Midas Green Technologies, LLC

Patent Trials and Appeals Board

Jan 31, 2022

PGR2021-00104 (P.T.A.B. Jan. 31, 2022)

Trials@uspto.gov Paper 15 571.272.7822 Date: January 31, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ IMMERSION SYSTEMS LLC, Petitioner, v. MIDAS GREEN TECHNOLOGIES, LLC, Patent Owner. ____________ PGR2021-00104 Patent 10,820,446 B2 ____________ Before FREDERICK C. LANEY, RYAN H. FLAX, and ALYSSA A. FINAMORE, Administrative Patent Judges. LANEY, Administrative Patent Judge. DECISION Denying Institution of Post-Grant Review 35 U.S.C. § 324 PGR2021-00104 Patent 10,820,446 B2 2 Immersion Systems LLC (“Petitioner”) filed a Petition for post-grant review challenging claims 1, 5, 6, and 10 of U.S. Patent No. 10,820,446 B2 (Ex. 1001, “the ’446 patent”). Paper 1 (“Pet.”). Midas Green Technologies, LLC (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).1 Petitioner filed authorized First and Second Preliminary Replies, and Patent Owner filed authorized First and Second Preliminary Sur- Replies. Paper 8 (“First Prelim. Reply”); Paper 10 (“Second Prelim. Reply”); Paper 9 (“First Prelim. Sur-Reply”); Paper 12 (“Second Prelim. Sur-Reply”). We have authority to determine whether to institute a post-grant review. 35 U.S.C. § 324(a) (2018); 37 C.F.R. § 42.4(a) (2019). Having considered the parties’ submissions, and for the reasons explained below, we exercise discretion under 35 U.S.C. § 324(a) to deny institution of post-grant review. I. INTRODUCTION A. REAL PARTIES-IN-INTEREST Petitioner and Patent Owner each, respectively, identifies itself as a real party-in-interest. Pet. 71; Paper 4, 1. B. RELATED MATTERS Petitioner and Patent Owner each identifies “U.S. District Court for the Northern District of Texas, Case 20-cv-00555” (the “related district court 1 Patent Owner also filed a second Patent Owner Preliminary Response, Paper 7, without first seeking authorization for this filing. Because we exercise discretion under 35 U.S.C. § 324(a) to deny institution of post-grant review based on the first Preliminary Response, we do not need to decide whether this second Patent Owner Preliminary Response should be considered. Therefore, our references to the Preliminary Response in this Decision are limited to Paper 6. PGR2021-00104 Patent 10,820,446 B2 3 litigation”) as a related matter. Pet. 71; Prelim. Resp. 16; Paper 4, 2. In addition, Patent Owner notes that the ’446 patent is a continuation of a patent application that issued as U.S. Patent No. 10,405,457 B2, which was the subject of the inter partes review petition filed in IPR2021-01176. Prelim. Resp. 16. C. THE ’446 PATENT The ’446 patent issued on October 27, 2020, from U.S. Application 16/243,732, which was filed on January 9, 2019. Ex. 1001, codes (45), (21), (22). On its face, the ’446 patent claims priority to U.S. Application 14/355,533, filed as application No. PCT/US2013/075126 on December 13, 2013, U.S. Provisional 61/832,211, filed on June 7, 2013, and U.S. Provisional 61/737,200, filed on December 14, 2012. Id. at codes (63), (60), 1:7-16.2 The ’446 patent concludes with 10 claims, of which claims 1 and 6 stand independently. Ex. 1001, 9:35-10:58. Claim 1 is illustrative and reproduced below: 1. An appliance immersion cooling system comprising: a tank adapted to immerse in a dielectric fluid a plurality of electrical appliances, each in a respective appliance slot distributed vertically along, and extending transverse to, a long wall of the tank, the tank comprising: a weir, integrated horizontally into the long wall of the tank adjacent all appliance slots, adapted to facilitate substantially uniform recovery of the dielectric fluid flowing through each appliance slot; 2 There is a dispute as to whether the ’446 patent is entitled to priority to these provisional applications. See Pet. 4-6; Prelim. Resp. 3-7. We, however, need not resolve this dispute, in part, because we exercise our discretion under 35 U.S.C. § 324(a) to deny institution here. PGR2021-00104 Patent 10,820,446 B2 4 a primary circulation facility adapted to circulate the dielectric fluid through the tank, comprising: a plenum, positioned adjacent the bottom of the tank, adapted to dispense the dielectric fluid substantially uniformly upwardly through each appliance slot; a secondary fluid circulation facility adapted to extract heat from the dielectric fluid circulating in the primary circulation facility, and to dissipate to the environment the heat so extracted; and a control facility adapted to coordinate the operation of the primary and secondary fluid circulation facilities as a function of the temperature of the dielectric fluid in the tank. Ex. 1001, 9:37-58. Independent claim 6 is similar to claim 1, but does not recite the “secondary fluid circulation facility,” as in claim 1. The ’446 patent’s Abstract indicates its invention is directed to: A[n] appliance immersion tank system comprising: a generally rectangular tank adapted to immerse in a dielectric fluid a plurality of appliances, each in a respective appliance slot distributed vertically along, and extending transverse to, the long axis of the tank; a primary circulation facility adapted to circulate the dielectric fluid through the tank; a secondary fluid circulation facility adapted to extract heat from the dielectric fluid circulating in the primary circulation facility, and to dissipate to the environment the heat so extracted; and a control facility adapted to coordinate the operation of the primary and secondary fluid circulation facilities as a function of the temperature of the dielectric fluid in the tank. A plenum, positioned adjacent the bottom of the tank, is adapted to dispense the dielectric fluid substantially uniformly upwardly through each appliance slot. A weir, integrated horizontally into a long wall of the tank, is adapted to facilitate substantially uniform recovery of the dielectric fluid flowing through each appliance slot. All active and most passive components of both the primary and secondary fluid circulation facilities, and the control facility are fully redundant, and are adapted automatically to operate in a fail-soft mode. PGR2021-00104 Patent 10,820,446 B2 5 Id. at Abstract. The ’446 patent illustrates an apparatus or system as claimed and as described in its Abstract at its Figures 1 and 2, which we reproduced side- by-side below, annotated to highlight claimed features: Figure 1, above-left, “illustrates, in partial cut-away form, a front perspective of a tank module of an appliance immersion cooling system constructed in accordance with [the] invention,” and Figure 2, above-right, “illustrates a rear perspective of the tank module shown in FIG. 1.” Id. at 2:61-65. The figures show tank module 10 having tank 12 with long axis 14, appliance rack facility 20, weir 22 (not labeled, but highlighted in yellow in Figure 1), cover 26, primary circulation facility 28, secondary fluid circulation facility 30 (not labeled), heat exchangers 32a, 32b, plenum facility 36, fluid recovery facility 40, and reservoir 42 (not labeled, but highlighted in yellow in Figure 2). Id. at 3:38-4:51; see also id. at Figs. 3-6. PGR2021-00104 Patent 10,820,446 B2 6 D. SUMMARY OF ASSERTED GROUNDS FOR UNPATENTABILITY Petitioner asserts the following grounds for the unpatentability of claims 1, 5, 6, and 10 of the ’446 patent: Ground Claims Challenged 35 U.S.C. § 3 Reference(s)/Basis 1 1, 5, 6, 10 103 Best,4 Krajewski,5 Cray6 2 1, 5, 6, 10 103 Best, Oktay7 3 1, 5, 6, 10 103 Best, Gryzhin8 4 1, 5, 6, 10 103 Best 5 1, 5, 6, 10 112(b) Indefinite 6 1, 5, 6, 10 112(a) Written Description See Pet. 2. In support of the grounds for unpatentability, Petitioner submits, inter alia, the Declaration of Issam Mudawar, Ph.D. (Ex. 1020). 3 The ’446 patent has an actual filing date of January 9, 2019, which is after the AIA revisions to 35 U.S.C. § 103 took effect on March 16, 2013, but, on its face, the ’446 patent asserts priority to a provisional application filed on December 14, 2012, which is before the AIA revisions took effect. 35 U.S.C. § 100 (note). Therefore, whether pre-AIA or AIA § 103 applies is in dispute. Our decision, however, is not impacted by which version of the statute applies. 4 US 10,123,463 B2, issued Nov. 6, 2018 (filed Aug. 10, 2009) (Ex. 1006, “Best”). 5 US 5,167,511, issued Dec. 1, 1992 (Ex. 1007, “Krajewski”). 6 US 4,590,538, issued May 20, 1986 (Ex. 1008, “Cray”). 7 US 3,406,244, issued Oct. 15, 1968 (Ex. 1009, “Oktay”). 8 RU 2 500 013 C1, published Nov. 27, 2013 (filed Mar. 19, 2012) (Ex. 1011, Ex. 1012 (English translation), “Gryzhin”). PGR2021-00104 Patent 10,820,446 B2 7 II. DISCUSSION A. LEVEL OF ORDINARY SKILL IN THE ART In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). Petitioner states: A POSITA as of December 13, 2013 would have had a [sic] either a (a) Bachelor’s degree in mechanical engineering, or an equivalent degree, with five years of liquid cooling systems experience including responsibility for designing such systems, or (b) Master’s Degree in mechanical engineering, or an equivalent degree, including liquid cooling systems research and system design. Ex-1020, ¶68. A POSITA would also have had, through education or experience, familiarity and experience in particular with immersion cooling systems. Id. Additional education could compensate for less practical experience and vice versa. Id. Pet. 10. Other than arguing that the date for defining the ordinarily skilled artisan should be earlier than that used by Petitioner because the ’446 patent is entitled to priority to provisional applications, Patent Owner “does not offer a competing definition for POSITA.” Prelim. Resp. 24. For the purposes of this Decision, we accept, as has Patent Owner, Petitioner’s definition of the ordinarily skilled artisan. B. CLAIM CONSTRUCTION “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) PGR2021-00104 Patent 10,820,446 B2 8 (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party asserts that any claim term should be expressly construed, and we do not expressly construe any claim language. Pet. 10-11; Prelim. Resp. 24-25; see also Ex. 2009 (district court claim construction order declining to expressly construe any claim language). C. APPLICABLE LEGAL STANDARDS 35 U.S.C. § 324(a) states: The Director may not authorize a post-grant review to be instituted unless the Director determines that the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable. This language provides the Director with discretion to deny institution of a petition for post-grant review. See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (addressing parallel language in 35 U.S.C. § 314(a) and explaining that “the agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion”); Consolidated Trial Practice Guide November 2019 (“TPG”) at 55.9 In exercising the Director’s discretion under 35 U.S.C. §§ 314(a) and 324(a), the Board may consider “events in other proceedings related to the same patent, either at the Office, in district courts, or the ITC.” TPG at 58 (footnote omitted). The Board’s precedential NHK decision explains that the Board may consider the advanced state of a related district court proceeding, among other considerations, as a “factor that weighs in favor of denying the Petition under § 314(a).” NHK Spring Co. v. Intri-Plex Techs., 9 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. PGR2021-00104 Patent 10,820,446 B2 9 Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential) (“NHK”). In Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), the Board articulated a list of factors that we consider in determining whether to exercise discretion to deny institution based on an advanced stage of a parallel proceeding: 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. Fintiv at 5-6. “[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. As identified above in this Decision at Section I.B, the related, parallel proceeding at issue here is Midas Green Technologies, LLC v. Immersion Systems LLC, No. 4:20-cv-00555-O in the U.S. District Court for the Northern District of Texas. See, e.g., Ex. 1005 (first amended complaint with a certificate of service dated November 19, 2020). PGR2021-00104 Patent 10,820,446 B2 10 D. ANALYSIS UNDER SECTION 324(A) Factor 1: Whether a Stay has Been or is Likely to be Granted The parties do not dispute that there is currently no stay in the related district court litigation, either requested or granted. Pet. 70; Prelim. Resp. 18; Prelim. Reply; Prelim. Sur-Reply. Petitioner indicates that, if trial is instituted here, it will request a stay in the related district court litigation. Prelim. Reply, 1; see also Ex. 1025, 1-2. Petitioner’s assertion aside, we will not speculate as to whether the related district court litigation will be stayed, as the evidence is inconclusive concerning this factor. Accordingly, we weigh this factor as neutral as to whether to exercise our discretion to deny institution. Factor 2: Proximity of the Court’s Trial Date to the Board’s Final Written Decision The statutory deadline for the issuance of a final written decision in this proceeding will be one year from the date of institution, if trial is instituted. 35 U.S.C. § 326(a)(11). Based upon the preliminary filings in this proceeding, the due date for our decision on institution is approximately February 2, 2022, meaning a final written decision would be due in February 2023. 35 U.S.C. § 324(b)(1). The record includes a scheduling order from the related district court litigation, which sets a jury trial date of October 11, 2022. Ex. 2001, 3; see also Prelim. Resp. 18-19. Moreover, this same scheduling order goes on to state that “[t]he parties are advised that future requests to extend deadlines or modify the Scheduling Order will be disfavored and will not be granted by the Court absent good cause.” Ex. 2001, 3; see also Prelim. Resp. 19. Patent Owner also notes that the district court “later referenced this same instruction in denying a subsequent motion to modify the schedule.” Prelim. PGR2021-00104 Patent 10,820,446 B2 11 Resp. 19 (citing Midas Green Techs., LLC v. Immersion Sys. LLC, No. 4-20- cv-00555, Dkt. 73 (N.D. Tex. Aug. 18, 2021)). Thus, a jury trial is scheduled to occur in the related district court litigation approximately four months prior to when a final written decision would be statutorily due in this post-grant review, and the district court has indicated that any changes to the schedule, including the trial date, are disfavored. We find these facts weigh in favor of exercising discretion to deny institution under this factor. Factor 3: Investment in the Parallel Litigation If, at the time of the institution decision, the district court has issued substantive orders related to the challenged patent, such as a claim construction order, this fact weighs in favor of discretionary denial. See Fintiv at 9-10. On the other hand, if the district court has not issued such orders, this fact weighs against discretionary denial. Id. at 10. The evidence of record indicates that the related district court litigation has progressed as far as the entry of a claim construction order. Ex. 2009 (Order dated Nov. 22, 2021). In addition, Patent Owner states that there has also been “significant discovery” by way of written discovery, document production, and a fact-witness deposition (with others scheduled if not having already occurred). Prelim. Resp. 21-22. Petitioner, on the other hand, indicates that, as of the Petition (and Preliminary Reply), “[t]he parties have invested little in the related litigation.” Pet. 71; Prelim. Reply 1 (addressing resources invested on invalidity issues). We find the fact that a claim construction order has been entered, coupled with several other events, such as discovery, in the related district PGR2021-00104 Patent 10,820,446 B2 12 court litigation is not insignificant. Although it appears that much is left to occur in the related district court litigation, the evidenced expended effort is nevertheless not insubstantial. Moreover, it appears that efforts and investment are continuing and ongoing and several of the events listed in the district court’s scheduling order have due dates based on the entry date of the claim construction order, which has been entered. See Ex. 2001 (e.g., final infringement contentions were due 30 days from the court’s claim construction ruling, that is, on December 30, 2021). Further, Fintiv provides guidance on how the timing of various events can impact Factor 3: As a matter of petition timing, 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 at 11 (footnote omitted). However, “it is often reasonable for a petitioner to wait to file its petition until it learns which claims are being asserted against it in the parallel proceeding.” Id. Accordingly, a petitioner should act expeditiously once the patent owner has identified the claims being asserted against it so that the petitioner can file a petition challenging all asserted claims-if it chooses to do so. Here, however, Petitioner does not argue or contend that the Petition for post-grant review was filed in a reasonably diligent manner to avoid unnecessary duplication of efforts in the parallel litigation. We find the facts weigh in favor of exercising discretion to deny institution under this factor. PGR2021-00104 Patent 10,820,446 B2 13 Factor 4: Overlap in Issues Raised by the Petition and in the Parallel Litigation “[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 at 12. “Conversely, if the petition includes materially different grounds, arguments, and/or evidence than those presented in the district court, this fact has tended to weigh against exercising discretion to deny institution under NHK.” Id. at 12-13. As noted above, for example at Section I.D, the Petition asserts that the ’446 patent’s claims 1, 5, 6, and 10 are unpatentable over the prior art combinations of Best-Krajewski/Cray, Best-Oktay, Best-Gryzhin, and Best alone. See Pet. 2. Petitioner’s (there, defendant’s) initial invalidity contentions in the related district court proceeding assert the invalidity of claims 1, 5, 6, and 10 over the Best-Krajewski combination several times, and supplemental preliminary invalidity and unenforceability contentions assert the invalidity of “[a]ll [c]laims-in-[s]uit” over the Best-Oktay and Best-Gryzhin combinations. See, e.g., Ex. 2002, at, inter alia, 2 n.1, 37, 40, 44, 47, 50, 52-54 (alleging failure to meet the requirements of 35 U.S.C. § 112); Ex. 2005, 7 et seq. Patent Owner asserts that this is “complete overlap in the validity issues raised in these parallel proceedings.” Prelim. Resp. 20-22. We agree with Patent Owner that there is overlap here. We also determine that Petitioner’s stipulation does not affect that overlap. Petitioner states that it has “entered a stipulation (Ex. 1025) in the related [district court litigation] which states that, if [this PGR is] instituted, Petitioner intends to request a stay of the [district court litigation] until a final determination on the petition[ ] is issued by the PTAB. The stipulation is modeled on the Sotera decision and extends to grounds ‘raised or that PGR2021-00104 Patent 10,820,446 B2 14 could have been reasonably raised.’” Prelim. Reply 1 (citing Sotera Wireless v. Masimo Corp., IPR2020-01019, Paper 12 at 13 (PTAB Dec. 1, 2020) (precedential as to Section II.A)). Petitioner further argues that its stipulation filed in the related district court litigation means that this post-grant review “will ‘function as a true alternative to litigation’ because the expected stay and stipulation will mitigate any concern of duplicative efforts or conflicting decisions.” Id. The stipulation to which Petitioner refers states: Immersion hereby stipulates that if the PTAB (i) allows Immersion to enter this Stipulation as part of the PGR petition, and (ii) institutes review pursuant to 35 U.S.C. §324 of PGR2021-00104 that results in a final written decision, then Immersion will not pursue in these district court proceedings the specific grounds identified above in connection with the ‘446 Patent and claims as originally issued on the instituted post-grant review petition, or on any other ground for which the PTAB institutes that was raised or could have been reasonably raised in the PGR. Ex. 1025, 3 (emphasis added). We find this stipulation to be very different from others the Board has relied upon to assuage concerns under this factor. See Sotera, IPR2020- 01019, Paper 12 at 18 (concerning a stipulation (Ex. 1038 in that proceeding) that required institution of an IPR, but addressed all challenges brought or that could have been brought in the IPR); Sand Revolution II LLC v. Continental Intermodal Group-Trucking LLC, IPR2019-01393, Paper 24 at 11-12 (PTAB June 16, 2020) (informative) (concerning a stipulation (Ex. 1015 in that proceeding) that required institution of an IPR, but addressed the challenges brought in the IPR). Petitioner’s stipulation is contingent upon two things-our entry of the stipulation as part of the PGR2021-00104 Patent 10,820,446 B2 15 Petition and then completion of this post-grant review proceeding with a final written decision. Ex. 1025. First, if Petitioner suggests that we may consider the stipulation to be integrated into and a part of the Petition, which is somewhat unclear on the record, Petitioner is incorrect and the Petition will not be so-considered supplemented or expanded, even if the record includes the stipulation as evidence. Second, regardless of Petitioner’s intent regarding the first contingent event and even though the stipulation is entered as a part of the record here, Petitioner ties its stipulation to an asserted likelihood of the court granting a stay in the related district court litigation. See Prelim. Reply 1. In other words, absent a stay and given the district court trial date, the stipulation will have no effect because a trial would occur before the deadline for a final written decision here. As discussed above, we will not speculate whether the related district court litigation will be stayed, and thus we assume for purposes of this analysis that the jury trial in the related district court litigation will occur several months before a final written decision will be statutorily due in this proceeding. Thus, Petitioner’s prerequisite that requires a final written decision renders Petitioner’s stipulation meaningless for purposes of our analysis of this factor. We find the unique facts here weigh in favor of exercising discretion to deny institution under this factor. Factor 5: Are Petitioner and the Defendant in the Parallel Litigation the Same Party? It is undisputed that Petitioner is the defendant and Patent Owner the plaintiff in the related district court litigation. See Ex. 1005. We find this fact weighs in favor of exercising discretion to deny institution under this factor. PGR2021-00104 Patent 10,820,446 B2 16 Factor 6: Other Circumstances, Including the Merits Although we need not undertake a full merits analysis when evaluating Fintiv Factor 6, we consider the strengths and weaknesses of Petitioner’s case, where stronger merits may weigh against discretionary denial and weaker merits may favor exercising discretion to deny institution. Fintiv at 15-16. In this case, we would not characterize any challenge as sufficiently strong to override the concerns about duplication of effort by the Board and the district court. For example, under Petitioner’s Ground 1, although Petitioner’s and its witness’s (Dr. Mudawar’s) interpretations of the prior art as teaching the claimed subject matter are not unreasonable, the interpretations are not particularly clear or strong. Pet. 14-27. Petitioner pieces together portions from Best, Krajewski, and/or Cray that do not explicitly disclose the claimed subject matter, relying instead on Dr. Mudawar to interpret the references’ disclosures as meeting specific claim limitations. Id. Further, Petitioner, for the most part, asserts that each limitation of, for example, independent claim 1, is individually disclosed by one or more of Best, Krajewski, and/or Cray without clearly explaining how one reference’s disclosed apparatus or system would be specifically modified by the ordinarily skilled artisan in view of the teachings of the others. Id. Moreover, when discussing a motivation to combine Best, Krajewski, and/or Cray, Petitioner relies on the fact that they are directed to analogous art and then, primarily, that the features they teach would achieve the same advantages extolled by the ’446 patent itself for its claimed invention, which is not strong support that the prior art would have been combined or modified absent some improper hindsight. Id. at 30-35. PGR2021-00104 Patent 10,820,446 B2 17 Thus, although Petitioner may have made a sufficient showing for institution of trial under certain grounds, there are significant issues of fact that would be left for trial and we are not confident Petitioner’s case would survive the scrutiny of trial. Accordingly, we weigh this factor as neutral as to whether to exercise our discretion to deny institution. Holistic Assessment of Factors Under Section 314(a) After analyzing the Fintiv factors with a holistic view of whether the efficiency and integrity of the system are best served by denying or instituting review, we determine that the factors, on balance, weigh in favor of discretionary denial under the circumstances here. Hence, we exercise our discretion under § 324(a) to deny institution. III. CONCLUSION For the foregoing reasons, we exercise discretion not to institute post-grant review under 35 U.S.C. § 324(a). ORDER Accordingly, it is hereby: ORDERED that the Petition is denied and no post-grant review is instituted. PGR2021-00104 Patent 10,820,446 B2 18 For PETITIONER: Timothy K. Sendek Akerman LLP tim.sendek@akerman.com Mary Jo Boldingh Chapman Spingola, LLP mjboldingh@chapmanspingola.com For PATENT OWNER: Ryan Loveless Brett Mangrum James Etheridge Brian Koide Jeffrey Huang Etheridge Law Group ryan@etheridgelaw.com brett@etheridgelaw.com IPTeam@etheridgelaw.com brian@etheridgelaw.com jeff@etheridgelaw.com Artie Pennington Jeffrey D. Hunt Hunt Pennington Kumar & Dula, PLLC aapennington@hpkdlaw.com jeffhunt@hpkdlaw.com