Valve Corp. v. Elec. Scripting Prods., Inc.

Trials@uspto.gov 	Paper 10
571-272-7822 	Entered: May 1, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
VALVE CORPORATION,
Petitioner,
v.
ELECTRONIC SCRIPTING PRODUCTS, INC.,
Patent Owner.
_______________
Case IPR2019-00064 (Patent 8,553,935 B2)
Case IPR2019-00065 (Patent 8,553,935 B2)
Case IPR2019-00085 (Patent 8,553,935 B2)1
_______________
Before ANDREI IANCU, Under Secretary of Commerce for Intellectual
Property and Director of the United States Patent and Trademark Office,
WILLIAM M. FINK, Vice Chief Administrative Patent Judge, and
ROBERT J. WEINSCHENK, Administrative Patent Judge.
FINK, Vice Chief Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314
1 These cases have not been joined or consolidated. Rather, this Decision
governs each case based on common issues. The parties shall not employ
this heading style.

IPR2019-00064 (Patent 8,553,935 B2)
IPR2019-00065 (Patent 8,553,935 B2)
IPR2019-00085 (Patent 8,553,935 B2)
1
I. 	INTRODUCTION
Valve Corporation (“Valve”) filed three petitions (IPR2019-00064,
Paper 2, “Pet.”; IPR2019-00065, Paper 1; IPR2019-00085, Paper 3)
requesting inter partes review of claims 1–21 of U.S. Patent No. 8,553,935
B2 (Ex. 1001, “the ’935 patent”). This Decision addresses common issues
presented by all three petitions. For purposes of this Decision, we treat the
Petition in IPR2019-00064 (“the Petition”) as representative and cite to the
record in IPR2019-00064, unless otherwise indicated.
Electronic Scripting Products, Inc. (“Patent Owner”) filed a
Preliminary Response (IPR2019-00064, Paper 5, “Prelim. Resp.”) to the
Petition. Patent Owner argues that we should exercise our discretion under
35 U.S.C. § 314(a) to deny the Petition as an “unfair” follow-on petition.
Prelim. Resp. 9–11. Pursuant to our authorization (Paper 7), Valve filed a
Reply (Paper 6, “Reply”) to Patent Owner’s follow-on petition argument,
and Patent Owner filed a Sur-reply (Paper 8, “Sur-reply”) to the Reply.
Valve is not the first party to request an inter partes review of the
’935 patent. HTC Corporation and HTC America, Inc. (collectively,
“HTC”) previously filed a petition requesting an inter partes review of the
’935 patent in IPR2018-01032 (“the 1032 IPR”). 1032 IPR, Paper 2. The
Board instituted inter partes review. 1032 IPR, Paper 6 (“1032 DI”). In
IPR2019-00074, Valve filed a Petition and Motion to join the 1032 IPR,
which we granted. 1032 IPR, slip op. at 10 (PTAB Jan. 18, 2019) (Paper
12). The statutory deadline for a final determination as to the patentability
of claims 1–21 of the ’935 patent in the 1032 IPR is September 13, 2019.

IPR2019-00064 (Patent 8,553,935 B2)
IPR2019-00065 (Patent 8,553,935 B2)
IPR2019-00085 (Patent 8,553,935 B2)
2
In General Plastic Industries Co. v. Canon Kabushiki Kaisha, Case
IPR2016-01357, slip op. at 15–16 (PTAB Sept. 6, 2017) (Paper 19)
(precedential), the Board articulated a non-exhaustive list of factors to be
considered in determining whether to exercise discretion under § 314(a) to
deny a petition that challenges the same patent as a previous petition. Under
the first General Plastic factor, we consider “whether the same petitioner
previously filed a petition directed to the same claims of the same patent.”
General Plastic, slip op. at 16. Here, Valve has joined the ongoing 1032
IPR proceeding, and therefore has filed a petition directed to the same claims
of the same patent. Moreover, our application of the General Plastic factors
is not limited solely to instances in which multiple petitions are filed by the
same petitioner. When different petitioners challenge the same patent, we
consider any relationship between those petitioners while weighing the
General Plastic factors. Based on our consideration of the General Plastic
factors, we determine that it is appropriate to exercise our discretion under
§ 314(a) to deny the Petition.
A. 	Related Proceedings
The ’935 patent and a related patent, U.S. Patent No. 9,235,934 B2
(Ex. 1002, “the ’934 patent”), are the subject of a patent infringement
lawsuit, Electronic Scripting Products, Inc. v. HTC America, Inc., No. 3:17-
cv-05806-RS, filed on October 9, 2017, in the United States District Court
for the Northern District of California (“the District Court litigation”).
Pet. 1. Valve and HTC were named as co-defendants in that lawsuit and
were accused of infringing the ’935 patent based on HTC’s VIVE devices
that incorporate Valve’s technology. Prelim. Resp. 8–9; Reply 1. In

IPR2019-00064 (Patent 8,553,935 B2)
IPR2019-00065 (Patent 8,553,935 B2)
IPR2019-00085 (Patent 8,553,935 B2)
3
response to Valve’s motion challenging venue, however, Patent Owner
voluntarily dismissed Valve without prejudice on January 25, 2018.
Reply 1; Sur-reply 2.
As discussed above, HTC requested an inter partes review of the ’935
patent in the 1032 IPR, and the Board instituted review. Pet. 1; Prelim Resp.
9; Ex. 1061, 32. HTC also requested an inter partes review of the related
’934 patent in IPR2018-01031, which the Board denied. Ex. 1060, 16
(denying institution). Valve also requested inter partes review of the ’934
patent in IPR2019-00062, IPR2019-00063, and IPR2019-00084, which the
Board denied under 35 U.S.C. § 314(a). E.g., Valve Corp. v. Elec. Scripting
Prods., Inc., Case IPR2019-00062 (PTAB April 2, 2019) (Paper 11)
(“Valve I”).
B. 	The ’935 Patent
The ’935 patent relates to determining an absolute pose of a
manipulated object in a real three-dimensional environment, particularly of a
manipulated object used by human users to interface with the digital world.
Ex. 1001, 1:24–28. An object’s pose combines the three linear displacement
coordinates (x, y, z) of any reference point on the object and the three
orientation angles, also called the Euler angles (ϕ, θ, ψ), that describe the
object’s pitch, yaw, and roll. Id. at 1:46–50.

IPR2019-00064 (Patent 8,553,935 B2)
IPR2019-00065 (Patent 8,553,935 B2)
IPR2019-00085 (Patent 8,553,935 B2)
4
Figure 21 of the ’935 patent is reproduced below:
Figure 21 illustrates a “cyber game” in which user or player 882 interacts
with game application 880 by moving manipulated object 884, in this case a
tennis racket, in real three-dimensional environment 886. Ex. 1001, 37:9–
13. Visual tennis match elements 898A–D and image 884′ of tennis racket
884 held by user 882 are displayed on screen 890. Id. at 37:29–44. The
display of image 884′ changes in response to the detected absolute pose of
racket 884. Id. at 38:12–20.

IPR2019-00064 (Patent 8,553,935 B2)
IPR2019-00065 (Patent 8,553,935 B2)
IPR2019-00085 (Patent 8,553,935 B2)
5
The absolute pose of racket 884 is detected using on-board optical
measuring arrangement 888 and auxiliary motion detection component 904.
Ex. 1001, 37:14–16, 37:65–66, 38:12–14. Optical measurement
arrangement 888 infers absolute pose data (x, y, z, ϕ, θ, ψ) of racket 884 by
sensing light 893 emitted from beacons B1–B9 disposed on and around
screen 890. Id. at 37:14–21, 37:61–64. Auxiliary motion detection
component 904 is an inertial sensing device that includes gyroscope 908 for
providing information about changes in orientation (ϕ, θ, ψ) and
accelerometer 906 for providing information about linear displacement (x, y,
z). Id. at 37:65–38:11.
The combination of absolute pose data and relative motion data is
used to determine the absolute pose, which is expressed in world coordinates
(X0, Y0, Z0). Id. at 11:29–34, 38:12–14. Such absolute pose data and
relative motion data can be combined using any suitable combination or data
fusion techniques well-known in the art. Id. at 44:51–55.
C. 	Illustrative Claim
Of the challenged claims, claims 1 and 12 are independent. Claim 1 is
illustrative of the claims at issue and is reproduced below.
1. A method for use with a system having a manipulated
object, the method comprising:
a) accepting light data indicative of light detected by a
photodetector mounted on-board said manipulated object from a
first plurality of predetermined light sources having known
locations in world coordinates;
b) accepting relative motion data from a relative motion
sensor mounted on-board said manipulated object indicative of a
change in an orientation of said manipulated object; and

IPR2019-00064 (Patent 8,553,935 B2)
IPR2019-00065 (Patent 8,553,935 B2)
IPR2019-00085 (Patent 8,553,935 B2)
6
c), determining the pose of said manipulated object based
on said light data and said relative motion data, wherein said pose
is determined with respect to said world coordinates.
Ex. 1001, 51:13–26.
D. 	Evidence of Record
In Valve’s three petitions for inter partes review of the ’935 patent,
Valve relies on the following references and declarations.
IPR2019-00064
Reference or Declaration 	Exhibit No.
Declaration of Dr. Gregory Welch 	Ex. 1003
Masaki Maeda et al., Tracking of User Position and
Orientation by Stereo Measurement of Infrared Markers
and Orientation Sensing, PROC. E IGHTH I NT ’L SYMP. ON
WEARABLE COMPUTERS 77 (2004) (“Maeda”)
Ex. 1047
Greg Welch et al., High-Performance Wide-Area Optical
Tracking, PRESENCE: TELEOPERATORS & VIRTUAL
ENVIRONMENTS 1 (Feb. 2001) (“Welch-HiBall”)
Ex. 1004
IPR2019-00065
Reference or Declaration 	Exhibit No.
Declaration of Dr. Gregory Welch 	Ex. 1003
Anderson et al., U.S. Patent No. 7,063,256 B2 (filed Jan.
23, 2004; issued June 20, 2006) (“Anderson”)
Ex. 1054
Welch-HiBall 	Ex. 1004
IPR2019-00085
Reference or Declaration 	Exhibit No.
Declaration of Dr. Gregory Welch 	Ex. 1003
Masaki Maeda et al., A Wearable AR Navigation System
Using Vision Based Tracking with Infrared, TECH. REP.
IEICE (2004) (“Maeda II”)
Ex. 1048
Masaki Maeda et al., Proposal of a Three-dimensional
User Position and Orientation Detection Technique
Using Infrared Identifiers for a Wearable System, 65TH
Ex. 1064

IPR2019-00064 (Patent 8,553,935 B2)
IPR2019-00065 (Patent 8,553,935 B2)
IPR2019-00085 (Patent 8,553,935 B2)
7
NAT ’L CONVENTION I NFO. PROCESSING SOC’Y J APAN 203
(2003) (“Maeda I”)
E. 	Asserted Grounds of Unpatentability
In Valve’s three petitions for inter partes review of the ’935 patent,
Valve asserts that the challenged claims are unpatentable on the following
grounds.
IPR2019-00064
Claims Challenged 	Basis 	Reference
1–21 	§ 103(a) 	Maeda
11 and 21 	§ 103(a) 	Maeda and AAPA and/or
Welch-HiBall
IPR2019-00065
Claims Challenged 	Basis 	Reference
1–21 	§ 103(a) 	Anderson
6, 11, 18, and 21 	§ 103(a) 	Anderson and AAPA
and/or Welch-HiBall
IPR2019-00085
Claims Challenged 	Basis 	References
1–21 	§ 103(a) 	Maeda I and Maeda II
6, 11, 18, and 21 	§ 103(a) 	Maeda I, Maeda II, and
AAPA
II. 	ANALYSIS
A. 	35 U.S.C. § 314(a)
Patent Owner argues that the Petition should be denied under
35 U.S.C. § 314(a) because the Petition challenges the same claims of the
’935 patent as the petition in the 1032 IPR, and Valve is “similarly situated”
to HTC, the petitioner in the 1032 IPR. Prelim. Resp. 3, 8–11. Patent
Owner also argues that Valve “waited until HTC’s petition on this patent
was instituted (as a test case), and only then filed its own petition essentially

IPR2019-00064 (Patent 8,553,935 B2)
IPR2019-00065 (Patent 8,553,935 B2)
IPR2019-00085 (Patent 8,553,935 B2)
8
on the same grounds related to the same patent and building on the
successful promotion of a fundamental misapprehension of the claims
successfully perpetrated by HTC.” Id. at 10–11 (emphasis omitted). Patent
Owner, therefore, contends that the Petition “is unfair, and nothing more
than a follow-on petition for the previously instituted [1032] IPR.” Id. at 11.
Valve responds that the Board should not deny the Petition under § 314(a)
because HTC is an “unrelated” company and Valve “did not act in concert
with HTC.” Reply 1. Valve also responds that the timing of its Petition was
the result of a recent change in the law regarding the one-year time bar under
35 U.S.C. § 315(b). Id. at 2.
For the reasons discussed below, we determine that it is appropriate to
exercise our discretion under § 314(a) to deny the Petition.
1. 	Legal Framework
35 U.S.C. § 314(a) states that
[t]he Director may not authorize an inter partes review to be
instituted unless the Director determines that the information
presented in the petition filed under section 311 and any response
filed 	under 	section 	313 	shows 	that 	there 	is 	a 	reasonable
likelihood that the petitioner would prevail with respect to at least
1 of the claims challenged in the petition.
Under § 314(a), the Director has discretion to deny institution of an inter
partes review. 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.”).
As discussed above, in the precedential General Plastic decision, the
Board articulated a non-exhaustive list of factors to be considered in
determining whether to exercise discretion under § 314(a) to deny a petition

IPR2019-00064 (Patent 8,553,935 B2)
IPR2019-00065 (Patent 8,553,935 B2)
IPR2019-00085 (Patent 8,553,935 B2)
9
that challenges the same patent as a previous petition. General Plastic, slip
op. at 15–16. These factors are
1. whether 	the 	same 	petitioner 	previously 	filed 	a 	petition
directed to the same claims of the same patent;
2. whether at the time of filing of the first petition the petitioner
knew of the prior art asserted in the second petition or should
have known of it;
3. whether at the time of filing of the second petition the
petitioner already received the patent owner’s preliminary
response to the first petition or received the Board’s decision
on whether to institute review in the first petition;
4. the length of time that elapsed between the time the petitioner
learned of the prior art asserted in the second petition and the
filing of the second petition;
5. whether the petitioner provides adequate explanation for the
time elapsed between the filings of multiple petitions directed
to the same claims of the same patent;
6. the finite resources of the Board; and
7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
determination not later than 1 year after the date on which the
Director notices institution of review.
Id. at 16.
2. 	Factor One
Under the first General Plastic factor, we consider “whether the same
petitioner previously filed a petition directed to the same claims of the same
patent.” Id. at 16. Patent Owner argues that the Petition in this case
challenges the same claims of the ’935 patent as the petition in the 1032 IPR,
and Valve is “similarly situated” to HTC, the petitioner in the 1032 IPR.
Prelim. Resp. 3, 8–11. Valve responds that it is an “unrelated” company that
“did not act in concert with HTC.” Reply 1.
The petitions in these cases and the previous petition in the 1032 IPR
(and Valve’s petition in IPR2019-00074) all challenge claims 1–21 of the

IPR2019-00064 (Patent 8,553,935 B2)
IPR2019-00065 (Patent 8,553,935 B2)
IPR2019-00085 (Patent 8,553,935 B2)
10
’935 patent. See, e.g., Pet. 4; 1032 IPR, Paper 2, 3. Valve did not file the
petition in the 1032 IPR, but joined that ongoing proceeding as a petitioner.
By joining the ongoing 1032 IPR, Valve has filed a petition previously
directed to the same claims of the same patent under the first General Plastic
factor.
In addition, as discussed above and in our decision in Valve I, our
application of the General Plastic factors is not limited solely to instances in
which multiple petitions are filed by the same petitioner. Rather, when
different petitioners challenge the same patent, we consider any relationship
between those petitioners while weighing the General Plastic factors. See
NetApp Inc. v. Realtime Data LLC, Case IPR2017-01195, slip op. at 10
(PTAB Oct. 12, 2017) (Paper 9) (“[T]he General Plastic factors provide a
useful framework for analyzing the facts and circumstances present in this
case, in which a different petitioner filed a petition challenging a patent that
had been challenged already by previous petitions.”). Here, Valve and HTC
were co-defendants in the District Court litigation and were accused of
infringing the ’935 patent based on the same product, namely HTC’s VIVE
devices that incorporate technology licensed from Valve. Prelim. Resp. 8–9;
IPR2019-00085, Ex. 2010 ¶¶ 6–7. Indeed, in that lawsuit, Valve represented
that “HTC’s VIVE devices incorporate certain Valve technologies under a
technology license from Valve,” and that “Valve employees did provide
HTC with technical assistance during the development of the accused VIVE
devices.” IPR2019-00085, Ex. 2010 ¶¶ 6–7. Although Valve was
voluntarily dismissed from the District Court litigation after it filed a motion
challenging venue (Reply 1; Sur-reply 2), Valve was aware of Patent

IPR2019-00064 (Patent 8,553,935 B2)
IPR2019-00065 (Patent 8,553,935 B2)
IPR2019-00085 (Patent 8,553,935 B2)
11
Owner’s infringement allegations at the time HTC filed its petition in the
1032 IPR (see IPR2019-00085, Ex. 2010 ¶¶ 6–7).
We determine that the first General Plastic factor weighs against
institution. As discussed above, the three petitions in these cases challenge
the same claims of the ’935 patent as the previous petition in the 1032 IPR,
which is ongoing and in which Valve is now joined as a party at Valve’s
request. Moreover, similar to the circumstances in Valve I, Valve and HTC
were co-defendants in the District Court litigation and were accused of
infringing the ’935 patent based on HTC’s VIVE devices that incorporate
technology licensed from Valve. Thus, there is a significant relationship
between Valve and HTC with respect to Patent Owner’s assertion of the
’935 patent. The complete overlap in the challenged claims and the
significant relationship between Valve and HTC favor denying institution.
3. 	Factor Two
Under the second General Plastic factor, we consider “whether at the
time of filing of the first petition the petitioner knew of the prior art asserted
in the second petition or should have known of it.” General Plastic, slip op.
at 16. This factor includes considering whether the prior art relied on in the
later petition “could have been found with reasonable diligence.” Id. at 20.
We determine that the second General Plastic factor weighs against
institution for reasons similar to those discussed in Valve I. Valve knew or
should have known of the Welch-HiBall reference around the time HTC
filed its petition in the 1032 IPR because it was one of the two references
relied upon by HTC. See 1032 DI. With respect to the other relied-upon
references, Maeda, Maeda I, Maeda II, and Anderson, the timing of Valve’s
petitions suggests that it could have found these references through the

IPR2019-00064 (Patent 8,553,935 B2)
IPR2019-00065 (Patent 8,553,935 B2)
IPR2019-00085 (Patent 8,553,935 B2)
12
exercise of reasonable diligence around the time of HTC’s petition on May
10, 2018. Specifically, by its own admission, Valve began preparing its
petitions on or after August 16, 2018, and filed them less than two months
later, which indicates that Valve found the Maeda and Anderson references
quickly. See Reply 2. Valve’s knowledge of the Welch-HiBall reference
and its ability to quickly locate the Maeda and Anderson references favor
denying institution.
4. 	Factor Three
Under the third General Plastic factor, we consider “whether at the
time of filing of the second petition the petitioner already received the patent
owner’s preliminary response to the first petition or received the Board’s
decision on whether to institute review in the first petition.” General
Plastic, slip op. at 16. The Board previously explained that
factor 	3 	is 	directed 	to 	Petitioner’s 	potential 	benefit 	from
receiving and having the opportunity to study Patent Owner’s
Preliminary Response, as well as our institution decisions on the
first-filed petitions, prior to its filing of follow-on petitions. . . .
Multiple, staggered petitions challenging the same patent and
same claims raise the potential for abuse. 	The absence of any
restrictions on follow-on petitions would allow petitioners the
opportunity to strategically stage their prior art and arguments in
multiple petitions, using our decisions as a roadmap, until a
ground is found that results in the grant of review. 	All other
factors aside, this is unfair to patent owners and is an inefficient
use of the inter partes review process and other post-grant review
processes.
Id. at 17–18 (internal citation and footnote omitted). Patent Owner argues
that Valve “waited until HTC’s petition on this patent was instituted (as a
test case)” and then filed its Petition. Prelim. Resp. 10.

IPR2019-00064 (Patent 8,553,935 B2)
IPR2019-00065 (Patent 8,553,935 B2)
IPR2019-00085 (Patent 8,553,935 B2)
13
We determine that the third General Plastic factor weighs against
institution for reasons similar to those discussed in Valve I. In the 1032 IPR,
the Board instituted review based on the combination of Welch-HiBall and
SIGGRAPH. See 1032 DI. Valve had access to Patent Owner’s preliminary
response and the Board’s institution decision in the 1032 IPR before filing
the Petition and used the institution decision as a guide to preemptively
address anticipated arguments by Patent Owner based on the preliminary
response in that proceeding. See Pet. 23–25 (noting the Board’s
determination that “Welch-HiBall was not considered by the Examiner.”).
Moreover, unlike the circumstances in Valve I, Valve had an instituted
proceeding (i.e., the 1032 DI) as a roadmap to follow in preparing these
follow-on petitions. As a result, it would have gained a substantial
advantage in waiting for the preliminary response and institution decision in
that proceeding before preparing these follow-on petitions.2
Accordingly, Valve’s use of the Board’s institution decision in the
1032 IPR as a roadmap for the Petition in this case implicates the fairness
concerns discussed in General Plastic and favors denying institution.
5. 	Factors Four and Five
Under the fourth and fifth General Plastic factors, we consider “the
length of time that elapsed between the time the petitioner learned of the
prior art asserted in the second petition and the filing of the second petition”
and “whether the petitioner provides adequate explanation for the time
2 To the extent Valve is confident in the unpatentability challenges in the
1032 IPR, these further challenges are an inefficient use of Board resources
(see infra § II.A.6).

IPR2019-00064 (Patent 8,553,935 B2)
IPR2019-00065 (Patent 8,553,935 B2)
IPR2019-00085 (Patent 8,553,935 B2)
14
elapsed between the filings of multiple petitions directed to the same claims
of the same patent.” General Plastic, slip op. at 16.
Patent Owner argues that Valve and HTC are similarly situated parties
sued at the same time and involved in the same accused “VIVE devices,”
and, therefore, there is no justification for it having waited for the Board’s
institution decision in the 1032 IPR other than to use that IPR as a test case.
Prelim. Resp. 10–11. Valve responds that the timing of its Petition was
dictated by the Federal Circuit’s decision in Click-to-Call Technologies, LP
v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018). Reply 1–2. Valve argues
that, under the Board’s established practice, the voluntary dismissal of a
district court complaint without prejudice tolled the one-year deadline for
requesting an inter partes review under § 315(b). Id. at 2. Valve contends
that, as a result, it “had no intention of filing any IPR petitions” after its
dismissal from the District Court litigation. Id. According to Valve, Click-
to-Call changed the Board’s practice by holding that the voluntary dismissal
of a district court complaint without prejudice does not toll the one-year
deadline under § 315(b). Id. Thus, after Click-to-Call, Valve “immediately
began preparing its own petitions”—including analyzing prior art and
retaining an expert—“to avoid a bar if [Patent Owner] later alleged
infringement.” Id. Valve states that it pursued other grounds of
unpatentability despite the Board’s institution of the 1032 IPR. Id.
We determine that the fourth and fifth General Plastic factors weigh
against institution for reasons similar to those discussed in Valve I. The
Click-to-Call decision may have prompted Valve to file the Petition before

IPR2019-00064 (Patent 8,553,935 B2)
IPR2019-00065 (Patent 8,553,935 B2)
IPR2019-00085 (Patent 8,553,935 B2)
15
the deadline under § 315(b),3 but it does not excuse the five-month delay
between the filing of HTC’s petition and Valve’s Petition. As discussed
above, Valve could have found the prior art asserted in its Petition through
the exercise of reasonable diligence at or around the time of HTC’s petition.
As also discussed above, Valve was a co-defendant with HTC in the District
Court litigation and provides HTC with technology used in the accused
VIVE devices. As a licensor of technology incorporated in the accused
products, Valve’s interests are aligned closely with HTC’s interests, and
Valve could have filed its Petition at or around the same time as HTC. The
fact that Valve waited five months after HTC’s petition to file the Petition in
this case favors denying institution. If Click-to-Call had been decided
differently, and Valve had waited even longer to file the Petition, Valve’s
delay still would favor denying institution.
6. 	Factors Six and Seven
Under the sixth and seventh General Plastic factors, we consider “the
finite resources of the Board” and “the requirement under 35 U.S.C.
§ 316(a)(11) to issue a final determination not later than 1 year after the date
on which the Director notices institution of review.” General Plastic, slip
op. at 16. The sixth and seventh factors are efficiency considerations. Id. at
3 Valve also states it was “never served” (Reply 1), which, if true, would
mean there is no time bar against Valve however Click-to-Call had been
decided. This is also inconsistent with Valve’s rationale for having to file a
Petition when it did. See Reply 2 (“Valve filed its petitions because of the
Federal Circuit’s en banc decision.”). In any event, as explained below, the
issue is the five-month delay in filing, not what prompted it.

IPR2019-00064 (Patent 8,553,935 B2)
IPR2019-00065 (Patent 8,553,935 B2)
IPR2019-00085 (Patent 8,553,935 B2)
16
16–17; see also Trial Practice Guide Update4 9 (referenced at 83 Fed. Reg.
39,989 (Aug. 13, 2018)) (noting that the Director’s discretion under § 314(a)
is informed by 35 U.S.C. § 316(b), which requires “the efficient
administration of the Office, and the ability of the Office to timely complete
proceedings instituted under this chapter”).
We determine that the sixth and seventh General Plastic factors weigh
against institution for reasons similar and in addition to those discussed in
Valve I. In general, having multiple petitions challenging the same patent,
especially when not filed at or around the same time as in this case, is
inefficient and tends to waste resources. Here, Valve waited until after the
institution decision in the 1032 IPR, and then in addition to requesting
joinder to the 1032 IPR, filed not one but three additional petitions
challenging the ’935 Patent, without a substantial explanation of why such
additional challenges are necessary given the 1032 IPR.
Furthermore, we note that the efficient administration of the Office is
particularly implicated on these facts because there is an ongoing proceeding
that includes Valve and that will address all claims of the ’935 patent.
Having the Office address one set of challenges in the 1032 IPR on its
procedural schedule (which Valve agreed to follow) and these three petitions
on their own procedural schedule, which Valve seeks here, is an inefficient
use of resources.
Finally, if a final decision in the 1032 IPR issues, Patent Owner may
argue that Valve should be estopped from “maintain[ing] a proceeding
4 Available at https://go.usa.gov/xU7GP.

IPR2019-00064 (Patent 8,553,935 B2)
IPR2019-00065 (Patent 8,553,935 B2)
IPR2019-00085 (Patent 8,553,935 B2)
17
before the Office” with respect to the challenged claims on some or all of the
grounds in these follow-on petitions. See 35 U.S.C. § 315(e)(1).
Specifically, § 315(e)(1) states that “[t]he petitioner in an inter partes
review of a claim in a patent under this chapter that results in a final written
decision under section 318(a) . . . may not request or maintain a proceeding
before the Office with respect to that claim on any ground that the petitioner
raised or reasonably could have raised during that inter partes review.”
Because we granted Valve’s request to join the 1032 IPR, Valve is now a
petitioner in the 1032 IPR. Thus, if the 1032 IPR results in a final written
decision, Patent Owner may argue that Valve reasonably could have raised
at least some of the grounds in these petitions by requesting joinder of such
grounds to the 1032 IPR.5 See Apple Inc. v. Papst Licensing GmbH, Case
IPR2016-01860, slip op. at 7–9 (PTAB Jan. 10, 2018) (Paper 28)
(terminating the proceeding because petitioner was estopped by virtue of
being joined to a previous proceeding from which a final decision issued);
Parallel Networks Licensing, LLC v. Int’l Bus. Machs. Corp., Case No.
1:13-cv-2072, 2017 WL 1045912, at *11–12 (D. Del. Feb. 22, 2017)
(holding that estoppel applies to prior art that party was aware of but did not
include in a petition when joining an ongoing IPR).
These serial and repetitive attacks implicate the efficiency concerns
underpinning General Plastic and, thus, favor denying institution. Given the
additional circumstances here, including the ongoing 1032 IPR proceeding
5 To be clear, we need not decide here whether estoppel would apply at some
point in the future, but merely point out that if we instituted review in some
or all of these proceedings, a collateral dispute on estoppel is a real
possibility.

IPR2019-00064 (Patent 8,553,935 B2)
IPR2019-00065 (Patent 8,553,935 B2)
IPR2019-00085 (Patent 8,553,935 B2)
18
on its own procedural schedule and also the possibility of an estoppel issue,
the efficiency concerns underpinning General Plastic weigh even more
strongly than in Valve I in favor of denying institution.
7. 	Summary
As discussed above, the evidence of record shows that all the General
Plastic factors weigh against institution. As a result, we determine that it is
appropriate to exercise our discretion under § 314(a) to deny institution.
III. 	CONCLUSION
For the forgoing reasons, we exercise our discretion under § 314(a) to
deny institution of inter partes review.
IV. 	ORDER
It is hereby
ORDERED that the petitions are denied, and an inter partes review is
not instituted.

IPR2019-00064 (Patent 8,553,935 B2)
IPR2019-00065 (Patent 8,553,935 B2)
IPR2019-00085 (Patent 8,553,935 B2)
19
For PETITIONER:
Brian C. Nash
PILLSBURY WINTHROP SHAW PITTMAN LLP
brian.nash@pillsburylaw.com
Reynaldo C. Barcelo
BARCELO, HARRISON & WALKER, LLP
rey@bhiplaw.com
For PATENT OWNER:
Marek Alboszta
marek@patentsafari.com