Personalized Media Communications, LLC

Patent Trials and Appeals Board

Aug 31, 2020

IPR2020-00722 (P.T.A.B. Aug. 31, 2020)

Trials@uspto.gov Paper 22
571-272-7822 Entered: August 31, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOOGLE LLC,
Petitioner,

v.

PERSONALIZED MEDIA COMMUNICATIONS, LLC,
Patent Owner.
____________

IPR2020-00722
Patent 7,747,217 B1
____________

Before GEORGIANNA W. BRADEN, JON M. JURGOVAN, and
JOHN F. HORVATH, Administrative Patent Judges.

HORVATH, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314(a)

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I. INTRODUCTION
A. Background
Google LLC (“Petitioner”) filed a Petition requesting inter partes
review of claims 1–3, 7–9, 11, 12, 16–18, and 20–22 of U.S. Patent No.
7,747,217 B1 (Ex. 1101, “the ’217 patent”). Paper 1 (“Pet.”), 1.
Personalized Media Communications, LLC (“Patent Owner”), filed a
Preliminary Response. Paper 9 (“Prelim. Resp.”). In its Preliminary
Response, Patent Owner identified its disclaimer of claims 7 and 8.
See Prelim. Resp. 11; Ex. 2118. Thus, our review is limited to Petitioner’s
challenge of claims 1–3, 9, 11, 12, 16–18, and 20–22 (“the challenged
claims”).
In its Preliminary Response, Patent Owner requests discretionary
denial due to an upcoming district court trial. See Prelim. Resp. 2–12. With
Board approval, Petitioner filed a Reply to the Preliminary Response. Paper
17 (“Reply”). Patent Owner filed a Sur-Reply to Petitioner’s Reply. Paper
19 (“Sur-Reply”).
We have jurisdiction and authority to institute trial pursuant to
35 U.S.C. §§ 6 and 314(a), and 37 C.F.R. § 42.4 (a). Upon consideration of
the Petition, Preliminary Response, Reply, and Sur-Reply, we exercise our
discretion to decline institution of inter partes review.
B. Related Matters
Petitioner and Patent Owner identify the following as matters that can
affect or be affected by this proceeding. See Pet. 67–69; Paper 7, 1–2.

 Personalized Media Communications, LLC v. Google LLC, 2:19-cv-
00090 EDTX Mar. 21, 2019
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 Personalized Media Communications, LLC v. Netflix, Inc., 2:19-cv-
00091 EDTX Mar. 21, 2019
 Personalized Media Communications, LLC v. TCL Corp., 2:17-cv-
00433 EDTX May 17, 2017
 Personalized Media Communications, LLC v. Hisense Co. Ltd., 2:17-
cv-00437 EDTX May 17, 2017
 Personalized Media Communications, LLC v. Haier America
Company, LLC, 2:17-cv-00438 EDTX May 17, 2017
 Personalized Media Communications, LLC v. Tsinghua Tongfang Co.,
Ltd., 2:17-cv-00439 EDTX May 17, 2017
 Personalized Media Communications, LLC v. Funai Electric Co.,
Ltd., 2:16-cv-00105 EDTX Feb. 1, 2016
 LG Electronics, Inc. et al. v. Personalized Media Communications,
LLC, 1:15-cv-01096 DED Nov. 26, 2015
 Personalized Media Communications, LLC v. Samsung Electronics
America, Inc., 2:15-cv-01754 EDTX Nov. 10, 2015
 Personalized Media Communications, LLC v. TPV Int’l(USA), Inc.,
2:15-cv-01206 EDTX July 1, 2015
 Funai Electric Co., Ltd. v. Personalized Media Communications,
LLC, 1:15-cv-00558 DED June 29, 2015
 Samsung Electronics Co., Ltd. v. Personalized Media
Communications, LLC, IPR2017-00288 PTAB Nov. 18, 2016

Patent Owner also identifies Google, LLC v. Personalized Media
Communications, LLC, IPR2020-00723 PTAB Mar. 21, 2020, and numerous
matters before the Office, including inter partes reviews, ex parte
reexaminations, reissue applications, issued patents, and pending
applications as matters that could affect or be affected by this proceeding
because they involve the ’217 patent or related patents from the same patent
family as the ’217 patent. See Paper 7, 1–4.

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C. Evidence of Record Relied Upon1
Reference Effective Date
Exhibit
Millar et. al (“Millar”) GB 1,370,535 Oct. 16, 1974 1106
Keiser US 4,390,901 Oct. 16, 1980 1107
Thonnart US 4,413,281 June 26, 1981 1110

D. Asserted Challenges to Patentability2
Claim Challenged Basis References
1–3, 9, 11, 12, 16–18,
20–22 § 103(a) Millar, Keiser
11, 12, 16–18 § 103(a) Millar, Keiser, Thonnart
II. ANALYSIS
A. Discretionary Denial Under 35 U.S.C. § 314(a)
We have discretion under § 314(a) to deny any petition for inter
partes review. See 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.”); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348,
1356 (2018) (“[Section] 314(a) invests the Director with discretion on the
question whether to institute review . . . .” (emphasis omitted)); 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.”).

1 Petitioner also relies upon the Declaration of Clifford Reader (Ex. 1104).
2 We list only the challenges that survive Patent Owner’s disclaimer of
claims 7 and 8. See Prelim. Resp. 11; Ex. 2118.
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In exercising discretion under 35 U.S.C. § 314(a), the Board may
consider “events in other proceedings related to the same patent, either at the
Office, in district courts, or the ITC.” Consolidated Trial Practice Guide
November 20193 (“TPG”) at 58. When a patent owner raises an argument
for discretionary denial due to the advanced state of a parallel proceeding,
the Board has set forth several factors that it will consider to balance
considerations of system efficiency, fairness, and patent quality. See Apple
Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020)
(precedential). These factors include:
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. at 6. “[I]n evaluating these factors, the Board takes a holistic view of
whether efficiency and integrity of the system are best served by denying or
instituting review.” Id.

3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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Patent Owner argues we should deny institution because a “district
court action involving the ’217 Patent . . . is scheduled for October 19,
2020.” Prelim. Resp. 2. Petitioner disagrees, arguing “[t]he Fintiv factors
weigh against exercising discretion to deny institution.” Reply 1. For the
reasons explained below, given the facts of this case, we find it appropriate
to exercise our discretion to deny institution of inter partes review.
1. whether the court granted a stay or evidence exists that one may be
granted if a proceeding is instituted
Patent Owner argues this factor weighs in favor of denying institution
because “[t]he Court has not stayed the Litigation and [Petitioner] has not
even filed a motion seeking stay.” Prelim. Resp. 4–5. Petitioner disagrees,
arguing that it “intends to seek a stay after an institution decision is made,”
and has not yet sought a stay because the District Court “routinely denies
motions to stay pending IPR until an institution decision [is] rendered.”
Reply 1.
To date, both parties agree the district court case has not been stayed,
and we decline to speculate whether the District Court will grant a motion to
stay so close to the scheduled trial date should institution be granted.
Accordingly, this factor weighs is neutral.
2. proximity of the District Court’s trial date to the Board’s projected
statutory deadline for a final written decision
Patent Owner argues “[t]his factor heavily weighs in favor of denying
institution” because “[t]rial is scheduled to commence on October 19, 2020.”
Prelim. Resp. 6 (citing Ex. 2101). Petitioner disagrees, arguing
“surrounding circumstances indicate this date may change.” Reply 1.
Specifically, Petitioner argues, the trial date may change because the
COVID-19 pandemic has “significantly disrupted docket schedules” and
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Petitioner has “filed for mandamus at the Federal Circuit to correct an
erroneous venue finding.” Id. at 1–2 (citing Ex. 1127, 9).
To date, trial in the District Court case is set to begin on October 19,
2020, and we decline to speculate whether that date will change due to
COVID-19 disruptions or a writ of mandamus from the Federal Circuit. We
are cognizant of the impact COVID-19 has had on proceedings before the
Board, in district courts, and otherwise. However, we are also cognizant that
the District Court for the Eastern District of Texas has recently completed a
jury trial. See Ex. 2021, 60–63 (docket for Optis Wireless Tech., LLC v.
Apple, Inc., 2:19-cv-00066 (E.D.TX Feb. 25, 2019) showing a jury trial held
between August 3, 2020 and August 11, 2020).
As it stands, on this record, the jury trial in this case is set for October
2020, approximately ten months before the statutory deadline for a final
written decision in this proceeding, should we institute trial. Generalized
speculation as to trial dates universally (e.g., due to impacts of COVID-19),
are outweighed by the fact that the jury trial in this case is scheduled to
occur approximately ten months before the Board’s statutory deadline and
the fact that the record lacks specific evidence showing that the jury trial is
in doubt at this time. Accordingly, on this record, this factor weighs in favor
of denying institution.
3. investment in the parallel proceeding by the court and the parties
Patent Owner argues this factor weighs in favor of denying institution.
See Prelim. Resp. 7–9. Specifically, Patent Owner avers that the District
Court has already invested substantial resources in the district court case
because it has “reviewed all the briefings related to claim construction, held
a Markman hearing, and issued a 94-page claim construction order.” Id. at 7
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(citing Ex. 1126). Patent Owner further avers that the parties have also
invested substantial resources in the district court case because expert
discovery closed on July 8, 2020, and Patent Owner has already “submitted
affirmative and rebuttal expert reports, including expert reports dealing with
references cited by the Petition,” and has taken and “defended numerous
depositions.” Id. at 8 (citing Ex. 2101, 2–3). Petitioner disagrees, arguing
that “institution would allow the district court to avoid the ‘most
burdensome parts of the case,’ such as jury selection, trial, and post-trial
practice.” Reply 2 (internal citations omitted).
We find the District Court and the parties have invested significant
resources in the district court case on issues of claim construction and
validity, including by completing expert discovery on July 8, 2020. This
factor weighs in favor of denying institution. See Fintiv, Paper 11 at 9–10
(“If, at the time of the institution decision, the district court has issued
substantive orders related to the patent at issue in the petition, this fact
favors denial. Likewise, district court claim construction orders may
indicate that the court and parties have invested sufficient time in the parallel
proceeding to favor denial.”).
4. overlap between issues raised in the petition and in the parallel
proceeding
Patent Owner argues this factor weighs in favor of denying institution
because, after disclaiming claims 7 and 8, “the claims at issue in this
proceeding and the claims challenged by Petitioner in the District Court are
identical” and “[t]he Petition includes the same primary reference relied on
by Petitioner in the Litigation, and also raises the same arguments advanced
by the Petitioner in the Litigation, including the same secondary reference
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and obviousness arguments.” Prelim. Resp. 9–11 (citing Ex. 2102, 1;
Ex. 2116, 5–6; Ex. 2118; Pet. 3). Petitioner does not dispute this, but
nonetheless argues this factor does not weigh in favor of denying institution
because “Petitioner has stipulated that, if this IPR proceeding is instituted, it
will withdraw the identical grounds from the district court, thus eliminating
any overlap in issues.” Reply 2–3 (citing Ex. 1128).
Based on the record, we are persuaded Petitioner’s stipulation would
remove any overlap between this proceeding and the district court
proceeding. Petitioner’s stipulation to withdraw the identical grounds
mitigates to some degree the concerns of duplicative efforts between the
district court and the Board, as well as concerns of potentially conflicting
decisions. As noted in Sand Revolution, however, a broader stipulation that
Petitioner would not “pursue any ground raised or that could have been
reasonably raised in an IPR” might have better addressed these concerns in a
much more substantial way. Sand Revolution II, LLC v. Continental
Intermodal Group-Trucking, LLC, IPR2019-01393, Paper 24 at 12 n.5.
Given Petitioner’s narrow stipulation that it will not pursue the identical
grounds in the district court case if the Petition is granted, this factor weighs
marginally against denying institution. Id. at 12.
5. whether the petitioner and the defendant in the parallel proceeding
are the same party
Patent Owner argues “this factor weighs in favor [o]f denying
institution” because the parties here and in the district court case are the
same. Prelim. Resp. 11. Petitioner does not dispute this. Reply 1–3.
This factor weighs against denying institution when a petitioner is not
a party in a district court case involving the same patent. See Fintiv,
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Paper 11 at 13–14 (“If 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.”). Accordingly, this factor, when
considered together with the remaining factors such as the overlap of issues
and the significant investment of the parties, weighs in favor of denying
institution.
6. other circumstances that impact the Board’s exercise of discretion,
including the merits
Patent Owner argues this factor weighs in favor of denying institution
because “[t]here are numerous weaknesses on the merits of the grounds in
the Petition.” Prelim. Resp. 11. Petitioner argues this factor weighs against
denying institution because the merits are strong and the “petition is the first
patentability challenge to reach institution at the Board, despite multiple
assertions by Patent Owner.” Reply 3.
As the Board explained in Fintiv, this factor is considered as “part of a
balanced assessment of all the relevant circumstances in the case.” Fintiv,
Paper 11 at 14. The goal of that assessment is to determine “whether
efficiency and integrity of the system are best served by denying or
instituting review.” Id. at 6. The assessment requires consideration of the
“strengths or weaknesses regarding the merits,” but “[t]his is not to suggest
that a full merits analysis is necessary to evaluate this factor.” Id. at 15–16.
Petitioner avers “the ’217 patent is one of 329 related applications
having combined ‘between 10,000 and 20,000 claims,’” and one of a
number of “continuations claiming priority back forty years.” Reply 3
(citing Ex. 1118, 2). Patent Owner does not dispute this. See Sur-Reply 3.
Indeed, Patent Owner argues Thonnart is not prior art because the claimed
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invention was conceived nearly forty years ago, “prior to June 26, 1981.”
Prelim. Resp. 21. Patent Owner also identifies more than 50 matters before
the Office that could affect or be affected by this proceeding. Paper 7, 1–4.
The prosecution history for the ’217 patent, filed in six parts, is more
than 6400 pages in length. See Ex. 1102, parts 1–6. It includes seven office
actions and responses to the same, an appeal to the Board, an adverse Board
decision on appeal, simultaneous requests for rehearing and a re-opening of
prosecution to address the adverse Board decision, and an Examiner’s
amendment that resulted in the allowance of the patent. Id. The complexity
of the prosecution history can be illustrated, for example, by consideration of
the prosecution history of claims 2 and 76. Claim 2, which issued as claim 1
of the ’217 patent, was amended nine times during the course of prosecution.
Id. At various points, claim 2 was rejected as anticipated by Zaboklicki (DE
2,904,981) and claim 76, which issued as claim 43, was rejected as obvious
over Thonnart and Zaboklicki. Id. These rejections were affirmed on appeal
to the Board, but were not renewed after amendments made by both the
Applicant and a new Examiner when prosecution was reopened. Id.
This brief review of the complex prosecution history of claims 2 and
75, involving potentially broadening or narrowing claim amendments,
illustrates how daunting a task claim construction will be. Further
complicating that task, the prosecution history includes an International
Trade Commission (“ITC”) decision affirming a 448 page Initial
Determination (“ID”) relating to a parent of the ’271 patent, a Federal
Circuit decision affirming-in-part, reversing-in-part, and vacating-in-part
that ITC decision, an 85 page Claim Construction Report from a Special
Master appointed by the District of Delaware to construe the claims in 5 of
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the 6 patents to which the ’271 patent claims priority, and a 539 page Claim
Construction Report from a Special Master appointed by the Northern
District of Georgia to construe the claims in 6 of the 7 patents to which the
’271 patent claims priority.
In short, a brief consideration of the prosecution history illustrates the
tremendous resources that will be required to resolve issues of claim
construction, let alone to reach even preliminary conclusions on the merits
of the Petition. Given the significant resources already expended by the
parties and the District Court in the related district court case, it would be an
inefficient use of the Board’s resources to perform a full merits analysis to
determine whether the merits outweigh the Fintiv factors discussed above
when the District Court will likely have performed a full merits analysis and
issued a final decision on the merits more than 10 months before we can do
so. Accordingly, this factor weighs in favor of exercising our discretion to
deny institution.
III. CONCLUSION
As discussed above, Fintiv factor 1 is neutral, Fintiv factors 2, 3, 5
and 6 favor denying institution, and Fintiv factor 4 weighs in favor of not
denying institution. Among the factors presented in this case, the most
significant are the complexity of this case, the substantial resources the
District Court and the parties already have expended getting ready for trial,
and the soon approaching trial date. These facts outweigh Petitioner’s
narrow stipulation. Given these facts, we find institution of inter partes
review would be an inefficient use of the Board’s resources and, therefore,
exercise our discretion to deny institution of inter partes review.

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IV. ORDER
It is ORDERED that the Petition for inter partes review is denied.

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PETITIONER:
Erika H. Arner
Daniel C. Cooley
Joshua L. Goldberg
Cory C. Bell
Sydney R. Kestle
A. Grace Mills
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
erika.arner@finnegan.com
daniel.cooley@finnegan.com
joshua.goldberg@finnegan.com
cory.bell@finnegan.com
sydney.kestle@finnegan.com
gracie.mills@finnegan.com

PATENT OWNER:
Dmitry Kheyfits
Andrey Belenky
Brandon Moore
KHEYFITS BELENKY LLP
dkheyfits@kblit.com
abelenky@kblit.com
bmoore@kblit.com

Thomas J. Scott Jr.
PERSONALIZED MEDIA COMMUNICATIONS, LLC
tscott@pmcip.com