. According to Patent Owner, instituting an inter partes
review “would needlessly duplicate” the district court action and
“unnecessarily waste the Board’s resources.” Prelim. Resp. 4 (citing NHK,
Paper 8 at 20 (denying institution)).
As noted above, after Patent Owner filed its Preliminary Response, we
authorized the parties to submit supplemental briefing on the issue of

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 285–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
Because the ’193 patent has an effective filing date prior to the effective date
of the applicable AIA amendment, we refer to the pre-AIA version of § 103.
2 U.S. Patent No. 6,236,863 B1, issued May 22, 2001 (Ex. 1004).
3 Japanese Unexamined Patent Application Publication No. JP H10-285059,
published Oct. 23, 1998 (Ex. 1005). Nakayama is a Japanese-language
publication (Ex. 1005, 15–26) that was filed with an English-language
translation (id. at 2–13) and an affidavit attesting to the accuracy of the
translation, as required by 37 C.F.R. § 42.63(b) (id. at 1). Our citations to
Nakayama are to the certified English translation.
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Patent 6,408,193 B1
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discretionary denial under 35 U.S.C. § 314(a). Paper 8, 3. We specifically
requested the parties to address the factors set forth in Apple Inc. v. Fintiv,
Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential,
designated May 5, 2020) (“Fintiv”). Id. Fintiv provides several factors that
balance considerations of system efficiency, fairness, and patent quality
when a patent owner raises an argument for discretionary denial due to the
advanced state of a parallel proceeding. Fintiv, Paper 11 at 5–6. These
factors are:
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.
Id.
We now consider these factors to determine whether we should
exercise discretion to deny institution under 35 U.S.C. § 314(a). “[I]n
evaluating the factors, the Board takes a holistic view of whether efficiency
and integrity of the system are best served by denying or instituting review.”
Id. at 6.
A. Fintiv Factors 1–3
The first three Fintiv factors in this case are interrelated based on the
factual circumstances of the underlying litigation. The district court trial
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date is set for October 26, 2020. Pet. Reply 7; PO Sur-reply 1; Ex. 2003. As
the parties recognize, a trial beginning this October will be completed about
eight months before a final written decision would be due in this proceeding.
Pet. Reply 7; PO Sur-reply 3. Petitioner notes that it filed a petition for writ
of mandamus with the U.S. Court of Appeals for the Federal Circuit
addressing the district court’s denial of its motion to transfer. Pet. Reply 7
(citing Ex. 1046). The Federal Circuit, however, recently denied the
petition, so the trial date remains set for October 26, 2020, in the Eastern
District of Texas. See PO Sur-Reply 4 (citing In re Apple Inc., No. 2020-
115, 2020 WL 2125340 (Fed. Cir. Apr. 22, 2020)); see also Ex. 3001 (In re
Apple Inc., No. 2020-115 (Fed. Cir. June 25, 2020) (order denying petition
for rehearing en banc)).
Petitioner also asserts that the COVID-19 pandemic may affect the
trial schedule. Pet. Reply 7. Patent Owner cites a standing order in the court
where the underlying litigation is pending “to keep cases moving” despite
COVID-19. PO Sur-reply 4 (quoting Ex. 2029). In any event, Patent Owner
argues, even if the trial date were delayed by three months, the trial still
would precede a final written decision by several months. Id. Although
delays due to the COVID-19 pandemic may be a real possibility despite the
trial court’s standing order, we agree with Patent Owner that even a delayed
trial may precede a final written decision in this proceeding. Thus, the
second Fintiv factor—proximity of the court’s trial to the Board’s projected
statutory deadline for a final written decision—favors the exercise of
discretionary denial.
Petitioner moved for a stay in the underlying litigation, but the district
court denied the motion. See Pet. Reply 1; PO Sur-reply 2; Ex. 3002
(Maxell, Ltd. v. Apple Inc., No. 5:19-cv-00036, Dkt. No. 298 (E.D. Tex.
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Apr. 27, 2020)). Among other reasons, the court determined “[t]he case is
not in its infancy and is far enough along that a stay would interfere with
ongoing proceedings.” Ex. 3002, 4. Notably, the court denied the motion
without prejudice. Id. at 6. Although the court stated that “[t]he late stage
of the proceedings will certainly weigh against granting a stay” if Petitioner
were to file a renewed motion for a stay, the court also stated it could not
“say now that the late stage would necessarily outweigh the potential
simplification of issues following institution decisions” in this and other
inter partes review proceedings. Id. Given the court’s apparent willingness
to reconsider a motion to stay if an institution decision simplified issues for
trial, but also considering the late stage of the district court proceeding, with
trial scheduled to begin in less than four months, the first Fintiv factor—
whether a stay has been or may be granted—does not weigh for or against
discretionary denial in this case.
Regarding the third Fintiv factor, Petitioner argues that aside from
claim construction proceedings, “the district court has not invested other
substantive efforts and the litigation is not ‘advanced.’” Pet. Reply 8.
Petitioner asserts that summary judgment is still months away, the court is
unlikely to tackle invalidity until trial, and fact discovery and depositions are
ongoing. Id. Patent Owner’s Sur-reply, however, provides updated
information regarding the status of the underlying litigation. See generally
PO Sur-reply. As evidence of the court’s investment of time and resources,
Patent Owner highlights the court’s claim construction hearing and order
and its rulings on various motions. Id. at 5. As for the parties’ investment in
the underlying litigation, Patent Owner notes that fact discovery closed on
March 31, 2020, except for some depositions postponed due to COVID-19
that are now complete, and expert discovery was scheduled to close on
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Patent 6,408,193 B1
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June 25, 2020. Id. at 6. Thus, much of the court’s and the parties’ work
related to invalidity has been completed in preparation for trial in October
2020. Because at least some of this invested effort, including claim
construction and expert discovery, likely has relevance to issues in the
Petition, the third Fintiv factor favors the exercise of discretionary denial in
this case to prevent duplication of work on similar issues by the Board and
the district court.
B. Fintiv Factor 4
Petitioner contends there is little overlap between the issues in this
case and those in the underlying litigation. Pet. Reply 9–10. First, Petitioner
argues that the sole unpatentability ground asserted in the Petition—
obviousness over Waldroup and Nakayama—is different from the two
invalidity grounds asserted in the underlying litigation—obviousness over
Mucke4 and Nakayama, and obviousness over Waldroup and Mucke.
Id. at 9 (citing Pet. 7; Ex. 1047, 3 (Apple’s Final Election of Prior Art)).
Although both references asserted here also are asserted in the trial court,
Petitioner contends the issues are materially different because (1) “Mucke is
relied on critically in each district court theory and is not at issue in the
IPR,” and (2) despite Petitioner’s common citations to Waldroup and
Nakayama before both tribunals, an obviousness analysis considers whether
a person of ordinary skill in the art would have been motivated to combine
the references in a specific manner. Id. at 9–10. Petitioner further argues
that different claims are at issue: Petitioner challenges claims 1, 6, and 7 in
this proceeding but only claims 1 and 6 in the underlying litigation. Id.

4 U.S. Patent No. 5,548,616, issued Aug. 20, 1996 (Ex. 1012).
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Patent 6,408,193 B1
13
According to Petitioner, claim 7 “presents notable, non-overlapping
limitations.” Id. at 10.
Patent Owner argues the issues in this proceeding are substantially the
same as in the underlying litigation. PO Sur-reply 7. Patent Owner notes
that at the time the Petition was filed, Petitioner relied on the same
obviousness theory based on Waldroup and Nakayama in district court.
Prelim. Resp. 8–10 (citing Ex. 2005, 64 (Apple’s Invalidity Contentions);
Ex. 2004 (detailing Apple’s preliminary invalidity contentions)); PO
Sur-reply 7–8. Patent Owner notes further that Petitioner’s Final Election of
Prior Art in the underlying litigation, served on April 7, 2020, continues to
rely on Waldroup and Nakayama, albeit in separate grounds. Prelim.
Resp. 10; PO Sur-reply 7–8; see Ex. 1047, 3 (Apple’s Election of Prior Art).
Comparing the Petition’s citations to Waldroup and Nakayama for each
limitation of claim 1 with those in Petitioner’s district court preliminary
invalidity contentions, Patent Owner asserts that the substantial overlap
shows the trial will address the same issues raised in the Petition. Prelim.
Resp. 8–9 (comparing Pet. 25–58 with Ex. 2004, 1–39); PO Sur-reply 7.
Patent Owner also notes that Mucke is part of the record here and is cited by
Dr. Redman-White in his declaration testimony, although we recognize that
Petitioner is not applying Mucke against the challenged claims here. PO
Sur-reply 7 (citing Ex. 1006 ¶¶ 40–41, 59, 68–69); see Ex. 1012.
Patent Owner further contends it was required to narrow the set of
asserted claims in the underlying litigation. PO Sur-reply 8. Patent Owner
argues that Petitioner cannot “avoid denial simply by challenging an
extraneous unasserted claim (Claim 7) that raises the same invalidity issues
as the asserted ones (Claims 1 and 6).” Id. In addition, Patent Owner
contends that Petitioner itself acknowledges substantial overlap between
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Patent 6,408,193 B1
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claims 1 and 7, as it relies solely on its claim 1 analysis for twelve out of
fifteen limitations in claim 7. Id. (citing Pet. 61–68).
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. In this case, although the
obviousness ground asserted here is not identical to either ground in
Petitioner’s final invalidity contentions, both of the references relied on in
the Petition are asserted in the underlying litigation. As illustrated by Patent
Owner’s comparison of citations in the Petition with those in Petitioner’s
preliminary invalidity contentions in district court, substantial overlap exists
between the disclosures of Waldroup and Nakayama relied on in the two
proceedings. See Prelim. Resp. 8–9 (comparing Pet. 25–58 with Ex. 2004,
1–39). Thus, arguments and evidence regarding the teachings of Waldroup
and Nakayama in the Petition are substantially the same as those in the
underlying litigation. Although there may be some differences in the
reasoning presented in the various obviousness grounds for combining the
prior art teachings, we nevertheless find the assertion of Waldroup and
Nakayama in both proceedings may result in duplication of work and create
the potential for inconsistent decisions.
We also determine the Petition challenges substantially the same
claims as those challenged in the underlying litigation. Independent claim 7
is the only claim challenged in this proceeding but not in the trial court. As
Patent Owner points out, most of claim 7’s limitations also are recited in
claim 1, which is at issue in both proceedings. See PO Sur-reply 8 (citing
Pet. 61–68). On the other hand, Petitioner correctly asserts that claim 7
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15
uniquely requires the claimed “power amplifier” to “include[] a maximum
power detector” that “controls an[] output power of said power amplifier.”
Ex. 1001, 12:35–36, 12:46–47; see Pet. Reply 10.
To the extent the challenge to claim 7 in this proceeding might favor
institution to serve the interest of system efficiency and integrity, our initial
inspection of the merits on the record before us suggests a weakness in the
Petition that offsets such concerns. See Fintiv, Paper 11 at 14–16 (under the
sixth Fintiv factor, identifying weaknesses regarding the merits as a
potentially relevant part of a balanced assessment in determining whether
the Board should exercise discretionary denial). As noted, claim 7 requires a
power amplifier that includes a maximum power detector. The Petition
identifies power amplifier 19 in Figure 1 of Nakayama as corresponding to
the claimed “power amplifier.” Pet. 44–45 (citing Ex. 1005 ¶ 21) (analysis
of “power amplifier” in claim 1); id. at 62 (referring to claim 1 analysis for
the same limitation in claim 7). For the recited “maximum power detector”
in claim 7, the Petition relies on detection circuit 31 in Nakayama’s Figure 1.
Id. at 62 (citing Ex. 1005 ¶ 23). As Patent Owner points out, however,
detection circuit 31 is not part of power amplifier 19 in Figure 1 of
Nakayama. Prelim. Resp. 58–59 (citing Ex. 1005, Fig. 1). Petitioner does
not explain why a person of ordinary skill in the art would have considered
power amplifier 19 to include detection circuit 31 or would have modified
Nakayama in that manner. See id.; Pet. 44–45. Thus, Petitioner does not
demonstrate sufficiently Nakayama teaches or renders obvious a “power
amplifier” that “includes a maximum power detector,” as recited in claim 7.
In summary, the two references in the Petition’s single obviousness
ground also are asserted in the district court proceeding, so that institution of
an inter partes review may result in duplicative efforts by the Board and the
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trial court as to how the references teach limitations of the challenged
claims. Both tribunals would address claims 1 and 6, and the weakness of
Petitioner’s showing with respect to claim 7 counterbalances any efficiency
that might be gained from inter partes review of that claim. For these
reasons, we determine that the fourth Fintiv factor—overlap between issues
raised in the Petition and in the parallel proceedings—on balance favors the
exercise of discretionary denial.
C. Fintiv Factor 5
Both parties acknowledge that Petitioner here is the defendant in the
underlying litigation. Pet. Reply 10; PO Sur-reply 9. Because the trial court
may reach the overlapping issues before the Board would in a final written
decision, the fifth Fintiv factor favors the exercise of discretionary denial.
D. Fintiv Factor 6
Under the sixth Fintiv factor, which takes into account any other
relevant circumstances, Patent Owner argues that Petitioner unreasonably
delayed in filing the Petition. Prelim. Resp. 13–16; PO Sur-reply 10.
Petitioner explains that the underlying litigation initially involved ten
different patents and “132 possibly-asserted claims,” and that it needed time
to locate relevant prior art and prepare petitions for inter partes review. Pet.
Reply 7–8. Having considered the particular factual circumstances of this
case, we do not consider Petitioner’s filing untimely.
Patent Owner also references its analysis of the factors enumerated in
General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357,
Paper 19 (PTAB May 4, 2016) (precedential). Prelim. Resp. 5–24; PO
Sur-reply 10. In addition to addressing facts discussed above with respect to
the Fintiv factors, Patent Owner contends that Petitioner used the Board’s
denial of institution in IPR2018-00237 as a roadmap to gain an unfair
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tactical advantage here. PO Sur-reply 10. That proceeding, however,
involved a different petitioner and different prior art and, therefore, is not
relevant to the instant analysis. See Pet. 8.
As noted in Fintiv, a balanced assessment of factors may include
consideration of the merits. Fintiv, Paper 11 at 14–15. Neither party argues
that any particular strength or weakness of the merits bears on our decision
whether to exercise discretionary denial. See Pet. Reply 10; PO
Sur-reply 10. To the extent we have considered the merits in our
determination, the discussion of the fourth factor above includes our
analysis.
Finally, we note that Petitioner presents extensive policy arguments
against the Board’s application of Fintiv and NHK in determining whether to
exercise discretion to deny institution under 35 U.S.C. § 314(a). Pet.
Reply 1–6. We need not address these arguments, as the Under Secretary of
Commerce for Intellectual Property and Director of the U.S. Patent and
Trademark Office has designated Fintiv and NHK precedential decisions of
the Board.
E. Conclusion
Based on the particular circumstances of this case, we determine that
instituting an inter partes review would be an inefficient use of Board
resources. As discussed above, the trial in the underlying litigation is
currently scheduled to begin in less than four months and may conclude
several months before we would reach a final decision in this proceeding.
The district court and the parties have expended effort in preparing for the
upcoming trial that will address issues that substantially overlap with those
raised in the Petition. All of the Fintiv factors discussed above either weigh
in favor of exercising discretion to deny institution or are neutral. On
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balance, after a holistic consideration of the relevant facts, we conclude that
efficiency and integrity of the system are best served by denying institution.
Thus, we exercise our discretion under § 314(a) to deny institution of inter
partes review.
IV. ORDER
Accordingly, it is
ORDERED that the Petition is denied; and
FURTHER ORDERED that no inter partes review is instituted.

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PETITIONER:

Adam P. Seitz
Paul R. Hart
Jennifer C. Bailey
Robin A. Snader
ERISE IP, P.A.
adam.seitz@eriseip.com
paul.hart@eriseip.com
jennifer.bailey@eriseip.com
robin.snader@eriseip.com

PATENT OWNER:

Robert G. Pluta
Amanda S. Bonner
Luiz Miranda
James A. Fussell
Saqib J. Siddiqui
MAYER BROWN LLP
rpluta@mayerbrown.com
asbonner@mayerbrown.com
lmiranda@mayerbrown.com
jfussell@mayerbrown.com
ssiddiqui@mayerbrown.com