Parus Holdings, Inc.

Patent Trials and Appeals Board

Nov 20, 2020

IPR2020-00847 (P.T.A.B. Nov. 20, 2020)

Trials@uspto.gov Paper 12
571-272-7822 Entered: November 20, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOOGLE LLC, SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
ELECTRONICS AMERICA, INC., LG ELECTRONICS INC., and LG
ELECTRONICS U.S.A., INC.,
Petitioner,

v.

PARUS HOLDINGS, INC.,
Patent Owner.
____________

IPR2020-00847
Patent 9,451,084 B2
____________

Before DAVID C. MCKONE, STACEY G. WHITE, and
SHELDON M. MCGEE, Administrative Patent Judges.

PER CURIAM.

DECISION
Denying Patent Owner’s Request on Rehearing of Decision on Institution
37 C.F.R. § 42.71(d)

IPR2020-00847
Patent 9,451,084 B2
2
I. INTRODUCTION
A. Background and Summary
Google LLC, Samsung Electronics Co., Ltd., Samsung Electronics
America, Inc., LG Electronics Inc., and LG Electronics U.S.A., Inc.,
(collectively, “Petitioner”) filed a Petition requesting an inter partes review
of claims 1, 2, 4–7, 10, and 14 of U.S. Patent No. 9,451,084 B2 (Ex. 1001,
“the ’084 patent”). Paper 2 (“Pet.”). Parus Holdings, Inc. (“Patent Owner”)
filed a Preliminary Response to the Petition. Paper 6 (“Prelim. Resp.”).
Pursuant to our authorization, Petitioner filed a Reply, Paper 7 (“Reply”),
and Patent Owner filed a Sur-reply, Paper 8 (“Sur-reply”).
Upon consideration of the Petition, Preliminary Response, Reply, and
Sur-reply, we instituted an inter partes review of the ’084 patent. Paper 9
(“Dec.”), 1. In doing so, we rejected arguments by Patent Owner that we
should exercise our discretion under 35 U.S.C. § 314(a), NHK Spring Co. v.
Intri-Plex Technologies, Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12,
2018) (precedential), and Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper
11 (PTAB Mar. 20, 2020) (precedential), to deny the petition in light of
trials scheduled in several cases, including Parus Holdings Inc. v. Samsung
Electronics Co., Ltd., No. 6:19-cv-00438 (W.D. Tex.), and Parus Holdings
Inc. v. Google LLC, No. 6:19-cv-00433 (W.D. Tex.1)2 (collectively, “the
Texas case”). Dec. 10–21.

1 We refer to the United States District Court for the Western District of
Texas, Waco Division, as “the Texas court” in this Decision.
2 An additional case, Parus Holdings Inc. v. LG Electronics, Inc., No. 6:19-
cv-00437 (W.D. Tex.), has been transferred to the United States District
Court for the Northern District of California. Ex. 1032.
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Patent 9,451,084 B2
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Patent Owner asks us to reconsider our decision not to exercise our
discretion to deny the Petition in light of alleged “new facts that have arisen
since the Board’s Decision, which decidedly tilt the Fintiv factors in favor of
denying institution in light of the earlier trial in the Parallel Proceeding in
the District Court for the Western District of Texas.” Paper 11 (“Req.”), 1.
For the reasons given below, we decline to modify our Decision.

II. ANALYSIS
A. Legal Background
When rehearing a decision on institution, we review the decision for
an abuse of discretion. See 37 C.F.R. § 42.71(c) (2019). An abuse of
discretion may be indicated if a decision is based on an erroneous
interpretation of law, if a factual finding is not supported by substantial
evidence, or if the decision represents an unreasonable judgment in weighing
relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281
(Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir.
2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The
burden of showing that the Institution Decision should be modified is on
Patent Owner, the party challenging the Decision. See 37 C.F.R. § 42.71(d)
(2019). In addition, “[t]he request must specifically identify all matters the
party believes [we] misapprehended or overlooked, and the place where each
matter was previously addressed in a motion, an opposition, or a reply.” Id.
Institution of inter partes review is discretionary. See Harmonic Inc.
v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
permitted, but never compelled, to institute an IPR proceeding.”); 35 U.S.C.
§ 314(a). The Board has held that the advanced state of a parallel district
court action is a factor that may weigh in favor of denying a petition under
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Patent 9,451,084 B2
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§ 314(a). See NHK Spring, Paper 8 at 20; Patent Trial and Appeal Board,
Consolidated Trial Practice Guide, 58 & n.2 (Nov. 2019). We consider the
following factors to assess “whether efficiency, fairness, and the merits
support the exercise of authority to deny institution in view of an earlier trial
date in the 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, Paper 11 at 5–6. In evaluating these factors, we “take[] a holistic
view of whether efficiency and integrity of the system are best served by
denying or instituting review.” Id. at 6.

B. Patent Owner’s Arguments
Patent Owner does not argue that we misapprehended or overlooked
any argument or evidence that it presented previously. Rather, Patent Owner
argues that we should re-evaluate our Decision in light of “new facts” that
have arisen in the Texas court after our Decision. Req. 1–2. In particular,
Patent Owner argues that Petitioner Google and Patent Owner have
confirmed that they are available for trial in July 2021, and the Texas court
has resumed conducting jury trials, which, together, should impact our
IPR2020-00847
Patent 9,451,084 B2
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evaluation of Fintiv factors 2 and 5 by removing any doubt that a trial in the
Texas court will happen in July 2021. Id.
The Texas court’s scheduling order sets a “Predicted Jury
Selection/Trial” for July 12–30, 2021. Ex. 1016, 2. As to Fintiv factor 2, we
determined that “we [could not] ignore the substantial uncertainty in the
Texas court’s “Predicted Jury Selection/Trial” date and the fact that the
scheduled trial date is nine months from now and much can change during
this time.” Dec. 14–15. Thus, we decided, “[w]hether the Texas court’s
trial takes place before, contemporaneously with, or after our final written
decision statutory deadline involves speculation,” and “this factor is, at best,
neutral to whether we should exercise our discretion to deny the Petition.”
Id. at 15. As to Fintiv factor 5, we explained that “[t]his fact could weigh
either in favor of, or against, exercising discretion to deny institution,
depending on which tribunal was likely to address the challenged patent
first,” a matter on which we declined to speculate and, accordingly, we
determined the factor to be neutral. Id. at 20.
Patent Owner argues that, after pre-institution briefing, the Texas
court held a Markman hearing, during which the Texas court stated that the
Texas case would have a trial during the latter half of July 2021, and
requested that the parties provide their availability. Req. 3–4 (citing
Ex. 2015, 52–53). According to Patent Owner, after our Decision, both
Petitioner Google and Patent Owner indicated to the Texas court that they
are available for a trial between July 12–23, and that the Texas court
“informed the parties that they may use July 12, 2021 as the scheduled trial
date.” Id. at 4 (citing Ex. 2018). Patent Owner further argues that “jury
trials are now going forward in the Western District of Texas,” and the
Texas court “has been conducting patent cases.” Id. (citing Ex. 2019). In
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Patent 9,451,084 B2
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light of these developments, Patent Owner argues, “[t]here is thus no reason
to doubt that the district court trial will go forward in July 2021.” Id. Patent
Owner concludes that Fintiv factors 2 and 5 “now weigh heavily against
institution.” Id.
At the Markman hearing to which Patent Owner refers, the Texas
court reiterated “the goal of the Court . . . to get the case tried in July,” and
indicated that it was “not going to pick a date right now,” but that it was
“looking at setting trial in this case somewhere between July 12th and the
end of July [2021].” Ex. 2015, 52:16–20, 53:9–10. The Texas court then
asked counsel for Petitioner and other defendants in the Texas case and
related cases to consult their calendars and suggest dates for the trial. Id. at
52:20–53:13. In an email to the Texas court, Petitioner Google, Patent
Owner, and two other defendants later informed the Texas court that they
could be available for trial between July 12 and either July 23 or July 31,
2021. Ex. 2018, 4. Petitioner Samsung indicated that it could be available
after August 9, 2021. Id. On October 8, 2020, an email from staff at the
Texas court stated:
As we are still a ways out from trial, the Court is going to
schedule all four of the trials for 7/12/2021. The first trial will
go 7/12 but as we get closer to trial and details solidify we will
determine the actual order. Depending on what the Court
decides, Samsung will likely be the last to be tried with a trial
date sometime in August.
Id. at 2. Counsel for Patent Owner responded to the Texas court staff on
October 13, 2020, stating that “[t]he trial schedule is important not only for
our planning in this case, but also because the issue of the trial date and
Apple’s pending motion to stay have come up in the IPR proceedings, and
we want to make sure we provide timely and accurate information to the
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Patent 9,451,084 B2
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PTAB about those issues.” Id. at 1. An October 13, 2020, email from the
Texas court staff replied: “You may use 7/12/2021 as the scheduled trial
date.” Id. The record, however, does not include any order from the Texas
court scheduling a trial date for any of the defendants in the Texas case.
Thus, it is unclear if the Texas court has scheduled any of the trials in the
Texas case.
All of the email communications between Patent Owner and the Texas
court on which Patent Owner’s arguments are based took place before we
issued our Decision on October 21, 2020. Despite representing to the Texas
court that it sought more firm trial scheduling information to “provide timely
and accurate information to the PTAB about those issues,” (Ex. 2018, 1),
Patent Owner did not provide that information to us. Thus, we could not
have misapprehended or overlooked it. For that reason alone, Patent
Owner’s new arguments are improper and insufficient.
Nevertheless, even if we were to consider the arguments, they would
not be persuasive. We do not view the circumstances to have changed
materially. The record still is unclear as to whether the Texas court has set a
trial date. Staff at the Texas court has indicated that Patent Owner “may use
7/12/2021 as the scheduled trial date” for a group of trials that will include
Petitioners (Ex. 2018, 1), but the record does not indicate that the Texas
court has issued any orders to that effect.
Fintiv factor 2 looks at the proximity of the trial date to the date of our
final decision to assess the weight to be accorded a trial date set earlier than
the expected final written decision date. This proximity inquiry is a proxy
for the likelihood that the trial court will reach a decision on validity issues
before the Board reaches a final written decision. A trial set to occur soon
after the institution decision is fairly likely to happen prior to the Board’s
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Patent 9,451,084 B2
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final decision, even if the trial date were postponed due to intervening
circumstances. Here, however, a July 12, 2021, trial date would be
approximately three months before our final written decision is due. Even
considering the allegedly changed circumstances raised by Patent Owner,
there is at least some persuasive evidence that delays are possible. In these
circumstances, the efficiency and system integrity concerns that animate the
Fintiv analysis are not as strong—all other things being equal. Accordingly,
even if we were to consider Patent Owner’s new arguments, this factor still
would be, at best, neutral to whether we should exercise our discretion to
deny the Petition. For the same reasons, our analysis of Fintiv factor 5 also
would remain unchanged.

III. CONCLUSION
For the foregoing reasons, Patent Owner has not demonstrated that we
misapprehended or overlooked its arguments or abused our discretion in
instituting a trial of the ’084 patent.

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED Patent Owner’s Request for Rehearing is denied.

IPR2020-00847
Patent 9,451,084 B2
9
FOR PETITIONER:

Elisabeth Hunt
Ehunt-ptab@wolfgreenfield.com

Gregory Nieberg
Gnieberg-ptab@wolfgreenfield.com

Richard Giunta
Rgiunta-ptab@wolfgreenfield.com

FOR PATENT OWNER:

Michael McNamara
mmcnamara@mintz.com

Michael Renaud
mtrenaud@mintz.com

William Meunier
wameunier@mintz.com