Ikorongo Technology LLC

Patent Trials and Appeals BoardJun 7, 2021

IPR2021-00205 (P.T.A.B. Jun. 7, 2021)

Trials@uspto.gov Paper 13 Tel: 571-272-7822 Entered: June 7, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ GOOGLE LLC, Petitioner, v. IKORONGO TECHNOLOGY LLC and IKORONGO TEXAS LLC, Patent Owner. ____________ IPR2021-00205 Patent 8,874,554 B2 ____________ Before BRYAN F. MOORE, SHARON FENICK, and STEPHEN E. BELISLE, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 35 U.S.C. § 314 IPR2021-00205 Patent 8,874,554 B2 2 I. INTRODUCTION A. Case Posture Google LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 5–7, 9–12, 21–23, 25–28, 37, and 39–42 (“Challenged Claims”) of U.S. Patent No. 8,874,554 B2 (Ex. 1001, “the ’554 patent”). Petitioner identifies itself, along with LG Electronics Inc., LG Electronics U.S.A., Inc., Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc., as real parties in interest. Pet. 87. Ikorongo Technology LLC and Ikorongo Texas LLC (collectively “Patent Owner”) identify themselves as the joint owners of the ’554 patent and real parties in interest for Patent Owner (Paper 4, 1), and timely filed a Preliminary Response to the Petition (Paper 9, “Prelim. Resp.”). In addition, with prior authorization from the Board, the parties filed supplemental briefing relating to arguments made by the Patent Owner in the Preliminary Response regarding § 314(a) discretionary denial. Paper 10 (“Reply”); Paper 12 (“Sur-Reply”). We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2020). We may not institute an inter partes review “unless . . . 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). As discussed below, we exercise our discretion to deny institution under § 314(a), and therefore, we deny institution of an inter partes review of the ’554 patent. IPR2021-00205 Patent 8,874,554 B2 3 B. Related Proceedings The parties indicate that the ’554 patent is involved in two U.S. District Court actions, namely, Ikorongo Texas LLC v. LG Electronics, Inc., No. 6:20-cv-00257 (W.D. Tex.); Ikorongo Texas LLC v. Samsung Electronics Co., No. 6:20-cv-00259 (W.D. Tex.) (collectively “WDTex cases”). Pet. 88; Paper 4, 1. The ’554 patent also is involved in concurrently filed Unified Patents, LLC v. Ikorongo Technology LLC, IPR2020-00204. See Paper 4, 1. C. The ’554 Patent The ’554 patent is titled “Turnersphere.” Ex. 1001, code (54). The ’554 patent, through a series of continuation applications, issued October 28, 2014, from an application filed November 1, 2013. Id. at codes (22), (45). The ’554 patent generally relates to a system for identifying media items associated with a geographic area of interest to a user. Ex. 1001, code (57), Fig. 1. The system 10 includes media service 12 and devices 14. Ex-1001, 3:58–60; Fig. 1. Device 14 provides playback information to media service 12 via network 18. Id., 3:60–62, 4:35–43. The playback information includes information identifying the media item played by device 14 and a current location of device 14 (the location at which the media item is played). Id., 4:35–43, 55–60. Device 14 includes location determination function 38-1 for obtaining the location of the device, where the location of device 14 is included in the playback information provided to media service 12. Id., 7:33–37. Media service 12 tracks playback of media items by users 16 and maintains a play history for each of users 16, including information IPR2021-00205 Patent 8,874,554 B2 4 identifying the media item played by the user and locations at which the media items were played. Id., 4:1–19. Device 14 may receive a media request from user 16 selecting one or more geographic areas of interest. Id., 5:12–15, 5:21–22, 8:35–37. Device 14 sends the media request to media service 12. Id., 5:19–25, 8:43–45. In response, media service 12 identifies media items based on the geographic areas, such as media items that were played at locations within the geographic areas of interest, and provides the identified media items to device 14. Id., 5:25–32, 8:45–63. D. Illustrative Claim Claims 1 and 5, reproduced below, are illustrative of the claimed subject matter: 1. A user device comprising: a media player component adapted to interact with a media item; a communication interface component adapted to provide media item information identifying the media item, the communication interface component adapted to provide location information identifying a geographic location associated with the user device at which the media item was interacted with; a location determination component adapted to receive an identification of a geographic area; the communication interface component adapted to receive information that identifies a second media item, wherein location information associated with the second media item is associated with the identified geographic area; and a user interface component adapted to present, via the user device, the information that identifies the second media item, wherein at least one of the preceding components includes at least one electronic hardware component. IPR2021-00205 Patent 8,874,554 B2 5 5. The user device of claim 1 wherein the user interface component is adapted to provide an interface for selecting the geographic area. Ex. 1001, 26:30–61. E. Applied References Petitioner relies upon the following references: Horowitz, U.S. Publication No. 2009/0049051 A1 (Ex. 1005, “Horowitz”), filed August 16, 2007, published February 19, 2009. Kalasapur, U.S. Patent No. 8,156,118 B1 (Ex. 1006, “Kalasapur”), filed August 20, 2007, issued April 10, 2012. Rosenberg, U.S. Publication No. 2007/0233743 A1 (Ex. 1007, “Rosenberg”), filed June 12, 2007, published October 4, 2007. Landschaft, U.S. Publication No. 2008/0064351 A1 (Ex. 1009, “Landschaft”), filed September 8, 2006, published March 13, 2008. Pet. 1. IPR2021-00205 Patent 8,874,554 B2 6 F. Asserted Grounds of Unpatentability Petitioner challenges the patentability of claims 1–4, 8, 17–20, 24, 33– 36, and 38 of the ’554 patent based on the following grounds. Claims Challenged 35 U.S.C. § Reference(s) 5-7, 9–12, 21–23, 25–28, 37, 39–42 103(a)1 Horowitz, Kalasapur 9–12, 25–28, 39–42 103(a) Rosenberg, Landschaft, Horowitz Pet. 2. Petitioner relies upon the Declaration of David Hilliard Williams (Ex. 1003). II. DISCRETIONARY DENIAL UNDER § 314(a) A. Overview Patent Owner requests that we exercise our discretion under 35 U.S.C. § 314(a) to deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). Prelim. Resp. 6–17. In assessing whether to exercise such discretion, the Board weighs the following factors: 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 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the ’554 patent was filed before March 16, 2013, the effective date of the relevant amendment, the pre-AIA version of § 103 applies. IPR2021-00205 Patent 8,874,554 B2 7 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 6. Recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor,” the Board “takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. While Petitioner is not a defendant in any litigation asserting the ’554 patent, Ikorongo has asserted the ’554 patent against Samsung and LGE (real parties-in-interest to this Petition) in the WDTex cases. After the parties completed briefing regarding discretionary denial under 35 U.S.C. § 314(a), the District Court reset the trial date from January 2022 to March 14, 2022. Exs. 3001, 3002. We address each Fintiv factor below. B. Factor 1 – Stay of Related Litigation Proceeding Both defendants in the WDTex cases filed motions to transfer their actions from the Western District of Texas to the Northern District of California and have filed motions to stay pending decision on those motions — the Court denied those motions. See, e.g., Ex. 2012; Prelim. Resp. 8 n.5 (a similar order was issued in the LGE case). Thus, it appears these motions to stay are moot. No other motion to stay has been filed. We decline to attempt to predict how the District Court would proceed should another stay be requested by either of the parties. Accordingly, we find that this factor IPR2021-00205 Patent 8,874,554 B2 8 neither favors nor weighs against discretionary denial of inter partes review. C. Factor 2 — Proximity of Court’s Trial Date Patent Owner argues that the Petition should be denied because the trials in the WDTex cases are scheduled approximately four to five months before a final determination would issue in this case. Prelim. Resp. 10. The jury trials in both of the WDTex cases are now currently scheduled to occur on March 14, 2022, thus the trial is now scheduled for approximately three months prior to the final determination date. Exs. 3001, 3002. Petitioner asserts the motions to transfer, if granted, would delay the trial. Pet. 84. Subsequent to this argument, these motions were denied. Ex. 2012; Prelim. Resp. 8 n.5. Additionally, Patent Owner asserts the procedures of the presiding judge in the WDTex cases explicitly state that “the Court will not move the trial date except in extreme situations.” Prelim. Resp. 11 (emphasis omitted) (quoting Order Governing Procedures – Patent Case v. 3.3, at 5 (W.D. Tex. Feb. 21, 2021), available at https://www.txwd.uscourts.gov/ wpcontent/uploads/Standing%20Orders/Waco/Albright/Order%20Governin g%20Proceedings%20-%20Patent%20Cases%20022321.pdf). Although there may be a future delay in the trial date, presuming that there would be delay would be conjecture at this time. Accordingly, this factor somewhat favors exercising discretion to deny institution of inter partes review. D. Factor 3 — Investment in the Parallel Proceeding It is undisputed that that claim construction briefing has been completed in the WDTex cases at this time, and a Markman hearing was held April 1, 2021. Exs. 3001, 3002. IPR2021-00205 Patent 8,874,554 B2 9 Based on the record before us, the majority of the work after the Markman hearing, which in this case occurred just a few weeks ago, remains to be completed in the WDTex cases. Exs. 3001, 3002. Although we understand that fact discovery has just begun, the parties have served final infringement and invalidity contentions. Pet. 85; Ex. 1017, 1018. The time for evaluating investment in the proceeding is the time when institution would occur in this IPR. Although, Petitioner argues that, at the time it filed its Petition, “the parties have not conducted any substantive fact discovery” and that “the district court has not issued orders related to the patent at issue in the petition” (Pet. 85), the District Court’s scheduling orders establish investment by the Court in claim construction and by the parties in fact discovery will have occurred by the time this decision is entered. Prelim. Resp. 12–13. Fintiv observed, “[i]f the evidence shows that the petitioner filed the petition expeditiously, . . . this fact has weighed against exercising the authority to deny institution under NHK.” Fintiv, Paper 11 at 11. Petitioner asserts that Petitioner’s diligence mitigates any concerns about investment because “[t]he instant proceeding was also diligently prepared, resulting in five petitions on four patents and 84 claims within seven months of the complaints and barely a week after invalidity contentions.” Reply 2–3 (citing Ex. 2006). Petitioner asserts that “[t]he current proceeding is more favorably situated [than those in Sotera Wireless, Inc. v. Masimo Corp., IPR 2020-01019, Paper 12, 13–14 (PTAB Dec. 1, 2020) (Institution Decision) (precedential)], with discovery opening in each District Court on the date of this Reply, with expert reports on the distant horizon, and substantive motions yet to come.” Id. at 2. Thus, according to Petitioner, IPR2021-00205 Patent 8,874,554 B2 10 “[u]nder binding precedent, Factor 3 disfavors denial.” Id. at 3. We disagree that the facts of this IPR can be compared directly to the facts in Sotera Wireless such that Sotera is binding on the facts, rather than the law, in this IPR. As Patent Owner argues, “[i]n Sotera, the petitioner articulated multiple extenuating circumstances which allegedly contributed to the delay in filing the petition until six months after the litigation complaint was filed. Sotera, Slip. Op. at 17.” Sur-Reply 3 (emphasis omitted). Petitioner has not offered similar extenuating circumstances to Sotera here. See id. In the decision on institution in the Fintiv proceeding, after discussing the completion of the Markman proceedings, the Board stated, “[b]ased on the level of investment and effort already expended on claim construction and invalidity contentions in the District Court, this factor weighs somewhat in favor of discretionary denial in this case.” Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 14 (PTAB May. 13, 2020) (informative). The Board reached this finding even after expressly “recogniz[ing] that much work remains in this case as it relates to invalidity: fact discovery is in its early stages, with document production ongoing and depositions just getting underway, expert reports are not yet due, and substantive motion practice is yet to come.” Id. This is a similar situation to this case where a Markman order has issued and fact discovery has begun. Thus, the facts in this case compare favorably to the facts that ultimately resulted in denial in the Fintiv IPR. Accordingly, in view of the work relating to validity that remains to be completed in the WDTex cases, and in view of the fact that the Markman Order has issued and fact discovery is underway in this case, we find that IPR2021-00205 Patent 8,874,554 B2 11 this factor weighs somewhat in favor of exercising discretion to deny institution of inter partes review. See Sur-Reply 2–3. E. Factor 4 — Overlap With Issues Raised in Parallel Proceeding Patent Owner argues that there is significant overlap between issues in this IPR and the WDTex cases. Prelim. Resp. 14. We agree. Only claims 5–7, 21–23, and 37 are challenged but not asserted in the District Court, i.e. seven of the twenty claims challenged in that IPR.2 Patent Owner also states that there is complete overlap in the references asserted here and in District Court. Id. Petitioner asserts “Samsung and LGE will stipulate in Case Nos. 6:20- cv-00259 and 6:20-cv-00257 that, if this IPR is instituted, they will not pursue the specific grounds identified in this Petition . . . before the district court.” Pet. 85–86. Thus, according to Petitioner, there is no overlap between the issues to be tried in the WDTex cases and those raised in this IPR, if instituted. Id.; see Sand Revolution II, LLC v. Cont’l Intermodal Grp. – Trucking LLC, IPR2019-01393, Paper 24, 12 (PTAB June 16, 2020) (Institution Decision) (informative). In Sand Revolution, the Petitioner stipulated “only that it will not pursue, in district court, the ‘same grounds’ presented in the Petition.” Sand Revolution, Paper 24 at 12 n.5. The Board suggested that a broader stipulation such as one stipulating that “it would not pursue any ground raised or that could have been reasonably raised in an IPR, i.e., any ground that could be raised under §§ 102 or 103 on the basis of prior art patents or 2 In the co-pending Petition in IPR2021-00204, claims 8, 24, and 38 (three of the fifteen Challenged Claims) are challenged here but not asserted in District Court. IPR2021-00205 Patent 8,874,554 B2 12 printed publications” would better address concerns relating to overlapping issues. Id. In this case, Petitioner’s proposed stipulation is no broader than the stipulation in Sand Revolution and does not include the language suggested by the Board, including stipulating not to raise in District Court any grounds that could have reasonably been raised during this proceeding. See Pet. 85– 86. In fact, Petitioner’s proposed stipulation falls short of that provided in Sotera Wireless, which was found to obviate much of any potential overlap between the issues in the requested IPR and the District Court proceeding. Patent Owner argues that Petitioner has not entered a stipulation but rather asserts it “will” enter one if the IPRs are instituted. Prelim. Resp. 16. Another Board proceeding facing a similar issue stated: By its own terms, the stipulation becomes effective “if the IPR is instituted.” . . . As to whether the stipulation will be enforced once it is operative (i.e., once the Board grants institution), we expect that Petitioner will act promptly to effectuate its stipulation in the Delaware Case. In the event that Petitioner attempts to avoid its stipulation after institution, Patent Owner may seek appropriate relief from the Board. Lego Sys., Inc. v. MQ Gaming LLC, IPR2020-01445, Paper 12 at 15–16 (PTAB Feb. 16, 2021) (Institution Decision) (citations omitted). We agree with this reasoning. Thus, we decline to draw any negative conclusion from Petitioner’s conditional statement regarding its stipulation. Additionally, the stipulations have been “formalized” by counsel for LGE and Samsung in an email, although this email formalization does not cover issues related to priority dates. Ex. 1021. Thus, Petitioner’s stipulation mitigates to some degree the concerns of duplicative efforts between the District Court and the Board, as well as concerns of potentially conflicting decisions. IPR2021-00205 Patent 8,874,554 B2 13 Taking all this into account, we find that this factor weighs marginally in favor of not exercising discretion to deny institution under 35 U.S.C. § 314(a). F. Factor 5 — Commonality of Parties in Parallel Proceedings Patent Owner asserts that two of the real-parties-interest in this case, LGE and Samsung, are parties to the WDTex cases. Prelim. Resp. 16–17. Petitioner asserts that this factor weighs against denial because Samsung and LGE did not name themselves as petitioners. Pet. 85. We are not persuaded by this argument. Given the identity of the real parties-in-interest in this proceeding and WDTex cases, we find that this factor favors denial of institution. G. Factor 6 — Other Circumstances Petitioner contends that they have met the burden on the merits against the challenged patent and thus this factor weighs against denial. Pet. 85–86. Patent Owner disagrees, arguing that the merits are “particularly weak.” Prelim. Rep. 18. If the merits of a ground raised in the petition seem particularly strong on the preliminary record, this fact favors institution. See Fintiv, Paper 11 at 14‒15. In such cases, the institution of a trial may serve the interest of overall system efficiency and integrity because it allows the proceeding to continue in the event that the parallel proceeding settles or fails to resolve the patentability question presented in the PTAB proceeding. Id. By contrast, if the merits of the grounds raised in the petition are a closer call, then that fact has favored denying institution when other factors favoring denial are present. Id. A full merits analysis, however, is not necessary to evaluate this factor. Id. IPR2021-00205 Patent 8,874,554 B2 14 We have reviewed Petitioner’s unpatentability arguments and Patent Owner’s Preliminary Response, and based on the record before us, we disagree with Patent Owner that the merits are particularly weak. Nevertheless, we do not find that Petitioner’s showing is particularly strong so as to weigh in favor of institution under factor 6. See id. at 14‒15. Accordingly, we find this factor neutral. H. Conclusion Based on our holistic assessment of the Fintiv factors, we exercise our discretion under 35 U.S.C. § 314(a) to deny inter partes review. III. ANALYSIS OF GROUNDS OF UNPATENTABILITY Petitioner challenges the patentability of claims 5–7, 9–12, 21–23, 25– 28, 37, and 39–42 of the ’554 patent on the grounds that the claims would have been obvious under 35 U.S.C. § 103 in light of various references including: Holowitz, Kalasapur, Rosenberg, and Landschaft. Because we exercise our discretion under 35 U.S.C. § 314(a) to deny institution, Patent Owner’s argument that we should deny institution upon consideration of the merits of Petitioner’s challenges is moot. IV. ORDER For the reasons given, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review is not instituted for claims 5–7, 9–12, 21–23, 25–28, 37, and 39–42 of U.S. Patent No. 8,874,554 B2. IPR2021-00205 Patent 8,874,554 B2 15 For PETITIONER: Erika Arner Kara Specht Yi Yu FINNEGAN, HENDERSON, FARABOW, GARRETT, & DUNNER LLP erika.arner@finnegan.com kara.specht@finnegan.com yi.yu@finnegan.com For PATENT OWNER: Howard N. Wisnia WISNIA PC howard@wisnialaw.com Brett Mangrum Ryan Loveless James Etheridge Brian Koide Jeffrey A. Stephens Jeffrey Huang ETHERIDGE LAW GROUP brett@etheridgelaw.com ryan@etheridgelaw.com jim@etheridgelaw.com brian@etheridgelaw.com jstephens@etherideglaw.com jeff@etheridgelaw.com Derek Gilliland SOREY, GILLILAND & HULL LLP derek@soreylaw.com