AGIS Software Development LLC

Patent Trials and Appeals Board

Nov 25, 2020

IPR2020-00870 (P.T.A.B. Nov. 25, 2020)

Trials@uspto.gov Paper 16
571-272-7822 Date: November 25, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

GOOGLE LLC, SAMSUNG ELECTRONICS CO., LTD., and SAMSUNG
ELECTRONICS AMERICA, INC.,
Petitioner,
v.
AGIS SOFTWARE DEVELOPMENT, LLC,
Patent Owner.

IPR2020-00870
Patent 9,749,829 B2

Before TREVOR M. JEFFERSON, CHARLES J. BOUDREAU, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314
IPR2020-00870
Patent 9,749,829 B2
2
I. INTRODUCTION
Google LLC, Samsung Electronics Co., Ltd., and Samsung
Electronics America, Inc. (collectively, “Petitioner”) filed a Petition for inter
partes review of claims 1–68 (the “challenged claims”) of U.S. Patent
No. 9,749,829 B2 (Ex. 1001, “the ’829 patent”). Paper 5 (“Pet.”). Patent
Owner, AGIS Software Development LLC, filed a Preliminary Response.
Paper 12 (“Prelim. Resp.”). Pursuant to our authorization for supplemental
briefing, Petitioner filed a Reply to Patent Owner’s Preliminary Response,
and Patent Owner filed a Sur-reply. Paper 13 (“Pet. Reply”); Paper 14 (“PO
Sur-reply”); see Ex. 1037 (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) (“NHK”).
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.
IPR2020-00870
Patent 9,749,829 B2
3
II. BACKGROUND
A. Related Matters
As required by 37 C.F.R. § 42.8(b)(2), each party identifies various
judicial or administrative matters that would affect or be affected by a
decision in this proceeding. Pet. 73–74; Paper 7, 1–5 (“AGIS’s Mandatory
Notices”). Of particular relevance for our Decision, the parties identify that
the ’829 patent is the subject of the following pending civil actions: AGIS
Software Dev., LLC v. Waze Mobile Ltd., No. 2:19-cv-00369 (E.D. Tex.);
AGIS Software Dev., LLC v. Google LLC, No. 2:19-cv-00361 (E.D. Tex.);
and AGIS Software Dev., LLC v. Samsung Elecs. Co., Ltd., No. 2:19-cv-
00362 (E.D. Tex.). Pet. 73; Paper 7, 4. The parties inform us that these
three civil actions were consolidated on February 20, 2020, with the case
involving Google as the lead case (referred to below as “the parallel District
Court proceeding”). Pet. 73; Prelim. Resp. 3.
B. Overview of the ’829 Patent
The ’829 patent generally discloses a method and communication
system to quickly set up and provide ad hoc, password-protected, digital and
voice networks among users of integrated handheld cellular/PDA/GPS
phones (“integrated devices” or “devices”). Ex. 1001 1:33–51. The
specification of the ’829 patent (“Specification”) discloses that there is a
need to be able to set up ad hoc digital and voice networks easily and rapidly
across different groups of users, such as military, first responder, and other
public and private emergency groups. Id. at 2:8–19. According to the
Specification, users’ integrated devices need to be able to rapidly coordinate
activities across groups, for example, to be able to communicate with each
IPR2020-00870
Patent 9,749,829 B2
4
other without having to identify each other by name, e-mail address, or
phone number. Id. at 3:48–51.
The disclosed system includes a plurality of Internet Protocol (“IP”)
capable integrated devices, each having an Advanced Communication
Software (“ACS”) application program. Id. at 2:52–60. The plurality of
integrated devices, in conjunction with a remote Server, provides the ability
to establish an ad hoc network of devices so that the devices can either
broadcast to a group or selectively transmit to each other. Id. at 2:60–63. A
user of an integrated device establishes the ad hoc network or joins an
existing ad hoc network by entering the remote Server’s IP address, an ad
hoc event name such as “Katrina,” and a password in an appropriate prompt
on the user’s device. Id. at 3:52–55, 10:46–60. The user also enters the
user’s name and phone number. Id.
Upon establishing or joining the network, the user’s device
commences reporting information to the remote server, including the user’s
IP address and GPS-derived location. Id. at 10:53–11:2. Initially, when
only one device has joined the network, the remote server retains the
information reported by the device. Id. at 10:63–11:4. When additional
devices join the network by using the same ad hoc event name and password
and report their information to the remote server, the remote server can use
the network participant devices’ IP addresses to pass location information
automatically between the devices. Id. at 11:4–10.
According to the Specification, the ACS application program also
provides for a geographical map that displays georeferenced entities on a
user’s device display. Id. at 6:18–23. The map is displayed on a touch
screen that the device user may interact with using his/her finger or a stylus.
Id. at 5:39–52, 6:61. The map may display symbols depicting permanent
IPR2020-00870
Patent 9,749,829 B2
5
geographical locations and buildings. Id. at 6:41–45. The map may also
display symbols, such as a triangle or square, that represent participants of
the communication network. Id. at 6:59–66. The latitude and longitude of
the device corresponding to a particular symbol displayed on the map are
related by software to x and y coordinates on the map. Id. at 6:66–7:8.
Accordingly, the location of the symbol on the map corresponds to the
device’s physical location provided by the device’s GPS location data. Id. at
5:48–52, 6:66–7:8. In addition, a database may associate the latitude and
longitude of a particular symbol displayed on the map with a specific cell
phone number, IP address, and e-mail address. Id. at 6:66–7:2.
One feature of the disclosed system is that a user may initiate contact
with another user by selecting with a stylus the symbol on the user’s map
corresponding to the user to be contacted. Id. at 8:64–9:13. The device of
the initiator detects the x and y coordinates of where the stylus touched the
display screen, and software translates the x and y coordinates to latitude and
longitude. Id. The software then searches the device database of the
initiator device for information corresponding to the latitude and longitude,
such as an associated phone number or IP address. Id. The software then
initiates appropriate contact, for example, by initiating a phone or Voice
over IP (“VoIP”) call to the device of the user to be contacted. Id.
Another feature of the disclosed system allows coordination of voice
communications over a particular Radio Channel. Id. at 12:4–11. To
accomplish this coordination, a “Group leader” may issue a command,
which is sent to the server to cause the PDAs/PCs that are in the network
group to automatically shift their radio or cellular device to the desired
channel or frequency. Id. at 12:15–41. A user of the network group, thus, is
able to control remotely another participant’s device by sending a command
IPR2020-00870
Patent 9,749,829 B2
6
via the server that will cause the participant’s device to shift to the identified
channel or frequency.
C. Illustrative Claim
Petitioner challenges all claims, claims 1–68, of the ’829 patent.
Claims 1, 34, 35, and 68 are independent, and are substantially similar.
Claim 1 is illustrative.
1. A computer-implemented method comprising:
performing, by one or more server devices:
[a] forwarding, to a first device, a request to join a group,
wherein the request is received from a second device and the
group includes the second device;
[b] based on acceptance of the request by the first device,
joining the first device to the group, wherein joining the first
device to the group comprises authorizing the first device to
repeatedly share device location information and repeatedly
engage in remote control operations with each device included
in the group;
[c] receiving a first message comprising a request for a first
updated location of the first device, wherein the first message is
sent by the second device and includes data identifying the first
device;
[d] in response to receiving the first message, sending, to the
first device, a second message comprising a request for the first
updated location of the first device;
[e] after sending the second message, receiving a response to
the second message, the response including first location
information comprising the first updated location of the first
device;
[f] sending, to the second device, the first location information
and georeferenced map data, wherein the second device is
configured to present, via a display of the second device, a
georeferenced map based on the georeferenced map data and a
symbol corresponding to the first device, wherein the symbol is
positioned on the georeferenced map at a first position
IPR2020-00870
Patent 9,749,829 B2
7
corresponding to the first updated location of the first device,
and wherein the georeferenced map data relate positions on the
georeferenced map to spatial coordinates;
[g] after sending the first location information and the
georeferenced map data to the second device, receiving second
location information comprising a second updated location of
the first device and sending the second location information to
the second device, wherein the second device is configured to
use the server-provided georeferenced map data and the second
location information to reposition the symbol on the
georeferenced map at a second position corresponding to the
second updated location of the first device;
[h] receiving a third message related to remotely controlling the
first device to perform an action, wherein the third message is
sent by the second device; and
[i] after receiving the third message, sending, to the first device,
a fourth message related to remotely controlling the first device
to perform the action, wherein the first device is configured to
perform the action based on receiving the fourth message.
Ex. 1001, 14:59–15:41 (brackets added).
D. Asserted Ground of Unpatentability
Petitioner contends that claims 1–68 of the ’829 patent are
unpatentable under 35 U.S.C. § 103 over U.S. Patent No. 7,353,034 B2,
issued Apr. 1, 2008 (Ex. 1014, “Haney”), and U.S. Patent No. 6,366,782 B1,
issued Apr. 2, 2002 (Ex. 1015, “Fumarolo”). Pet. 9. In addition, Petitioner
relies on the Declaration of David Hilliard Williams to support this
contention (Ex. 1003, “Williams Dec.”).
III. ANALYSIS
Patent Owner contends we should exercise our discretion under
35 U.S.C. § 314(a) to deny institution of inter partes review. Prelim.
Resp. 5–17; PO Sur-reply 1–5. Patent Owner contends that “[t]he
circumstances of the parallel District Court proceeding necessitate denial of
IPR2020-00870
Patent 9,749,829 B2
8
the Petition under the Board’s precedent, as every factor considered in
relation to efficiency, fairness, and the merits supports denial.” Prelim.
Resp. 6 (citing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB
Mar. 20, 2020) (precedential) (“Fintiv”)). According to Patent Owner,
“institution of this proceeding would not be consistent with the objective of
the AIA to ‘provide an effective and efficient alternative to District Court
litigation.’” Id. at 8 (quoting NHK, Paper 8, at 20).
After Patent Owner filed its Preliminary Response, we authorized the
parties to submit supplemental briefing on the issue of discretionary denial
under 35 U.S.C. § 314(a). Ex. 1037. The parties addressed further the
factors set forth in Fintiv, which 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
IPR2020-00870
Patent 9,749,829 B2
9
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 Factor 1: Stay in the Underlying Litigation
Petitioner contends the first Fintiv factor “favors institution because
Judge Gilstrap commonly grants stays after institution of an IPR” and that it
intends to seek a stay now that the Petition has been filed. Pet. 70 (citing
Uniloc USA, Inc. v. Google, Inc., 2:17-cv-00231-JRG, Order (E.D. Tex.
Oct. 3, 2017); Intellectual Ventures II LLC v. BITCO Gen. Ins. Corp., 6:15-
cv-59, Memorandum Opinion and Order (E.D. Tex. May 12, 2016);
Memsmart Semiconductor Corp. v. AAC Techs., 2:14-CV-1107-JRG, Order
(E.D. Tex. July 10, 2015); Image Processing Techs. LLC v. Samsung Elecs.
Co., No. 2:16-cv-505-JRG, Order (E.D. Tex. Oct. 25, 2017)). Petitioner
notably, however, fails to provide any analysis of these cited cases to
demonstrate that the facts presented here are analogous to those leading
Judge Gilstrap to determine a stay was appropriate.
Patent Owner counters that Petitioner’s “motion for a stay has been
denied,” although a renewed motion will be permitted if we grant institution
of inter partes review. Prelim. Resp. 15. Patent Owner contends, however,
that any renewed motion by Petitioner for a stay of the parallel district court
proceedings will likely be denied. Id. This is so, Patent Owner argues,
because, by the time the District Court is able to hear such a motion, the case
will have developed to the later stages of the proceedings. See id.
Furthermore, Patent Owner argues that because the Petitioner “copied this
Petition from previous filings, [its] delay is likely to weigh heavily against
IPR2020-00870
Patent 9,749,829 B2
10
[it].” Id. (citing Intellectual Ventures v. FedEx et al., No. 2:16-cv-00980-
JRG, Dkt. 141 at 4–5 (E.D. Tex. Oct. 24, 2017)).1
Given the District Court’s apparent willingness to reconsider a motion
to stay if we grant institution of inter partes review, but also considering the
later stage of the district court proceeding, with trial scheduled to begin in a
little over four months, we view the first Fintiv factor, on balance, as neutral
in determining whether to exercise discretion to deny institution.
B. Fintiv Factor 2: Trial Date in the Underlying Litigation
The district court trial date in the parallel litigation is set for April 5,
2021. Ex. 2003. In the Order setting this date, it further states that the date
“cannot be changed without showing good cause,” which “is not shown
merely by indicating that the parties agree that the deadline should be
changed.” Id. at 5. A trial beginning on that date would be completed about
seven months before a final written decision would be due in this
proceeding.
Although the trial date is set by an Order of the District Court that
requires “good cause” to be changed, Petitioner contends that we should
consider that date to be “highly uncertain.” Pet. 70. This is so, according to
Petitioner, because it has filed motions to dismiss the case for improper
venue. See id. at 70–71. Patent Owner counters by noting that Petitioner
does not “contest that the proximity of the trial favors denial of institution”

1 Patent Owner also argues that “Petitioners will already have filed their
‘expedited summary judgment’ motion on the sufficiency of the
incorporation by reference statement in the ‘829 Patent and its ancestors,”
but there is no evidence that this has occurred. Prelim. Resp. 16. Petitioner
represents to the contrary that “no such motion is ‘imminent’ as [Patent
Owner] suggests.” Pet. Reply 2. We find this argument by Patent Owner to
be speculative and thus give it no weight.
IPR2020-00870
Patent 9,749,829 B2
11
and asserts that Petitioner’s contention regarding the “uncertainty” of the
trial date is “based on conclusory assumptions.” Prelim. Resp. 11. Patent
Owner argues that Petitioner’s reliance on its motion to dismiss to establish
uncertainty is nevertheless undermined by the fact that “Judge Gilstrap has
since denied [Petitioner’s] motion to transfer at least one [other] case
concerning the same accused products” at issue in the parallel litigation
between the parties in this proceeding. Id. at 11–12 (citing Personalized
Media Commc’ns, LLC v. Google LLC, 2:19-cv-00090-JRG, Dkt. No. 291
(E.D. Tex. Jul. 30, 2020)).
On the record before us at this time, the only persuasive facts that we
have regarding the proximity of the court’s trial date to the Board’s
projected statutory deadline for a final written decision is an Order by the
District Court that sets trial for April 5, 2021, which will require “good
cause” to be changed, and our projected statutory deadline, which would be
toward the end of November 2021. While we appreciate that the trial date is
susceptible to change if and when the District Court determines good cause
exists to do so, we decline to speculate whether such a contingency will
occur. Instead, we must base our evaluation on the existing facts supported
by the evidence of record. This factor, therefore, significantly favors the
exercise of discretionary denial.
C. Fintiv Factor 3: Investment by the Court and the Parties in
the Underlying Litigation
In the Petition, Petitioner contends that the parallel litigation “is still at
its early stages” and that neither the District Court nor the parties have
invested significant resources. Pet. 71. Patent Owner counters by arguing
that, by the time this Institution Decision is due, the parties will have
completed claim construction proceedings, exchanged infringement and
IPR2020-00870
Patent 9,749,829 B2
12
invalidity contentions, and conducted substantial discovery. Prelim. Resp.
13; see also Ex. 2003; Ex. 2002. In addition, Patent Owner contends,
“Petitioner[] also fail[s] to justify [its] delay in bringing this proceeding,
which is largely copied from other Petitions filed in 2018.” Id. at 14 (citing
Apple Inc. v. AGIS Software Dev. LLC, IPR2018-00819, Paper 1 (PTAB
March 22, 2018); Google LLC v. AGIS Software Dev. LLC, IPR2018-01086,
Paper 2 (PTAB May 15, 2018)). Patent Owner argues that, despite
Petitioner “undisputedly know[ing] of the[] grounds [asserted in the Petition]
since the outset of the [parallel] litigation,” [it] fail[s] to articulate any
justification for [its] delay,” which has “further ensured that the parties
would continue to invest in the District Court Litigation through trial.” Id.
In its Reply, Petitioner notably does not dispute Patent Owner’s contentions
regarding the time and resources that will have been invested in the parallel
litigation by the time of this Decision, nor does it provide any explanation
why it took over seven months to file a petition alleging grounds of
unpatentability that are significantly similar to earlier petitions filed.
It appears undisputed on the record before us that the parties have
invested a significant amount of work related to the ’829 patent in
preparation for trial, including claim construction, fact discovery, and expert
discovery. See Ex. 2003; Ex. 2002. Some of this invested effort has
relevance to issues that would arise in this proceeding and thus weighs
toward exercising discretion to deny institution, but its weight is lessened
without any evidence that the district court has issued any orders related
specifically to the patent at issue in the Petition. See Fintiv, Paper 11 at 10
(“If, at the time of the institution decision, the district court has not issued
orders related to the patent at issue in the petition, this fact weighs against
exercising discretion to deny institution under NHK.”).
IPR2020-00870
Patent 9,749,829 B2
13
For this factor, however, we also consider the timing of the Petition
and, “notwithstanding that a defendant has one year to file a petition, it may
impose unfair costs to a patent owner if the petitioner, faced with the
prospect of a looming trial date, waits until the district court trial has
progressed significantly before filing a petition at the Office.” Fintiv,
Paper 11 at 11. To assist with this evaluation, the Board has asked clearly
for Petitioner to “explain [the] facts relevant to timing” to show the
reasonableness of a delayed filing of the Petition. Id. Petitioner provides no
explanation here.
The absence of any reasonable explanation for the delay in filing the
Petition is particularly problematic in this case because there is significant
overlap between the subject matter and alleged grounds of unpatentability
found in the Petition and those petitions previously filed. See Apple Inc. v.
AGIS Software Dev. LLC, IPR2018-00819, Paper 1 (PTAB March 2, 2018);
Google LLC v. AGIS Software Dev. LLC, IPR2018-01086, Paper 2 (PTAB
May 15, 2018). In fact, the Petition includes portions that are substantially
identical to the petitions previously filed. Compare, e.g., Pet. 11–13, with
IPR2018-01086, Paper 2 at 20–22. This similarity shows that Petitioner was
fully capable of filing the Petition at or around the time Petitioner was
served with a complaint giving them notice that the ’829 patent was being
asserted by Patent Owner. Moreover, Petitioner is challenging the
patentability of every claim in the ’829 patent, which suggests that there was
no need for Petitioner to delay filing until Patent Owner identified which
specific claims of the ’829 patent were being asserted. When “the evidence
shows that the petitioner[s] did not file the petition expeditiously . . . or even
if the petitioner[s] cannot explain the delay in filing its petition,” we weigh
this factor toward exercising discretion to deny institution. Fintiv, Paper 11
IPR2020-00870
Patent 9,749,829 B2
14
at 11–12. Because there is strong evidence that Petitioner had everything it
needed to file the Petition much earlier in the parallel District Court
proceeding and because Petitioner offers no explanation for why the filing
was delayed, we find the timing of the Petition weighs heavily toward
exercising discretion to deny institution.
Therefore, weighing all of the above considerations, this factor
significantly favors the exercise of discretionary denial.
D. Fintiv Factor 4: Overlap Between Issues Raised in the
Petition and Underlying Litigation
Petitioner contends “[f]actor 4 favors institution because this petition
challenges all claims in the ’829 patent whereas the district court will (at
most) decide the patentability of only a subset of the challenged claims.”
Pet. 71. However, for the claims in common, Patent Owner correctly notes
that “Petitioner[] [does] not contest that [it] argue[s] the exact same grounds
for invalidity in the District Court Litigation.” Prelim. Resp. 9. In its Reply,
Petitioner argues that any weight given to the overlapping issues is
eliminated because it “[has] offered a conditional stipulation to not rely on
the Petition’s prior-art grounds in the district-court litigation if the PTAB
grants institution here.” Pet. Reply 2 (citing Ex. 1038). Patent Owner
disagrees that Petitioner’s “conditional stipulation” cures the inefficiency of
the Board considering the arguments in the Petition and identifies as support
the Petitioner’s express reservation of the right “to argue the central issue of
this petition––the priority date of the ’829 patent––in District Court.” PO
Sur-reply 2.
After considering the parties’ arguments and the record before us, we
determine that substantial overlap exists between the issues raised in the
Petition and the underlying litigation. Regarding the differences in the
IPR2020-00870
Patent 9,749,829 B2
15
claims challenged here and in the district court, “if a petition involves the
same prior art challenges but challenges claims in addition to those that are
challenged in the district court, it may still be inefficient to proceed because
the district court may resolve validity of enough overlapping claims to
resolve key issues in the petition.” Fintiv, Paper 11 at 13. The Petition
shows that substantial overlap exists between Petitioner’s arguments and
evidence for the unpatentability of the claims in the ’829 patent; for
example, the Petition groups and addresses all of the independent claims
together, as well as several of the independent claims. See Pet. 14–68. As
such, the resolution of the claims elected in the district court will likely
resolve validity of enough overlapping claims to resolve the key issues
presented by the Petition. Notably, Petitioner does not offer any explanation
for why the Petition includes materially different grounds, arguments, and/or
evidence than those presented in the district court. Thus, although the
challenged claims asserted in this proceeding may not be identical to those
that the parties elect to pursue at trial in the underlying litigation, the
differences do not appear to be meaningful in this case.
Nor are we persuaded that Petitioner’s proposed “conditional
stipulation” alleviates the concerns of potential inefficiencies and the
possibility of conflicting decisions. Petitioner’s proposed stipulation is
ambiguous. See Ex. 1038. It states, “Petitioner[] will not pursue in [its]
current district court proceedings . . . any of the same prior art grounds
presented in an instituted IPR petition(s),” but expressly “preserve[s] the
right to make arguments regarding the priority date of [Patent Owner’s]
asserted patents in the district court proceedings.” Id. We note, initially,
that the stipulation does not appear to limit Petitioner from relying on the
prior art asserted in the Petition, but instead limits the waiver to the specific
IPR2020-00870
Patent 9,749,829 B2
16
grounds asserted in the Petition. It is thus unclear whether the scope of
stipulation would actually limit Petitioner’s ability to rely on the prior art in
the related district court proceedings in a meaningful way to avoid
duplicative efforts and potentially conflicting decisions. For example, it
appears Petitioner could still rely on the same prior art for many of the same
claim elements so long as it also includes another prior art reference in a
manner that would, at least arguably, establish the ground to be a “different”
ground than the ones presented here. In addition, Patent Owner correctly
notes that Petitioner expressly preserves the right to make arguments
regarding the priority date of Patent Owner’s asserted patents in the parallel
District Court proceeding, which is indisputably a potential issue for the
’829 patent in both proceedings.
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. As discussed, there is
substantial overlap between the grounds asserted in the underlying litigation
and those asserted in the Petition, so that institution of an inter partes review
likely will result in duplicative efforts by the Board and the trial court as to
how the references teach limitations of the challenged claims. For these
reasons, we determine that this factor on balance favors the exercise of
discretionary denial.
E. Fintiv Factor 5: Whether Petitioner is the Defendant in the
Underlying Litigation
It is undisputable that Petitioner here is the defendant in the
underlying litigation. See Pet. 73; Prelim. Resp. 3. Because there appears to
IPR2020-00870
Patent 9,749,829 B2
17
be overlapping issues that the trial court will likely analyze and resolve for
the same parties more than seven months before we would issue a final
written decision, this factor favors the exercise of discretionary denial in this
case.
F. Fintiv Factor 6: Other Considerations
Under the sixth Fintiv factor, which takes into account any other
relevant circumstances, Petitioner contends that this factor “favors institution
because the grounds in the petition provide a strong showing of
obviousness.” Pet. 72. Although we do not undertake here a full analysis of
the merits, our initial inspection of the record and the parties’ arguments
suggests a potential deficiency in Petitioner’s evidence supporting its
contention that Haney discloses a server performing the recited step of
“based on acceptance of the request by the first device, joining the first
device to the group, wherein joining the first device to the group comprises
authorizing the first device to repeatedly share device location information
and repeatedly engage in remote control operations with each device
included in the group.” Ex. 1001, 14:64–15:2. The evidence and argument
provided by Petitioner for this element appears to lack support for the
contention that Haney discloses a server authorizing a first device to
repeatedly share device location information based on acceptance of a
request by the first device. Rather, Haney discloses a server that shares
location information between a first recipient device and a second initiator
device based on the second initiator device’s acceptance of the Instant
Buddy relationship. See id. at 13:20–14:36. In a balanced assessment of the
relevant evidence of record, and in view of the possible weakness in
IPR2020-00870
Patent 9,749,829 B2
18
Petitioner’s showing on the present record, this factor weighs slightly in
favor of discretionary denial.
G. 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 about 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. On 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.

IPR2020-00870
Patent 9,749,829 B2
19
PETITIONER:

Jonathan Tuminaro
Robert E. Sokohl
Dohm Chankong
Steven M. Pappas
Tyler J. Dutton
Sterne, Kessler, Goldstein & Fox P.L.L.C.
jtuminar-PTAB@sternekessler.com
rsokohl-PTAB@sternekessler.com
dchankong-PTAB@sternekessler.com
spappas-PTAB@sternekessler.com
tdutton-PTAB@sternekessler.com

Neil P. Sirota
Margaret M. Welsh
Baker Botts L.L.P.
neil.sirota@bakerbotts.com
margaret.welsh@bakerbotts.com

PATENT OWNER:

Vincent J. Rubino, III
Peter Lambrianakos
Enrique W. Iturralde
Brown Rudnick LLP
vrubino@brownrudnick.com
plambrianakos@brownrudnick.com
eiturralde@brownrudnick.com