IPR2020-01022 (P.T.A.B. Jan. 21, 2021)

Arbor Global Strategies LLC

Patent Trials and Appeals BoardJan 21, 2021

IPR2020-01022 (P.T.A.B. Jan. 21, 2021)

Trials@uspto.gov Paper 16 Tel: 571-272-7822 Entered: January 21, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ SAMSUNG ELECTRONICS, CO., LTD., Petitioner, v. ARBOR GLOBAL STRATEGIES, LLC, Patent Owner. _______________ IPR2020-01022 Patent 6,781,226 B2 _______________ Before KARL D. EASTHOM, BARBARA A. BENOIT, and SHARON FENICK, Administrative Patent Judges. FENICK, Administrative Patent Judge. DECISION Denying Petitioner’s Request on Rehearing of the Decision Denying Institution of Inter Partes Review 37 C.F.R. § 42.71(d) IPR2020-01022 Patent 6,781,226 B2 2 I. BACKGROUND In an Institution Decision (Paper 12, “Inst. Dec.”), we instituted trial on all challenged claims, claims 13, 14, 16–23, and 25–30 of U.S. Patent No. 6,781,226 B2 (Ex. 1001, the “’226 patent”) See Inst. Dec. 2, 36–37. In deciding to institute, we denied Patent Owner’s request that we exercise our discretion under 35 U.S.C. § 314(a) to deny institution in light of a parallel District Court infringement trial based on the ’226 patent (and two related patents for which we also instituted inter partes review). See Inst. Dec. § II (citing and analyzing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (order listing factors for analyzing discretionary denial issues under Section 314(a) (precedential) (“Fintiv”)), § I.B. (citing Arbor Global Strategies LLC v. Samsung Electronics Co., Ltd., 2:19-cv-00333-JRG-RSP (E.D. Tex.) (filed October 11, 2019) (“District Court” or “District Court Action”) as a related infringement action involving the ’226 patent and two related patents, U.S. Patent No. 7,282,951 B1 and U.S. Patent No. RE42,035 E). In its Rehearing Request (Paper 14, “Reh’g Req.”), Patent Owner urges the panel to reconsider and deny institution, contending that we overlooked or misapprehended evidence in finding that “Fintiv Factors 1 and 4 weigh against denying the [P]etition under 35 U.S.C. [§] 314(a).” Reh’g Req. 9. For the reasons that follow, we deny the requested relief. The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(c) and (d), which provides, in relevant part, the following: (c) Petition decisions. . . . When rehearing a decision on petition, the panel will review the decision for an abuse of discretion. (d) Rehearing. A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, IPR2020-01022 Patent 6,781,226 B2 3 and the place where each matter was previously addressed in a motion, opposition, or a reply. II. DISCUSSION The Rehearing Request does not show that the panel abused its discretion and overlooked or misapprehended a previously addressed matter that warrants the requested relief. Patent Owner contends that the “Board overlooked evidence demonstrating that (1) the parallel district court proceeding is highly unlikely to be stayed under [Fintiv] Factor 1, and (2) [Petitioner’s] recently-filed expert report proves that its representations to the Board regarding efficiencies under [Fintiv] Factor 4 were misleading at best.” Reh’g Req. 1. Primarily, Patent Owner’s arguments rest on the premise that the parallel District Court trial was and is an imminent alternative to the instant inter partes proceeding. See Reh’g Req. 1–9. To the contrary, subsequent to the Rehearing Request, the District Court stayed the trial largely based on the Institution Decision (and the other two related institution decisions discussed above). See Ex. 3003, 3– 6 (District Court stay order determining that of the three stay factors previously considered, two factors “remain neutral[],” but the “third factor weighs in favor of granting the Motion [to stay]” where “the Board granted institution on more than one asserted ground,” “the Board expressly noted that [Petitioner] ‘sets forth a strong showing of unpatentability on the challenged claims,’” and “the resulting estoppel from an IPR is broader than [Petitioner’s] stipulation” with respect to the “instituted IPRs”). Accordingly, the stay renders Patent Owner’s arguments moot. Secondarily, to the extent that Patent Owner’s argument is based on an expert report (Ex. 2010) which was not in evidence at the time of the Institution Decision, Patent Owner does not present a showing of good cause to consider this new evidence in a rehearing request. See Huawei Device Co., Ltd. v. Optis IPR2020-01022 Patent 6,781,226 B2 4 Cellular Tech., LLC, IPR2018-00816, Paper 19 at 3–4 (Jan. 8, 2019) (precedential)). III. CONCLUSION We deny Patent Owner’s request to upset our initial determination not to exercise discretion to deny institution based on the parallel District Court proceeding. IV. ORDER For the reasons given, it is ORDERED that the Rehearing Request is denied. IPR2020-01022 Patent 6,781,226 B2 5 For PETITIONER: F. Christopher Mizzo Chris.mizzo@kirkland.com Gregory Arovas Greg.arovas@kirkland.com Bao Nguyen bnguyen@kirkland.com For PATENT OWNER: Jonathan Caplan jcaplan@kramerlevin.com James Hannah jhannah@kramerlevin.com Jeffrey Price jprice@kramerlevin.com