Ramot at Tel Aviv University Ltd.

Patent Trials and Appeals Board

May 15, 2020

IPR2020-00123 (P.T.A.B. May. 15, 2020)

Trials@uspto.gov Paper 14
571-272-7822 Date: May 15, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

CISCO SYSTEMS, INC.,
Petitioner,
v.
RAMOT AT TEL AVIV UNIVERSITY LTD.,
Patent Owner.

IPR2020-00123
Patent 10,270,535 B1

Before CHRISTOPHER L. CRUMBLEY, MONICA S. ULLAGADDI, and
JASON M. REPKO, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge REPKO.

Opinion Dissenting filed by Administrative Patent Judge CRUMBLEY.

REPKO, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

IPR2020-00123
Patent 10,270,535 B1
2
I. INTRODUCTION
Cisco Systems Inc. (“Petitioner”) filed a petition to institute inter
partes review of claims 1 and 2 of U.S. Patent No. 10,270,535 B1 (Ex. 1001,
“the ’535 patent”). Paper 2 (“Pet.”). Ramot at Tel Aviv University Ltd.
(“Patent Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
To institute an inter partes review, we must determine “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). But the
Board 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.”); Gen. Plastic Indus. Co. v.
Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017)
(precedential as to § II.B.4.i); NHK Spring Co. v. Intri-Plex Techs., Inc.,
IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential); Patent Trial
and Appeal Board Consolidated Trial Practice Guide 64 (Nov. 20, 2019),
http://www.uspto.gov/TrialPracticeGuideConsolidated (identifying
considerations that may warrant exercise of this discretion).
We authorized additional briefing to address discretionary denial of
the Petition under § 314(a). Paper 9. Petitioner filed a reply. Paper 10
(“Reply”). And Patent Owner filed a sur-reply. Paper 11 (“Sur-reply”).
For the reasons discussed below, we exercise our discretion under
§ 314(a) to deny institution here.

IPR2020-00123
Patent 10,270,535 B1
3
II. BACKGROUND
A. Related Matters
According to the parties, the ’535 patent has been asserted in Ramot at
Tel Aviv University Ltd. v. Cisco Systems, Inc., No. 2:19-cv-00225 (E.D.
Tex. filed June 12, 2019). Pet. 8; Paper 4, 2 (Patent Owner’s Mandatory
Notice).
B. The ’535 Patent
The ’535 patent generally relates to optical-signal modulation. See,
e.g., Ex. 1001, Abstract. At the time of the invention, analog optics
modulation systems typically used Mach-Zehnder Interferometer (MZI)
modulators. Id. at 1:52–54. MZI modulators, though, have an inherent non-
linear response. Id. at 1:58–60. This can be a problem in analog applications.
Id. And solutions at the time were inefficient, complex, or had limited
dynamic range. See id. at 1:66–2:30
To address these problems, the patent describes using a digital-to-
digital converter (DDC) to convert the input data to an electrode-actuation
pattern that more closely matches an ideal linear response. Id. at 7:40–45,
7:58–62. Because the conversion is efficiently performed in the digital
domain, the invention can be used in high-frequency systems. Id. at 7:59–62.
C. Claims
Petitioner challenges claims 1 and 2, which are reproduced below.
1. A method of modulating and transmitting an optical
signal over an optical fiber in response to N bits of digital data in
parallel, the method comprising:
inputting the N bits of digital data into an optical
modulator having a plurality of waveguide
branches, where each branch has an input of an
unmodulated optical signal;
IPR2020-00123
Patent 10,270,535 B1
4
converting the N bits of digital data to M drive voltage
values, where M>N and N>1;
coupling the M drive voltage values to the unmodulated
optical signal, said coupling enabling pulse
modulation of the unmodulated optical signal,
thereby generating a pulse modulated optical signal;
and
transmitting the pulse modulated optical signals over an
optical fiber.
Ex. 1001, 17:9–18:2.
2. A method of modulating and transmitting an optical
signal over an optical fiber in response to N bits of digital data in
parallel, the method comprising:
inputting the N bits of digital data into an optical
modulator having a plurality of waveguide
branches, where each branch has an input of an
unmodulated optical signal;
converting the N bits of digital data to M drive voltage
values, where M>N and N>1;
coupling the M drive voltage values to the unmodulated
optical signal, said coupling enabling modulation of
the unmodulated optical signal by QAM, thereby
generating a QAM modulated optical signal; and
transmitting the QAM modulated optical signal over an
optical fiber.
Id. at 18:3–18.
D. Evidence
Reference Issued Date Exhibit No.
US 7,277,603 B1 to Roberts Oct. 2, 2007 1005
US 7,609,935 B2 to Burchfiel Oct. 27, 2009 1008
Keang-Po Ho, Phase-Modulated Optical Communication Systems, 2005
(Ex. 1006)
IPR2020-00123
Patent 10,270,535 B1
5
E. Asserted Grounds
Petitioner asserts that claims 1 and 2 would have been unpatentable on
the following grounds. Pet. 21.
Claim(s) Challenged pre-AIA
1
35 U.S.C. § Reference(s)/Basis
1, 2 103 Roberts
1, 2 103 Roberts, Ho
1, 2 103 Roberts, Burchfiel
F. § 314(a)
Under § 314(a), the Director has discretion to deny institution. In
determining whether to exercise that discretion on behalf of the Director, we
are guided by the Board’s precedential decision in NHK Spring Co. v. Intri-
Plex Technologies, Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018).
In NHK, the Board found that the “advanced state of the district court
proceeding” was a “factor that weighs in favor of denying” the petition
under § 314(a). NHK, Paper 8 at 20. The Board determined that “[i]nstitution
of an inter partes review under these circumstances would not be consistent
with ‘an objective of the AIA . . . to provide an effective and efficient
alternative to district court litigation.’” Id. (citing Gen. Plastic, Paper 19 at
16–17 (precedential in relevant part)).
“[T]he Board’s cases addressing earlier trial dates as a basis for denial
under NHK have sought to balance considerations such as system efficiency,
fairness, and patent quality.” Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper
11 at 5 (PTAB Mar. 20, 2020) (precedential) (collecting cases). Fintiv sets
forth six non-exclusive factors for determining “whether efficiency, fairness,

1 Congress amended § 103 when it passed the Leahy-Smith America Invents
Act (AIA), Pub. L. No. 112–29, § 3(c), 125 Stat. 284, 287 (2011). Here, the
previous version of § 103 applies.
IPR2020-00123
Patent 10,270,535 B1
6
and the merits support the exercise of authority to deny institution in view of
an earlier trial date in the parallel proceeding.” Id. at 6. These factors
consider
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. In the sections that follow, we discuss each factor.

1. Factor 1: whether the court granted a stay or evidence exists that one
may be granted if a proceeding is instituted
“A district court stay of the litigation pending resolution of the PTAB
trial allays concerns about inefficiency and duplication of efforts. This fact
has strongly weighed against exercising the authority to deny institution
under NHK.” Id.
Here, the district court has denied the motion to stay without prejudice
to its refiling if the Board institutes. Ex. 2005. Petitioner argues that “the
court merely referenced its ‘established practice’ of denying such stay
requests before an IPR is instituted.” Reply 3 (citing Ex. 2005, 1). According
to Petitioner, the district court emphasized in previous decisions to stay that
the institution decision was due before the claim construction hearing.
IPR2020-00123
Patent 10,270,535 B1
7
Id. at 4 (citing Uniloc USA, Inc. v. Google, LLC, No. 2-17-cv-00231, Dkt. 47
at 2 (E.D. Tex. Oct. 3, 2017)).
But in this case, the claim construction hearing has been held.
Ex. 2016, 4 (Amended Docket Control Order). To be sure, at the time that
Petitioner filed its reply, the claim construction hearing was scheduled for
May 19, 2020—one day after the institution decision’s due date. Ex. 2004, 3.
The district court, though, later changed the hearing date to May 11, 2020.
Ex. 2016, 4. Thus, Petitioner’s argument about a stay based on the claim
construction hearing’s date has lost at least some of its merit. See Reply 4.
Regardless, Petitioner acknowledges that “it is unknown and entirely
speculative at this point whether the case will be stayed or the trial date will
be otherwise delayed.” Id.
On this record, we decline to speculate how the district court would
rule on another stay request. A judge determines whether to grant a stay
based on the facts in each case. Here, there is little evidence to suggest that
the district court will grant a stay, should another one be requested. So this
factor does not weigh in favor of or against discretionary denial.

2. Factor 2: proximity of the court’s trial date to the Board’s projected
statutory deadline for a final written decision;
“If the court’s trial date is earlier than the projected statutory deadline,
the Board generally has weighed this fact in favor of exercising authority to
deny institution under NHK.” Fintiv, Paper 11 at 9.
According to the current record, the district court trial is scheduled to
begin on December 9, 2020. Ex. 2016, 1. The Board may not issue a final
decision in this proceeding until approximately May 2021—six months after
the trial begins.
IPR2020-00123
Patent 10,270,535 B1
8
Because the trial date is substantially earlier than the projected
statutory deadline for the Board’s final decision, this factor weighs in favor
of discretionary denial.

3. Factor 3: investment in the parallel proceeding by the court and the
parties
“The Board also has considered the amount and type of work already
completed in the parallel litigation by the court and the parties at the time of
the institution decision.” Fintiv, Paper 11 at 9. “[M]ore work completed by
the parties and court in the parallel proceeding tends to support the
arguments that the parallel proceeding is more advanced, a stay may be less
likely, and instituting would lead to duplicative costs.” Id. at 10. For
instance, Petitioner points out that the district court may base its decision to
stay, in part, on whether the institution decision is due before the claim
construction hearing. Reply 4 (citing Uniloc USA, Inc. v. Google, LLC, No.
2-17-cv-00231, Dkt. 47 at 2 (E.D. Tex. Oct. 3, 2017)).
At the time of this decision, the parties have spent months briefing the
district court on the claim construction issues in the parallel proceeding.
Ex. 2016, 4. Specifically, Petitioner filed its invalidity contentions in the
parallel proceeding, including detailed claim charts that address the same
prior art cited in the Petition. See Ex. 2008 (invalidity contentions); Ex. 2009
(chart). The parties submitted claim construction charts and briefs. Ex. 2016,
4; Ex. 2015 (Joint Claim Construction Statement). And a claim construction
hearing was held on May 11, 2020. Ex. 2016, 4.
As for the remaining work, expert discovery is scheduled to be
completed within two months. Id. at 3 (showing a deadline of July 20, 2020
for completing expert discovery). According to the current schedule, a jury
IPR2020-00123
Patent 10,270,535 B1
9
trial begins in seven months. Id. at 1. Similarly, the Board in NHK
determined that the parallel proceeding in that case was in an “advanced
state” when expert discovery was scheduled to end in less than two months
and a jury trial was scheduled to begin in six months. NHK, Paper 8 at 20. In
NHK, the Board found the case’s advanced state to be an additional factor
that favored denying institution. Id. Here, we determine that the district court
case is in a similar state and take this into account in our overall assessment
of the investment that potentially remains.
To be sure, the district court has yet to issue a claim construction
order or make other determinations on the merits. Considering the current
investment in the invalidity and construction contentions, though, this factor
weighs somewhat in favor of discretionary denial.

4. Factor 4: overlap between issues raised in the petition and in the
parallel proceeding
“[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.” Fintiv, Paper 11 at 12.
The claims involved in the district court proceeding are also
challenged in the Petition. Pet. 21; Ex. 2009, 1 (Petitioner’s Invalidity
Contentions). And both the Petition and Petitioner’s invalidity contentions in
the parallel proceeding include obviousness rationales based on Roberts,
alone and in combination with Ho or Burchfiel. Compare Ex. 2009, 1, with
Pet. 21. In fact, Petitioner’s claim-invalidity chart in the parallel proceeding
contains substantially similar assertions to those in the Petition. Compare
Ex. 2009, 3–30 (chart), with Pet. 21–80 (§ XII Identification of How the
Claims are Unpatentable).
IPR2020-00123
Patent 10,270,535 B1
10
Patent Owner argues that Petitioner has not shown that Roberts
teaches or suggests the converting step recited in claims 1 and 2. See
Prelim. Resp. 17–31. According to Patent Owner, the district court will hear
and rule on the same arguments about the correct construction of
“converting.” Id. at 11.
Indeed, all challenges in the Petition are based on Roberts. Pet. 21. So
the meaning of “converting” is likely to be one of the central issues in this
case. To resolve this issue, the Board would need to hear arguments about
the correct construction of “converting,” which is one of the claim terms to
be construed in the district court case. See, e.g., Ex. 2015, 7–10 (Chart of
Disputed Constructions). And both proceedings would likely involve similar
arguments about Roberts. Ex. 2009, 12–16 (discussing “converting” in
connection with Roberts). In at least these ways, the parallel proceedings
would duplicate effort. This is an inefficient use of Board, party, and judicial
resources and raises the possibility of conflicting decisions.
Because the Petition includes the same or substantially the same
claims, grounds, arguments, and evidence as presented in the parallel
proceeding, this factor favors exercising our discretion to deny institution.

5. Factor 5: whether the petitioner and the defendant in the parallel
proceeding are the same party
If the petitioner and the defendant in the parallel proceeding are the
same, this factor weighs in favor of discretionary denial. Fintiv, Paper 11 at
13–14.
Here, Petitioner is the defendant in the parallel litigation in the United
States District Court for the Eastern District of Texas in Ramot at Tel Aviv
University Ltd. v. Cisco Systems, Inc., No. 2:19-cv-00225 (E.D. Tex. filed
IPR2020-00123
Patent 10,270,535 B1
11
June 12, 2019). Pet. 8; Paper 4, 2 (Patent Owner’s Mandatory Notice); see
also Prelim. Resp. 10 (describing Petitioner’s involvement the case). So this
factor weighs in favor of discretionary denial.

6. Conclusion
All Fintiv factors weigh in favor of exercising our discretion to deny
institution under § 314(a) except for one, which is neutral. We have
reviewed the Petition and determine that its merits do not outweigh the
Fintiv factors—especially considering the number of overlapping issues in
district court, which strongly favors denial under factor 4, and the trial date,
which is substantially earlier than the projected statutory deadline for the
Board’s final decision.
On balance, instituting would be an inefficient use of Board, party,
and judicial resources. See NHK, Paper 8 at 20. Thus, efficiency and
integrity of the system are best served by denying review. See Consolidated
TPG at 58 (quoting 35 U.S.C. § 316(b)).

III. CONCLUSION
We exercise our discretion under § 314(a) to deny institution.

IV. ORDER
It is
ORDERED that the Petition is denied.

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

CISCO SYSTEMS, INC.,
Petitioner,
v.
RAMOT AT TEL AVIV UNIVERSITY LTD.,
Patent Owner.

IPR2020-00123
Patent 10,270,535 B1

Before CHRISTOPHER L. CRUMBLEY, MONICA S. ULLAGADDI, and
JASON M. REPKO, Administrative Patent Judges.
CRUMBLEY, Administrative Patent Judge, dissenting.

In my opinion, the case at hand does not present a situation in which it
is appropriate for the Board to exercise its discretion to deny institution of
trial. Post-grant proceedings under the America Invents Act, including inter
partes reviews, were intended as an alternative to district court patent
litigation that would be both faster and more efficient than an infringement
suit. See H. R. Rep. No. 112-98, pt. 1, 48 (2011) (“purpose of the section
[is] providing quick and cost effective alternatives to litigation.”); see also
Thryv, Inc v. Click-To-Call Techs., LP, 140 S. Ct. 1367, 1374 (2020) (“By
IPR2020-00123
Patent 10,270,535 B1
2
providing for inter partes review, Congress, concerned about overpatenting
and its diminishment of competition, sought to weed out bad patent claims
efficiently.”). The majority’s decision today, following recent Board
precedent, risks focusing only on the “faster” aspect of this goal, while
sacrificing the “more efficient” aspect. In other words, the majority defers
to a district court proceeding merely because it is currently scheduled to be
faster than this inter partes review would be, without considering whether
the Board may nevertheless be a more efficient venue. For the reasons
discussed below, I respectfully dissent.
The majority’s analysis primarily focuses on an application of factors
set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5 (PTAB
Mar. 20, 2020) (precedential), an order the Director recently designated as
precedential. The “Fintiv factors” are precedential to the extent they identify
considerations that should be relevant to the Board’s decision whether to
deny institution under 35 U.S.C. § 314(a) in light of a copending district
court proceeding. But I also note that Fintiv was an interlocutory order
requesting further briefing from the parties on its factors (id. at 17); the
panel did not actually apply those factors in the precedential order and there
is no precedential “holding,” in the conventional sense of legal precedent.1
Therefore, Fintiv does not control how we should apply its factors to the
facts of this case, nor does it instruct us how to weigh the factors. And it is
in this application and weighing of the factors that I disagree with the
majority’s approach.

1 The Board issued a decision denying institution of trial in Fintiv this week.
IPR2020-00019, Paper 15. That decision has not been designated
precedential and should be given the same weight as any other routine
decision of the Board.
IPR2020-00123
Patent 10,270,535 B1
3
1. Fintiv Factor One
The first Fintiv factor is “whether the court granted a stay or evidence
exists that one may be granted if a proceeding is instituted.” The majority
correctly notes that the District Court here previously denied the Petitioner’s
motion to stay pending the outcome of this inter partes review, but that the
denial was based on the court’s “established practice” of denying stays prior
to the Board’s determination whether to institute trial. And the court’s Order
expressly notes that the Petitioner may refile its motion to stay “if and when
IPR proceedings are instituted by the PTAB,” expressing its willingness to
revisit the question. Ex. 2005, 2. As a starting point, the fact that the district
court has expressed willingness to revisit the question of a stay is itself
relevant, as the Fintiv panel noted, and has “usually” weighed against denial.
Nevertheless, the majority concludes that it is “speculative” whether
the court will grant a stay if the motion is renewed, and therefore finds this
Fintiv factor to be neutral. Of course, the question of whether a district court
will grant a stay in any particular case is based on the facts of that case, and
we cannot say with certitude what decision the court will reach when
Petitioner renews its motion to stay. Indeed, Judge Gilstrap, the presiding
judge in the district court proceeding here, has cautioned that “motions to
stay are highly individualized matters and parties predict ongoing patterns
from the Court at their peril.” Image Processing Techs., LLC v. Samsung
Elects. Co., Ltd., 2017 WL 7051628, *1 (E.D. Tex. Oct. 25, 2017). But that
does not mean that assessing the likelihood of a stay in determining whether
to exercise our discretion to deny institution of trial is a purely speculative
exercise.
It is not speculation to look to the facts of this case, and the district
court’s past practices in similar circumstances, to assess the likelihood of a
IPR2020-00123
Patent 10,270,535 B1
4
stay pending outcome of an inter partes review. Two of these facts—the
stage of the district court proceeding, and the overlap of the issues between
the proceedings—are separate factors under Fintiv, and I address them
below under those factors. But these facts also, in my estimation, make it
more likely that the court would stay the litigation while the inter partes
review runs its course. See Fintiv at 6 (“there is some overlap among these
factors. Some facts may be relevant to more than one factor.”).
Regarding the stage of the district court proceeding, the majority
highlights the fact that the court’s claim construction hearing was originally
scheduled for the day after our institution decision is due (May 19, 2020),
but was recently modified to occur the week prior to our institution decision
(May 11, 2020). I fail to see how this fact is especially relevant to whether
the district court will grant a stay. Regardless of whether the court’s claim
construction hearing has occurred, the court has not yet issued its opinion
construing the claims. This has been relevant to the district court’s decision
to stay cases in the past. See Uniloc USA, Inc. v. Google, LLC, No. 2-17-cv-
00231, Dkt. 47, 2 (E.D. Tex. Oct. 3, 2017) (“No patent claims have been
construed by the Court in these cases and discovery has barely begun.”).
And in any event, even where the court has issued its claim construction
order, Judge Gilstrap has granted motions to stay where appropriate. See
Image Processing Techs., LLC at *2 (granting stay after entry of claim
construction order). In my view, the occurrence of the claim construction
hearing does not significantly diminish the likelihood of a stay, as the
majority implies.
Rather, the facts of this case are dissimilar from cases in which Judge
Gilstrap has found that the stage of the litigation weighed against a stay. For
example, in Intellectual Ventures I LLC v. T-Mobile USA, Inc., No. 2:17-cv-
IPR2020-00123
Patent 10,270,535 B1
5
00577, Dkt. 255 (E.D. Tex. Dec. 13, 2018), the court denied a stay due to the
litigation’s “advanced stage.” But in that case, discovery and claim
construction had concluded, the parties had filed expert reports and deposed
those experts, and the court had decided several dispositive and Daubert
motions. Id. at 6. Furthermore, at the time the court decided the motion,
pretrial was less than a month away. Id. This is a far cry from the situation
in the present case, and signals that the court is less likely to stay the
litigation here.
The significant overlap in the invalidity challenges at issue in each
proceeding, which the majority notes under the fourth Fintiv factor, also
makes it more likely that the district court will grant a stay. In deciding
whether to stay in view of a copending inter partes review, the district court
frequently considers whether the stay will simplify the case before the court.
See NFC Techs. LLC v. HTC Am., Inc., 2015 WL 1069111, *2 (E.D. Tex.
Mar. 11, 2015) (Bryson, J.). Relevant to this question is whether the claims
challenged before the Board are the same as those asserted in the
infringement trial, and the basis for those challenges. As the majority
observes, Petitioner’s claim invalidity chart in the district court is
substantially similar to the grounds advanced in the Petition in this case.
And I further note that the two other patents asserted before the district court
in the litigation are challenged in separate petitions filed before the Board.
See IPR2020-00122; IPR2020-00484. If we were to institute trial and reach
a final written decision in these cases, we would likely simplify, if not
resolve entirely, the invalidity issues the district court must address. This is
an additional factor that makes a stay of the litigation more likely.
Finally, though it is not an explicit Fintiv factor, the Eastern District
of Texas has in the past considered the diligence of the defendant in filing its
IPR2020-00123
Patent 10,270,535 B1
6
petitions for inter partes review in determining whether to grant a stay. For
example, in Trover Grp., Inc. v. Dedicated Micros USA, 2015 WL 1069179,
*3 (E.D. Tex. Mar. 11, 2015) (Bryson, J.), the court noted that the defendant
waited nearly a year after the complaints were served to file its petition for
inter partes review five days before the statutory deadline, and that this was
months after the defendant had served its invalidity contentions. Id; cf.
NFC Tech. LLC v. HTC Am., Inc. 2015 WL 1069111, *4 (E.D. Tex. Mar 11,
2015) (delay of seven and one-half months in filing a petition not
unreasonable, especially when it was less than four months after
infringement contentions served). By contrast, the Petitioner here appears to
have acted diligently in filing its inter partes review petition, less than five
months after the service of the complaint and less than two months after
receiving Patent Owner’s infringement contentions. Paper 11, 5. And
Petitioner did not even wait to serve its invalidity contentions before filing
the instant Petition. Prelim. Resp. 10 (invalidity contentions served Nov. 15,
2019). All of these facts are likely to be considered by the district court as
weighing in favor of a stay.
In sum, while we cannot say for certain whether the district court will
grant a stay in this case, that is necessarily true of all cases where the court
has denied a stay but indicated a willingness to revisit the issue. But that
does not make evaluating the likelihood of such a stay a purely speculative
endeavor. Based on the facts here, it is reasonably likely that the district
court will grant a stay if we were to institute trial, and I would conclude that
this Fintiv factor weighs strongly against denying institution.
2. Fintiv Factor Two
The second Fintiv factor takes into account the “proximity of the
court’s trial date to the Board’s projected statutory deadline for a final
IPR2020-00123
Patent 10,270,535 B1
7
written decision.” The majority here notes that the current trial date set by
the district court is December 9, 2020, while our final written decision will
not be due until May 2021. My colleagues conclude that this weighs in
favor of discretionary denial.
But the consideration of the “proximity” of the trial date cannot be as
simple as comparing two dates on the calendar and determining which is
first. Rather, we must take into account the entirety of the facts, which
includes the likelihood that the district court will grant a stay. Obviously, if
the litigation is stayed—an outcome I have concluded is a significant
possibility—the trial date in December of this year will necessarily be
pushed back, and will occur after the issuance of our final written decision.
The majority does not take this possibility into account in finding that this
factor counsel in favor of denial. But the likelihood of a stay significantly
diminishes whatever weight this factor may have. As such, I would find that
this factor, at best, weighs slightly in favor of denial.
3. Fintiv Factor Three
The third Fintiv factor considers the “investment in the parallel
proceeding by the court and the parties,” with the goal of reducing
duplication of effort between the two tribunals. Again, I believe the
likelihood of a stay at the district court is relevant here, because it would
necessarily eliminate any risk of duplicated effort going forward. But even
without considering the likelihood of a stay, I disagree with the majority’s
evaluation that the district court proceeding is at an “advanced stage.”
I agree with the majority that, in order to evaluate whether the
“investment” in the parallel proceeding is significant enough to weigh
against institution, we must look both backward, to the investment that has
already been made, as well as forward, to the investment that will be
IPR2020-00123
Patent 10,270,535 B1
8
required if the litigation proceeds. In my view, it is only if the former
outweighs the latter that we should consider this factor to favor denial.
The majority primarily looks backward, to the fact that invalidity
contentions have been served, claim construction briefing has been
completed, and the claim construction hearing held, as evidence of
“investment.” But claim construction is one of the earliest stages of any
district court patent infringement suit.2 My colleagues only look forward to
note that expert discovery closes in two months, and that a jury trial is
scheduled in seven months, without taking into account the investment that
will be required of the parties and the court during that period. There is no
evidence here that the parties have submitted significant briefing on any
dispositive issue, or that the court has made any determination on the merits.
All of these events have yet to happen, and outweigh the investment to this
point.
The majority also analogizes the present case to the situation
presented in our precedential decision of NHK Spring Co. v. Intri-Plex
Technologies, Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018)
(precedential). But the NHK Spring analogy only gets us so far. While I
recognize that both cases involve trial dates that are six to seven months
away, and expert discovery periods that close in two months, the panel in
NHK Spring found that this “advanced stage” of the proceeding was only
enough to counsel for the denial of institution as an additional factor in

2 Indeed, our Rules explicitly contemplate that the Board will often take up
an inter partes review after a district court has construed the claims at
issue—our recently-revised claim construction rule instructs us to take into
account a prior claim construction determination made in a civil action. 37
C.F.R. § 42.100(b).
IPR2020-00123
Patent 10,270,535 B1
9
connection with its decision to deny under 35 U.S.C. § 325(d). Here, by
contrast, the majority concludes that similar facts are sufficient to counsel
for denial on their own. This is a significant broadening of the rationale of
NHK Spring, and should not subsume a measured examination of the stage
of the litigation.
I would not conclude on this record that the district court or the parties
have made a significant investment in the district court proceeding, and
would conclude that this Fintiv factor does not counsel in favor of denial.
4. Fintiv Factor Four
The fourth Fintiv factor examines the “overlap between issues raised
in the petition and in the parallel proceeding.” I agree with the majority’s
evaluation that the invalidity issues raised in the district court substantially
overlap those raised by the Petition before us. But I disagree that this factor
should weigh against institution when viewed in light of all of the facts. As
discussed above, it is the very fact that there is significant overlap between
the issues in the proceedings that makes it more likely that the district court
will grant a motion to stay the litigation. The majority’s concern that the
“the parallel proceedings would duplicate effort” and that this risks “the
possibility of conflicting decisions” is only a concern if we presume that the
district court will not stay the litigation. But, as discussed above, there is no
basis for such a presumption, and we should not interpret this Fintiv factor
so strictly that it creates a presumption that both cases will move forward
concurrently.
Indeed, if the district court stays the litigation, there is likely no
overlap between the issues presented in the proceeding, at all. If the
outcome of the inter partes review is that all challenged claims are
unpatentable, then there is nothing left for the district court to decide on the
IPR2020-00123
Patent 10,270,535 B1
10
question of infringement. On the other hand, if the Board upholds one or
more claims, Petitioner is substantially constrained by the estoppels of 35
U.S.C. § 315(e)(2) in the invalidity arguments it can raise before the court,
and it is likely that the court will only have to decide the question of
infringement. Either way, overlapping issues are unlikely, and Congress’
goal of providing an efficient alternative venue for resolving questions of
patentability is achieved.
In light of these facts, I would find that the substantial overlap of
issues between the district court proceeding and this inter partes review
weighs against exercising our discretion to deny institution.
5. Fintiv Factor Five
The majority applies the fifth Fintiv factor as “if the petitioner and the
defendant in the parallel proceeding are the same, this factor weighs in favor
of discretionary denial.” Again, as Fintiv is an interlocutory order that did
not apply its factors or weigh them, it does not set precedent beyond the
definition of the factors themselves. But even setting that issue aside, I
believe that the majority misinterprets the factor. The Fintiv order merely
states that “[i]f a petitioner is unrelated to a defendant in an earlier court
proceeding, the Board has weighed this fact against exercising discretion to
deny institution under NHK.” Fintiv at 13–14 (emphasis added). In defining
the factor, the order says nothing about situations in which the petitioner is
the same as, or is related to, the district court defendant. The majority here
simply presumes that, in such situations, the factor weighs in favor of denial
of institution.3

3 To be fair, the majority is not alone among panels of the Board that have
applied the factor in this manner. See, e.g., IPR2020-00019, Paper 15, 15
IPR2020-00123
Patent 10,270,535 B1
11
My interpretation of the fifth Fintiv factor is that it only becomes
relevant when the district court defendant and the petitioner before the Board
are unrelated, in which case it weighs against denial of institution. In cases
such as the one at hand, where the parties are the same, the factor is neutral.
To hold otherwise—that the factor weighs in favor of denial if the parties are
the same—would, in effect, tip the scales against a petitioner merely for
being a defendant in the district court. But I see no basis for such a
presumption, either in the text of the statute or in the intent of Congress in
passing it. Indeed, it would seem to be contrary to the goal of providing
district court litigants an alternative venue to resolve questions of
patentability.
I would find that the fifth Finitiv factor is neutral in this case.
6. Fintiv Factor Six
The final Fintiv factor is a catch-all that takes into account any other
relevant circumstances. Typically, the Board has looked at the strength of
the Petitioner’s unpatentability arguments under this factor, because
especially strong arguments for patentability may outweigh the other factors.
The majority, however, does not address the merits of Petitioner’s grounds
of unpatentability. While I interpret this to mean that the majority believes
the unpatentability grounds in the Petition are not strong enough to outweigh
the other factors, in the absence of an explanation I cannot agree or disagree
with my colleagues’ reasoning. But I need not venture into an evaluation of
the merits here, because none of the other factors weigh strongly enough in
favor of denial that assessing the merits is necessary.

(same party weighs in favor of denial); IPR2020-00106, Paper 17, 11
(same).
IPR2020-00123
Patent 10,270,535 B1
12
I would, however, consider the Petitioner’s diligence in filing its
Petition as an “other circumstance” under this Fintiv factor. Not only does
considering the reasonableness of Petitioner’s behavior encourage
defendants to act diligently in filing their Petitions with the Board, it also
helps ensure that a Petitioner who acts reasonably is not penalized for timing
issues that are outside its control. As discussed above, the Petition in this
case was filed within two months of receiving the Patent Owner’s
infringement contentions, and before the invalidity contentions were due to
be served. It is difficult to see how the Petitioner could reasonably have
been expected to file its Petition sooner; to hold otherwise would set an
expectation that a Petitioner is expected to hazard a guess as to the claims
that will be asserted by the Patent Owner and file a petition as to those
claims in the hopes of avoiding a discretionary denial by the Board.
I would conclude that the sixth Fintiv factor, taking into account the
diligence of the Petitioner, weighs against denial of institution.
7. Conclusion
I would weigh the various Fintiv factors as follows. In my evaluation,
the only factor that arguably weighs in favor of denial is the second, and
only slightly so. The first, third, fourth, and sixth factors weigh against
denial, the first strongly so. And the fifth factor is neutral. Based on my
assessment, I do not think the case at hand is one in which discretionary
denial is appropriate.
But in a broader sense, I also take note of Fintiv’s statement that our
evaluation of the factors should be based on “a holistic view of whether
efficiency and integrity of the system are best served by denying or
instituting review.” Fintiv at 6. And in this sense, a weighing of individual
factors aside, I cannot agree with the majority that denying institution here
IPR2020-00123
Patent 10,270,535 B1
13
best serves the efficiency and integrity of the patent system. The Petitioner
here did exactly what Congress envisioned in providing for inter partes
reviews in the America Invents Act: upon being sued for infringement, and
having received notice of the claims it was alleged to infringe, it diligently
filed a Petition with the Board, seeking review of the patentability of those
claims in the alternative tribunal created by the AIA. And based on the facts
of this case and the past practice of the district court in similar cases, it is
likely that the district court litigation would be stayed if we were to decide to
institute review, thereby increasing the efficiency of the system. The inter
partes review would proceed, necessarily having a narrower scope than the
infringement trial before the district court, and would resolve in an efficient
manner the patentability questions so that the district court need not take
them up. I fail to see how this outcome would be inconsistent with the
“efficiency and integrity of the system.”
For these reasons, I respectfully dissent.
IPR2020-00123
Patent 10,270,535 B1
14
FOR PETITIONER:
Theodore M. Foster
David L. McCombs
Calmann Clements
HAYNES AND BOONE, LLP
ipr.theo.foster@haynesboone.com
david.mccombs.ipr@haynesboone.com
calmann.clements.ipr@haynesboone.com

FOR PATENT OWNER:
Lauren N. Robinson
Corey Johanningmeier
Bunsow De Mory LLP
lrobinson@bdiplaw.com
cjohanningmeier@bdiplaw.com