EXHIBIT M 

Patent Owner Preliminary Response submitted by 

Carnival in IPR2021-00783, concerning U.S. Patent 

10,157,514 

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UNITED STATES PATENT AND TRADEMARK OFFICE 

BEFORE THE PATENT TRIAL AND APPEAL BOARD 

DECURTIS LLC, 

Petitioner, 

v. 

CARNIVAL CORPORATION, 

Patent Owner 

Case No. IPR2021-00783 

U.S. Patent No. 10,157,514 

CARNIVAL CORPORATION’S PATENT OWNER 

PRELIMINARY RESPONSE 

PURSUANT TO 35 U.S.C. § 313 AND 37 C.F.R. § 42.107 

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TABLE OF CONTENTS

Page

i

I. INTRODUCTION ................................................................................ 1

II. BACKGROUND .................................................................................. 3

A. Carnival Develops and Introduces the OCEAN® 

Platform, Garnering Widespread Acclaim................................. 3

B. The Inventions of the ’514 Patent .............................................. 5

C. Years After Carnival’s Inventions, Petitioner Markets its 

Own System by Claiming that Mobile BLE Beacons 

were “New” and “Inverted the Traditional Model” ................... 8

D. The District Court Proceedings ................................................ 10

III. THE PETITION FAILS TO ESTABLISH A REASONABLE 

LIKELIHOOD OF SUCCESS OF INVALIDATING THE 

CHALLENGED CLAIMS ................................................................. 14

A. Ground 1 Fails Because Soleimani, Alone or in View of 

Yuen, Does Not Disclose or Render Obvious Key 

Aspects of the Invention of Claim 11 ...................................... 15

B. Ground 2 Fails Because of a Lack of Motivation to 

Combine and Because of Missing Elements in the 

Combined Device ..................................................................... 23

C. Ground 3 Fails Because the Alleged Motivation to 

Combine Is Insufficient ............................................................ 25

D. Ground 4 Fails Because Raina Does Not Disclose the 

Claimed Private Identifier of Claim 11 and Because 

Motivation to Combine Raina and Yuen Is Insufficient .......... 28

IV. THE PETITION SHOULD BE DENIED IN THE 

DISCRETION OF THE DIRECTOR UNDER 35 U.S.C. § 

314(a) .................................................................................................. 30

A. Whether the court granted a stay or evidence exists that 

one may be granted if a proceeding is instituted ..................... 32

B. Proximity of the court’s trial date to the Board’s 

projected statutory deadline for final written decision ............ 34

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TABLE OF CONTENTS

(continued) 

Page

ii

C. Investment in the parallel proceeding by the court and the 

parties and petitioner’s delay in filing the petition .................. 36

D. Overlap between issues raised in the petition and the 

parallel proceeding ................................................................... 42

E. Whether the petitioner and the defendant in the parallel 

proceeding are the same party .................................................. 44

F. Other circumstances that impact the Board’s exercise of 

discretion, including the merits ................................................ 45

V. CONCLUSION .................................................................................. 49

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TABLE OF AUTHORITIES 

 Page(s) 

Cases 

Apple Inc. v. Fintiv, Inc., 

IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ..................................passim

Apple v. Fintiv, 

No. IPR2020-00019, Paper 15, 12-13 (P.T.A.B. May 13, 2020) ........... 34, 35, 37 

Carnival Corp. v. DeCurtis Corp. et al., 

No. 1:20-cv-21547, Dkt. No. 1 (S.D. Fla. April 10, 2020) ................................ 11 

Carnival Corp. v. DeCurtis Corp., 

No. 20-21547, Dkt. No. 15 ................................................................................. 39 

Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 

246 F.3d 1336 (Fed. Cir. 2001) .......................................................................... 38 

Cuozzo Speed Techs., LLC v. Lee, 

136 S. Ct. 2131 (2016) ........................................................................................ 31 

DeCurtis LLC v. Carnival Corp., 

No. 6:20-cv-00607 (M.D. Fla. Apr. 8, 2020), Dkt. No. 1 .............................. 1, 11 

DeCurtis LLC v. Carnival Corporation, 

No. 1:20-cv-22945 (S.D. Fla.) .....................................................................passim

Douglas Dynamics, LLC v. Meyer Prods. LLC, 

No. 14-cv-886-jdp, 2017 WL 1382556 (W.D. Wis. Apr. 18, 2017) .................. 48 

Epic Games, Inc. v. Acceleration Bay LLC, 

No. 4:19-CV-04133-YGR, 2020 WL 1557436 (N.D. Cal. Apr. 1, 

2020) ................................................................................................................... 48 

Google, LLC v. Personalized Media Commc’ns, 

No. IPR2020-00720, 2020 WL 6530766 (P.T.A.B. Nov. 5, 2020) .................... 40 

Mylan Lab’ys Ltd. v. Janssen Pharmaceutica Nv, 

No. IPR2020-00440, 2020 WL 5580472 (P.T.A.B. Sept. 16, 2020) ................. 33 

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NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., 

IPR2018-00752, Paper 8 (P.T.A.B. Sept. 12, 2018)............................... 31, 40, 44 

Pers. Web Techs., LLC v. Apple, Inc., 

848 F.3d 987 (Fed. Cir. 2017) ................................................................ 21, 24, 26 

Sand Revolution II, LLC v. Continental Intermodal Group – Trucking 

LLC, 

IPR2019-01393, Paper 24 (June 16, 2020) ......................................................... 42 

SAS Inst. Inc. v. Iancu, 

138 S. Ct. 1348 (2018) ........................................................................................ 31 

Sotera Wireless, Inc. v. Masimo Corp., 

IPR2020-01019, Paper 12 (December 1, 2020) ................................................. 42 

Therasense, Inc. v. Becton, Dickinson & Co., 

649 F.3d 1276 (Fed. Cir. 2011) .......................................................................... 47 

Totes-Isotoner Corp. v. United States, 

594 F.3d 1346 (Fed. Cir. 2010) .......................................................................... 47 

WesternGeco LLC v. ION Geophysical Corp., 

889 F.3d 1308 (Fed. Cir. 2018) .......................................................................... 47 

Statutes 

35 U.S.C. §101 ................................................................................................... 12, 37 

35 U.S.C. §102 ....................................................................................... 40, 43, 44, 47 

35 U.S.C. §103 ......................................................................................................... 47 

35 U.S.C. §271(f) ..................................................................................................... 12 

35 U.S.C. § 314(a) ............................................................................................. 30, 31 

35 U.S.C. § 314(b)(1)......................................................................................... 34, 35 

35 U.S.C. § 315(a)(1) ......................................................................................... 46, 48 

35 U.S.C. § 316(a)(11) ....................................................................................... 34, 35 

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LISTING OF EXHIBITS 

EXHIBIT 

NO. 

DESCRIPTION 

2001 Complaint, DeCurtis LLC v. Carnival Corp., No. 6:20-cv-00607 

(M.D. Fla. Apr. 8, 2020) (Dkt. No. 1)

2002 Report and Recommendation on Carnival’s Motion to Dismiss, 

DeCurtis LLC v. Carnival Corp., No. 1:20-cv-22945 (S.D. Fla. Feb. 

9, 2021) (Dkt. No. 128)

2003 Order re Magistrate Judge’s Reports and Recommendations as to 

Motions to Dismiss, DeCurtis LLC v. Carnival Corp., No. 1:20-cv22945 (S.D. Fla. Apr. 20, 2021) (Dkt. No. 144)

2004 Order on Pending Motions to Compel, DeCurtis LLC v. Carnival 

Corp., No. 1:20-cv-22945 (S.D. Fla. June 17, 2021) (Dkt. No. 163)

2005 Carnival Corporation’s CEO Arnold Donald Unveils GameChanging Guest Experience Platform in Historic Keynote Address 

at CES 2017 (Jan. 2017)

2006 Intentionally left blank

2007 Carnival Corporation’s OceanMedallionTM Named IoT Wearables 

Innovation of the Year (Jan. 8, 2019)

2008 Fast Company Ranks Carnival Corporation as a Most Innovative 

Company for 2017

2009 Carnival Corporation Recognized as CES 2019 Innovation Awards 

Honoree for OceanMedallion (Nov. 8, 2018)

2010 Carnival’s tiny Ocean Medallion wearable brings tech luxury to 

cruise ships (May 23, 2019)

2011 Intentionally left blank

2012 How Carnival revolutionized its guest experience with super-smart 

tech (Jan. 8, 2017)

2013 Notice of Allowance, U.S. Application Serial No. 15/460,983 

(Sept. 5, 2018)

2014 DeCurtis Corporation, The Wayback Machine – 

https://web.archive.org/web/20180829040951/http://www.decurtis.c

om:80/ble

2015 Complaint, Carnival Corporation v. DeCurtis Corporation etal., 

No. 1:20-cv-21547 (S.D. Fla. Apr. 10, 2020) (Dkt. No. 1)

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EXHIBIT 

NO. 

DESCRIPTION 

2016 Order Consolidating Related Cases, DeCurtis LLC v. Carnival 

Corporation, No. 1:20-cv-22945, (S.D. Fla. July 29, 2020) (Dkt. 

No. 40)

2017 Order Consolidating Related Cases, DeCurtis LLC v. Carnival 

Corporation, No. 1:20-cv-21547 (S.D. Fla. July 29, 2020) (Dkt. No. 

48)

2018 Report and Recommendation on DeCurtis’s Motion to Dismiss, 

DeCurtis LLC v. Carnival Corporation, No. 1:20-cv-22945, (S.D. 

Fla. Jan. 6, 2021) (Dkt. No. 120)

2019 Order on Carnival’s Motion for Leave to Amend Infringement 

Contentions, DeCurtis LLC v. Carnival Corporation, No. 1:20-cv22945, (S.D. Fla. Feb. 10, 2021) (Dkt. No. 129)

2020 Order on DeCurtis’s Motion to Amend a Protective Order, DeCurtis 

LLC v. Carnival Corporation, No. 1:20-cv-22945, (S.D. Fla. Jan. 5, 

2021) (Dkt. No. 119)

2021 Scheduling Order and Order of Referral to Mediation, DeCurtis 

LLC v. Carnival Corporation, No. 1:20-cv-22945, (S.D. Fla. Sept. 

14, 2020) (Dkt No. 73)

2022 [Proposed] Order re Discovery Disputes and Modified Scheduling 

Order, DeCurtis LLC v. Carnival Corporation, No. 1:20-cv-22945, 

(S.D. Fla. Apr. 30, 2021) (Dkt. 154-1) 

2023 Order Requiring Discovery and Scheduling Conference and 

Referring Discovery Matters to Magistrate Judge, DeCurtis LLC v. 

Carnival Corporation, No. 1:20-cv-22945, (S.D. Fla. July 23, 2020) 

(Dkt. No. 44)

2024 Carnival’s Motion to Modify the Scheduling Order, DeCurtis LLC 

v. Carnival Corporation, No. 1:20-cv-22945, (S.D. Fla. July 9, 

2021) (Dkt. No. 166) 

2025 Hearing Transcript, DeCurtis LLC v. Carnival Corporation, No. 

1:20-cv-22945, (S.D. Fla. Oct. 22, 2020) (Dkt. No. 93)

2026 Hearing Transcript, DeCurtis LLC v. Carnival Corporation, No. 

1:20-cv-22945, (S.D. Fla. Jan. 7, 2021) (Dkt. No. 123)

2027 Hearing Transcript, DeCurtis LLC v. Carnival Corporation, No. 

1:20-cv-22945, (S.D. Fla. Apr. 9, 2021) (Dkt. No. 143)

2028 Return of Service, Carnival Corp. v. DeCurtis Corp., No. 1:20-

21547, (S.D. Fla. Apr. 21, 2021) (Dkt. No. 15)

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EXHIBIT 

NO. 

DESCRIPTION 

2029 Non-Infringement, Unenforceability, and Invalidity Contentions of 

DeCurtis LLC and DeCurtis Corporation, DeCurtis LLC v. Carnival 

Corporation, No. 1:20-cv-22945, (S.D. Fla. Apr. 30, 2021) (Dkt. 

No. 153-4)

2030 DeCurtis’s Motion to Amend Protective Order, DeCurtis LLC v. 

Carnival Corporation, No. 1:20-cv-22945, (S.D. Fla. Sept. 25, 

2020) (Dkt. No. 77)

2031 DeCurtis Answer to Second Amended Complaint, DeCurtis LLC v. 

Carnival Corporation, No. 1:20-cv-22945, (S.D. Fla. May 3, 2021) 

(Dkt. No. 155)

2032 First Amended Complaint, DeCurtis LLC v. Carnival Corporation, 

No. 1:20-cv-22945, (S.D. Fla. Oct. 21, 2020) (Dkt. No. 87)

2033 U.S. Pat. Pub. No. 2007/0060056A1, to Whitaker, et al.

2034 U.S. Pat. Pub. No. 2017/0142660A1, to Chatterton, et al.

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I. INTRODUCTION 

The half-truths in the Petition’s Introduction reveal this much: the Petition, 

along with the two others Petitioner (“DeCurtis”) filed, is not about invalidating an 

allegedly invalid patent but instead is about pursuing as many parallel proceedings 

as possible against Patent Owner (“Carnival”). Over a year ago, Petitioner filed a 

declaratory judgment action asserting an unenforceability claim against the ’514 

Patent based on a prior art invalidity argument: that the Patent’s claims were 

invalid over prior art purportedly withheld from Patent Office. That is, Petitioner 

chose to initiate litigation between the parties, in district court, by putting at issue 

whether patent claims “that the applicants asserted as valid against the prior art” in 

fact claimed “precisely the invention embodied in” prior art. Ex. 2001 (Compl., 

DeCurtis LLC v. Carnival Corp., No. 6:20-cv-00607 (M.D. Fla. Apr. 8, 2020), 

Dkt. No. 1) ¶ 80. 

Petitioner’s purported basis for filing that lawsuit is that Carnival “began to 

improperly threaten both Petitioner and its new customers with baseless 

infringement claims, including [of] the specific patent challenged in this Petition.” 

Pet. at 1. Two Federal judges already have found otherwise. A U.S. Magistrate 

Judge examined Petitioner’s allegations and found that Petitioner 

“mischaracterizes the content” of Carnival’s communications with Petitioner and 

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its customers. Ex. 2002 (Dkt. No. 128) at 15.1 Carnival “merely describe[d] 

Carnival’s investments in developing its own technology and then reference[d] its 

growing patent portfolio. Nothing suggests that Carnival intends to enforce any 

intellectual property rights in connection with all of these patents.” Id. at 19. A 

U.S. District Court Judge adopted this ruling. Ex. 2003 (Dkt. No. 144). In truth, 

Carnival was not threatening anyone; it was investigating whether Petitioner (its 

former contractor) has misused Carnival’s technology; Petitioner filed suit to try to 

deter Carnival from protecting Carnival’s rights. 

After filing suit, Petitioner then sat on its hands and waited an entire year 

(almost to the day) to file this duplicative IPR Petition asserting the same prior art 

that Petitioner had identified in its district court invalidity contentions over five 

months earlier. In an apparent effort to avoid discretionary denial of this Petition, 

Petitioner sought to cause delays in the district court case schedule by withholding 

its technical document production required under the court’s patent rules, so that 

Petitioner could then claim (incorrectly) that “the district court has invested 

virtually no time in assessing the parties’ claims and defenses.” Pet. at 80. The 

1

 Unless indicated otherwise, all “Dkt.” references herein are to the currently 

pending, consolidated Southern District of Florida action, DeCurtis LLC v. 

Carnival Corporation, No. 1:20-cv-22945 (S.D. Fla.) (the “Florida Litigation”). 

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district court recently put a stop to this behavior by entering an order compelling 

Petitioner to produce these documents, along with many other categories of 

documents and discovery that Petitioner has been withholding, which will allow 

the parallel district court case to proceed expeditiously to trial. Ex. 2004 (Dkt. No. 

163) at 3-19. 

Both parties already chose the district court as the forum to litigate the 

validity and infringement of the ’514 Patent. Petitioner’s decision to try again in 

the PTAB a year later, and to manipulate the procedural processes in the district 

court litigation that Petitioner initiated to try to litigate validity in parallel in both 

the PTAB and district court, is exactly what the IPR statutes and this Board’s 

precedent (in the Fintiv decision among others) were designed to prevent. 

The Petition also falls short on merit. Although Petitioner asserts four 

grounds against the same claim, each ground fails due to a missing claim element 

and/or inadequate motivation to combine the references. 

The Petition should be denied on the merits, on discretionary grounds, or 

both. 

II. BACKGROUND 

A. Carnival Develops and Introduces the OCEAN® Platform, 

Garnering Widespread Acclaim 

Carnival is the world’s largest and leading cruise vacation company. It also 

is the creator and owner of a ground-breaking technology platform known as the 

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One Cruise Experience Access Network®, also referred to as the O.C.E.A.N.TM or 

OCEAN® Platform. OCEAN® combines a first-of-its-kind wearable device 

(OceanMedallionTM or Medallion®) with a network of servers, sensors, readers, 

and software to deliver unparalleled guest engagement and personal service to 

guests on Carnival’s MedallionClassTM ships. Carnival began development on 

what became the OCEAN® Platform in 2014. The project required an enormous 

investment of financial resources and human capital over several years. 

In January 2017, Carnival’s CEO, Arnold Donald, made history as the first 

travel industry executive to deliver the opening keynote at CES, the world’s largest 

consumer technology event. He used his speech to announce the OCEAN® 

Platform. Ex. 2005. Carnival’s OCEAN® Platform, enabled by the 

OceanMedallionTM wearable, facilitates payment, shipboard wayfinding, shipmate 

location services, personalized itineraries, expedited embarkation, state room 

access without a key card, and a wide range of on-demand services. The 

OCEAN® Platform debuted on a cruise ship in November 2017 and has since been 

installed on several other ships of Carnival’s Princess Cruises brand. 

Carnival’s willingness to invest heavily in its vision and to undertake risks to 

remain a technology leader has resulted in widespread acclaim. Accolades for the 

OCEAN® Platform have poured in. IoT Breakthrough awarded Carnival the 2019 

IoT Wearables Innovation of the Year for the OceanMedallionTM. Ex. 2007. 

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FastCompany magazine named Carnival as one of the world’s most innovative 

companies, citing the introduction of OceanMedallionTM. Ex. 2008. The 

OceanMedallionTM garnered a 2019 CES Innovations Award Honor. Ex. 2009. 

One early reviewer described use of the OceanMedallionTM as “a magical 

experience that foretells the way that the internet of things ought to work.” Ex. 

2010. Articles gushed that Carnival had “revolutionized” the guest experience 

with “super-smart tech.” Ex. 2012. 

Carnival recognized that its OCEAN® Platform innovations included 

patentable inventions, and accordingly, Carnival applied for and obtained patent 

protection for this valuable intellectual property, beginning with the filing of 

provisional patent applications in November and December 2016. So far, seven 

U.S. patents have issued in this family, including the ’514 Patent. 

B. The Inventions of the ’514 Patent 

The ’514 Patent teaches and claims a novel portable wireless device for use 

in a guest engagement system where portable devices serving as beacons 

communicate with a networked, sensor-rich environment to enhance the guest 

experience. The ’514 Patent confronts technical problems facing the inventors that 

resulted in “interactions between hosts and guests [being] impersonal and 

disjointed.” ’514 Patent, 1:46-47. By overcoming those constraints through the 

creation of a novel and non-obvious device/system, the inventors enabled various 

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technical improvements over prior art systems, including: (1) an improved beaconcentric model of communication to the environment, (2) relocation of demanding 

computation-intensive resources, (3) a new and superior user interface, (4) 

improved battery life and power consumption, and (5) an improved location 

determination system particularly suited for environments such as a cruise ship. In 

short, the ’514 Patent reveals a paradigm-shifting approach to guest engagement 

system design. 

Prior to the invention, almost every type of interaction in conventional 

systems of the type described in the ’514 Patent’s background required a different 

form of communication, identity recognition, or authentication process. See ’514 

Patent, 1:36-47 (noting that prior art systems provided service and engagement on 

the basis of users providing a name or identification, tapping or swiping an access 

card, or having information on bookings retrieved manually by a host through a 

computer terminal). To the extent devices were used to permit access, e.g., an 

access card for a locked door, guests using those devices were required to 

affirmatively present such credentials prior to gaining access. Id.

At the time of the inventions, there had been efforts to leverage Bluetooth 

Low Energy (“BLE”) to improve guest engagement systems that focused on 

utilizing stationary objects as BLE beacons that continually broadcast signals to 

any devices containing sensors that might happen to come within communication 

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range of the beacon. Carnival’s inventors recognized that this model would not be 

suited to address Carnival’s unique vision for an unprecedented immersive guest 

engagement system, which requires automated location services enabled by many 

thousands of points of reference aboard a moving cruise ship. 

The ’514 Patent’s claimed inventions differ from, and are an important 

advance over, any such stationary BLE beacon systems: they flip the entire frame 

of refence by making the sensors stationary and the beacons mobile. See, e.g., id.

at 23:12-18 (“Each sensor 15 has a known location, and the sensors 15 in the 

network 13 are used to track the locations of [portable] medallions 11 in the 

facility . . . .”). This arrangement is captured in the claims. For example, the sole 

challenged claim 11 of the ’514 Patent requires a portable wireless device

comprising, among others, a processor that (i) “controls [a] first wireless 

communication antenna to emit a periodic beacon signal broadcasting [a] unique 

public identifier of the portable wireless device using BLE [Bluetooth low energy] 

communications”; and (ii) “controls the first wireless communication antenna to 

transmit [a] private identifier only across secure communication links established 

with remote communication devices using BLE communications.” Id. at 41:51-58 

During prosecution of the ’514 Patent, the examiner considered over 170 

patent and non-patent references, and determined that the prior art failed to teach 

or suggest the entirety of the claimed device—the recited portable BLE beacon 

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model combined with the additional aspects of the device identified in the 

preceding paragraph. Ex. 2013 (Sep. 5, 2018 Notice of Allowability) at 4 (pending 

claim 59). 

The ’514 Patent addresses shortcomings of the conventional systems and 

solves problems related to location determination, configuration needs, deployment 

speed, data access, and security. The ’514 Patent’s technical improvements, in 

turn, enable accurate wayfinding and location determination in an environment 

such as a cruise ship (’514 Patent, 33:45-34:46), more efficient and secure room 

access (id. at 17:25-44), more efficient and secure payment (id. at 32:59-33:44), 

and improved and more efficient power consumption while balancing the need for 

secure communication by portable devices with the need to conserve power (id. at 

16:5-29, 16:50-65). 

C. Years After Carnival’s Inventions, Petitioner Markets its Own 

System by Claiming that Mobile BLE Beacons were “New” and 

“Inverted the Traditional Model” 

Petitioner has expressly acknowledged that the model for arranging beacon 

and sensor system components, as described and claimed in the ’514 Patent, was 

not a conventional solution, and that such a model departed significantly from any 

conventional systems. In 2018—years after Carnival filed patent applications 

describing its inventive concepts—Petitioner began marketing its own services by 

touting the same arrangement of components described and claimed in the ’514 

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Patent as “where the magic really happens.” Ex. 2014 at 3. Petitioner claimed that 

“[b]eacons had, thus far, been the stationary object.” Id. Petitioner dismissed the 

idea of improving a system that used stationary BLE beacons as merely “enabling 

your environment to shout more accurately.” Id.

Instead, Petitioner claimed its “ground-breaking work” in “invert[ing] the 

traditional model,” and touted a “new” model of “tethering people to beacons” so 

that “your environment can respond intelligently to those people that are present” 

in a way that existing systems could not. Id. Petitioner claimed (in 2018) to be 

“introducing the concept of a wearable” that “contains a small beacon.” Id. at 5. 

Petitioner identified benefits that were made possible by this inverted model: 

“making every experience better, more efficient, more human, more informed, 

more enjoyable and more profitable.” Id. at 4. 

Thus, when it suited Petitioner’s business needs, the concepts embodied in 

the claims of the ’514 Patent were novel and unique and enabled meaningful 

technical improvements compared to the state-of-the-art (even in 2018). Faced 

with litigation over patents covering these “new” and “novel” concepts, Petitioner 

now sings a different tune, claiming that because the patented inventions are 

implemented using “pre-existing communication standards” like BLE, the patent is 

“vastly overbroad” and covers merely “well-known and obvious technologies.” 

Pet. at 1-2. 

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D. The District Court Proceedings 

Petitioner was one contractor (of many) hired by Patent Owner to assist with 

rapid prototyping work related to the OCEAN® Platform. Given the recognition 

and success Carnival achieved with the OCEAN® Platform, it is unsurprising that 

others, including Carnival’s competitors in the cruise industry, sought to follow 

suit. Petitioner began marketing its “DXP” system to Carnival’s competitors. 

Carnival eventually learned of this and was concerned that Petitioner had misused 

Carnival’s confidential and proprietary information to develop its DXP system, 

based on public reports about the technology Petitioner was implementing for 

cruise companies NCL and Virgin Voyages. Carnival thus sought more 

information, including exercising its right under the parties’ contract to audit 

Petitioner’s records. Petitioner refused to comply with its audit obligation. Instead, 

without warning, Petitioner initiated litigation against Carnival. 

On April 8, 2020, Petitioner filed a complaint in the Middle District of 

Florida seeking declaratory judgments of noninfringement of non-infringement of 

five Carnival patents and unenforceability of seven Carnival patents, including 

U.S. Patent Nos. 10,045,184, 10,157,514, and 10,049,516 (respectively, the ’184, 

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’514, and ’516 Patents), along with other claims.2 Ex. 2001 (DeCurtis LLC v. 

Carnival Corp., No. 6:20-cv-00607, Dkt. No. 1 (M.D. Fla. April 8, 2020)). Two 

days later, Carnival filed a complaint in the Southern District of Florida for breach 

of contract, trade secret misappropriation, and infringement of the ’184, ’514, and 

’516 Patents. Ex. 2015 (Carnival Corp. v. DeCurtis Corp. et al., No. 1:20-cv21547, Dkt. No. 1 (S.D. Fla. April 10, 2020)). Petitioner’s declaratory judgment 

action was transferred to the Southern District of Florida and the two actions were 

consolidated. Exs. 2016, 2017 (DeCurtis LLC v. Carnival Corp., No. 1:20-cv22945, Dkt. Nos. 40, 48 (S.D. Fla.)). 

In the over fifteen months of litigation, the Southern District of Florida has 

made several substantive rulings in the case. These rulings are relevant to the 

Board’s consideration of discretionary denial, discussed further below in Section 

IV: 

 Magistrate Judge Torres (to whom all pretrial matters have been referred) 

issued a 40-page ruling on Petitioner’s motion to dismiss Carnival’s complaint. 

Ex. 2018 (Dkt. No. 120). Of note, Judge Torres analyzed Petitioner’s argument that 

2

 At the same time it filed the instant Petition, Petitioner filed Petitions challenging 

claims of the ’184 and ’516 Patents. Case Nos. IPR2021-00782 and IPR2021-

00784. 

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each claim of the ’184 Patent failed to claim patent-eligible subject matter under 35 

U.S.C. §101. Id. at 20-28. Judge Torres considered Petitioner’s detailed arguments 

as to whether the patent claims were directed to an abstract idea and whether they 

recited an inventive concept, concluding that Petitioner’s motion to dismiss must 

be denied. Id. Judge Torres also examined patent law issues regarding whether 

the operative complaint stated a claim for induced infringement, contributory 

infringement, and infringement under 35 U.S.C. §271(f). Id. at 28-38. 

 Judge Torres also issued a 58-page ruling on Carnival’s motion to dismiss 

Petitioner’s complaint. Ex. 2002 (Dkt. No. 128). This ruling also involved the ’514 

Patent. Judge Torres considered whether Petitioner had established subject-matter 

jurisdiction over its declaratory judgment claims, including its claims directed to 

the ’514 Patent, and determined that Petitioner had not. Id. at 6-22. As noted in the 

Introduction, Judge Torres found that Petitioner has “mischaracterize[d]” 

Carnival’s pre-litigation communications with Petitioner and its customers. Id. at 

15, 21. Judge Torres also considered, in detail, motions to dismiss Petitioner’s 

unenforceability claims. Judge Torres found that Petitioner had failed to state 

claims for prior-art based fraud (id. at 22-28) but allowed Petitioner’s claims for 

fraud based on allegedly improper inventorship to proceed (id. at 28-36). Finally, 

Judge Torres’s rulings on Petitioner’s tort and antitrust claims also turned largely 

on patent issues, including the patent privilege doctrine. Id. at 36-47. 

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 District Court Judge Scola then considered the parties’ objections to Judge 

Torres’s rulings on the motions to dismiss, and issued his own ruling adopting 

(with modifications) Judge Torres’s rulings. Ex. 2003 (Dkt. No. 144). Judge Scola 

conducted his own de novo review of all the issues summarized above. Id. at 3. 

Judge Scola also noted that Judge Torres’s review of the issues had been 

“thorough,” “comprehensive and all-encompassing.” Id. at 3, 6, 7. 

 Judge Torres further considered issues related to the ’514 Patent in granting 

Carnival’s contested motion for leave to amend its infringement contentions in a 

13-page ruling. Ex. 2019 (Dkt. No. 129). 

 Judge Torres also issued a 28-page ruling on DeCurtis’s motion to amend 

the protective order to add a prosecution bar provision specifically addressing 

whether Carnival’s litigation counsel could participate in amending claims in an 

IPR if DeCurtis filed an IPR, the IPR were instituted, and Carnival then sought to 

amend claims. Ex. 2020 (Dkt. No. 119). As explained further below in the section 

discussing discretionary denial, the fact that DeCurtis filed this motion in 

September 2020, after raising the issue months earlier, reveals that DeCurtis has 

intended to file IPR petitions all along and just waited until the last moment for 

tactical advantage. 

 Finally, Judge Torres has invested substantial time in addressing discovery 

disputes related to the patent issues in the case, holding four hearings and 

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eventually issuing a 31-page order on motions to compel discovery. Evidently 

seeking to delay the district court proceeding to tip the Fintiv scale in its favor for 

the IPR petitions, Petitioner had unreasonably refused discovery in response to 

Patent Owner’s legitimate requests, including refusing to produce the core 

technical documents on the schedule required by the District Court’s patent rules 

(which, as in most courts, requires early production of such documents). This 

forced Carnival to move to compel discovery. Judge Torres ruled in favor of 

Carnival on most disputed issues and ordered Petitioner to produce technical 

documents, source code information, communications with third parties, 

advertising and marketing materials, documents listed on a “trade secret log,” and 

amended responses to certain interrogatories. Ex. 2004 (Dkt. No. 163).

III. THE PETITION FAILS TO ESTABLISH A REASONABLE 

LIKELIHOOD OF SUCCESS OF INVALIDATING THE 

CHALLENGED CLAIMS 

As explained below, Petitioner is using the IPR process as a “second bite at 

the apple” after challenging the validity of Carnival’s patents in district court. See 

infra § IV.FError! Reference source not found.. Worse yet, against the ’514 

Patent, Petitioner wants four extra bites at the apple and asserts four different 

grounds against the same claim. But as explained below, all of the four grounds 

are missing key aspects of the invention disclosed in claim 11 of the ’514 Patent. 

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Petitioner did not establish a reasonable likelihood that claim 11 is invalid and thus 

its Petition should be denied.3

A. Ground 1 Fails Because Soleimani, Alone or in View of Yuen, 

Does Not Disclose or Render Obvious Key Aspects of the 

Invention of Claim 11 

Soleimani does not disclose the inventive, unconventional arrangement of 

the portable wireless device of claim 11, including all of the functionalities 

alongside the beacon feature and the private identifier. Further, Soleimani, alone 

or in view of Yuen, does not disclose or render obvious packaging the inventive 

assembly of components in the claimed form factor. 

1. Soleimani’s Device Does Not Comprise Elements of the 

Claimed Portable Wireless Device When Configured to 

Emit a Periodic Beacon 

Petitioner relies on Soleimani’s disclosure regarding RF communication unit 

214 — a stationary unit installed proximal to a secure door — for its arguments 

3 The cited prior art plainly fails to disclose or render obvious elements of ’514 

Patent claim 11, as shown below. Accordingly, Carnival need not detail every 

defect in the prior art and Petitioner’s arguments for purposes of this Preliminary 

Response. Carnival reserves the right to address additional deficiencies in the 

Petition in its Patent Owner Response if the Board institutes the Petition (which it 

should not).

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supposedly showing the claimed portable wireless device, which, among other 

aspects, is operative to emit a periodic beacon signal. See, e.g., Pet. at 26 

(“describing RF communication units transmitting advertisements using BLE 

. . . .”). The RF communication unit, however, is part of the access control unit 

210, which also comprises door and lock. Soleimani, 5:42-48. 

Although Soleimani briefly mentions a role reversal between the RF 

communication unit and the wireless mobile device, this role reversal is limited to 

the roles of the devices operating in BLE, i.e., whether the device operates as a 

BLE GAP Common or a BLE GAP Peripheral. Id. at 17:60-18:7. This role 

reversal does not mean, for example, that access control server would 

communicate with the wireless mobile device instead of the RF communication 

unit via a wired network. See id. at 4:51-56 (“access control server 110 

communicates with . . . RF communication unit 173 via wired network 150.”). 

Petitioner, however, ignores the limit of this role reversal. Consequentially, 

several of its arguments have no merit. 

First, this role reversal should be consistently applied to the BLE roles of the 

devices. With respect to claim elements 11[e][ii] and 11[g], Petitioner relies on an 

encrypted message 236 that the mobile device 230 of Soleimani transmits to the 

access control system “via BLE” to allegedly satisfy claim requirements that the 

portable wireless device transmits the private identifier. Pet. at 35, 38. But 

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because Petitioner relies on Soleimani’s teaching to reverse the BLE roles of the 

devices (id. at 33), the encrypted message 236 would be received by the mobile 

device 230 under Petitioner’s read. This is the opposite to the claim requirements 

that the portable wireless device stores and transmits a private identifier, which 

Petitioner alleges that the encrypted message 236 shows. See id. at 35, 38. 

Further, this role reversal does not expand to cover non-BLE protocols. 

Although Soleimani teaches that RF communication unit 214 may transmit RF 

advertisement using 802.11, RFID, or NFC protocol (Soleimani, 6:37-47), it does 

not teach or suggest role reversal of RF advertisement in these non-BLE protocols. 

Petitioner’s contrary assertion has no basis in Soleimani. See Pet. at 26-27 

(asserting “a POSITA would recognize the benefits of implementing Soleimani’s 

disclosed wireless communication device with at least one BLE antenna, and at 

least one NFC antenna” in the portable wireless device because Soleimani 

“describ[es] RF communication units transmitting advertisements using BLE, 

802.11, RFID, and NFC protocols”) (emphasis added). Petitioner’s assertion 

constitutes impermissible hindsight to contort Soleimani into the novel invention 

of the ’514 Patent. 

2. Soleimani’s Device Does Not Comprise the Claimed Private 

Identifier 

The portable wireless device of claim 11 comprises a processor controlling a 

wireless communication antenna to transmit a private identifier only across secure 

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communication links. Petitioner contradicts Soleimani’s teachings in its read of 

this limitation (11[g]). 

Specifically, contrary to Petitioner’s allegations, Soleimani does not disclose 

the claimed private identifier. Soleimani discloses some types of information that 

may be included in message 236, including identifiers, a time/date indicator, a 

function that the access control device is to perform, or RSSI (received signal 

strength indicator). Soleimani, 13:6-14. Soleimani further discloses that its mobile 

device may encrypt a portion of message 236 using an encryption key. Id. at 

12:67-13:6 (“Wireless mobile device 230 may be configured to encrypt one or 

more portions of message 236 . . . .”) (emphasis added). By teaching that the 

mobile device may encrypt some part of the message, Soleimani discloses that the 

message may be sent in clear text, i.e., without encryption. This does not meet the 

claim requirement that “the private identifier [is transmitted] only across secure 

communication links.” 

Because Soleimani’s identifiers may be transmitted without encryption, a 

POSITA would have understood them not to constitute private identifiers that are 

transmitted only across secure communication links. Faced with this deficiency of 

Soleimani, Petitioner makes a conclusory statement that, for the access control 

system to determine whether to grant access based on message 236, “the mobile 

device would have to communicate an identifier that is unique to the device to the 

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access panel so that the identifier could be compared to the door access 

information in the access control server 110.” Pet. at 36 (emphasis added) (arguing 

for obviousness with respect to a claim limitation requiring storage of a private 

identifier). Petitioner does not explain, however, why a unique private identifier 

has to be communicated to gain access. Indeed, Petitioner’s conclusory assertion 

is contradicted by Soleimani’s disclosure. Soleimani discloses that “access may be 

granted in response to successful decryption of the portion [of message 236] using 

the unique key or the decrypted data having a particular value or characteristics.” 

Soleimani, 13:21-23. But, as explained, Soleimani teaches that identifiers in 

message 236 need not be encrypted. Thus, access may be granted based on, for 

example, characteristics of a portion of message 236 not including any identifier. 

This disproves Petitioner’s conclusory assertion. 

3. Soleimani’s Device Does Not Comprise a Body of the 

Claimed Form Factor 

Petitioner refers to Soleimani’s disclosure that its wireless device “may be 

implemented in a keyfob form factor” three times to allege that Soleimani, alone or 

in combination with Yuen, renders obvious the requirements of claim element 

11[a]. Pet. at 21, 23, 24. Soleimani does not describe or explain what it means by 

“a keyfob form factor,” and neither does Petitioner. See id. But a keyfob can be 

“large” enough to “create an unsightly bulge in the pocket.” Ex. 2033 (U.S. Pat. 

Pub. No. 2007/0060056A1) ¶ [0004]. Thus, Petitioner’s unsupported assertion that 

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Soleimani’s keyfob discloses the dimensions of claim element 11[a] cannot be 

taken as true. Moreover, a keyfob “may include [a] hole 307 that extends from the 

one or more front surfaces . . . .” Ex. 2034 (U.S. Pat. Pub. No. 2017/0142660A1) 

¶ [0084]. 

Id., Fig. 8 (showing a hole 307 (annotated) on key fob 300). Thus, Soleimani’s 

keyfob, even if it necessarily “includes an enclosure to house electrical 

components” as Petitioner alleges, does not inherently or obviously satisfy the 

claim requirement of “a body having a fully enclosed cavity.” Pet. at 23, 40; see 

also id. at 25-27 (failing to address the requirement of claim element 11[b] that 

components be “disposed in the cavity”). 

Relatedly, Petitioner’s “obvious design choice” argument, even if it is taken 

as true, only addresses the dimension requirement of claim element 11[a]. See id.

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at 22 (concluding that “[a] POSITA would thus view the recited dimensions as 

obvious over Soleimani” based on the design-choice argument) (emphasis added). 

Thus, Soleimani does not disclose the required form factor of the portable 

wireless device. 

4. Petitioner’s Motivation to Combine Soleimani with Yuen 

for a Device of the Claimed Form Factor Fails Due to 

Faulty Reasoning 

Petitioner argues, in the alternative, that Soleimani modified according to 

Yuen would render obvious the requirements of claim element 11[a]. Pet. at 23-

25. Petitioner’s alleged motivation to combine fails, however, because of its faulty 

reasoning. 

Petitioner alleges a few reasons common to all grounds to combine the 

references. Id. at 19-21. These reasons include “the same field of endeavor,” 

“similar techniques to solve the same problems.” Id. at 19, 20. These reasons, 

however, at best “say no more than that a skilled artisan, once presented with the 

. . . references, would have understood that they could be combined.” Pers. Web 

Techs., LLC v. Apple, Inc., 848 F.3d 987, 993 (Fed. Cir. 2017) (emphasis in 

original). “And that is not enough.” Id. Indeed, if the references use “similar 

techniques to solve the same problems” as Petitioner alleges, it is not obvious why 

a POSITA would have been motivated to apply duplicative solutions toward the 

same problem. Pet. at 20. 

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Turning to the alleged motivation with respect to claim element 11[a], 

Petitioner’s reliance on Soleimani’s unexplained key-fob disclosure fails to supply 

proper motivation. As shown above, a key fob may be large and may have a hole 

on its surface. Thus, Petitioner’s alleged motivation based on Soleimani’s key-fob 

disclosure, i.e., “increased wearability, portability, and protection from external 

elements,” is conclusory and contradicted by contrary prior art. Id. at 24. 

Petitioner further alleges that Soleimani “welcomes modification by 

recognizing that its disclosure is not limited to particular components or form 

factors.” Id. (citing Soleimani, 18:22-32). The alleged support from Soleimani, 

however, is directed to “operations,” not form factors. Soleimani, 18:22-32 (“It is 

noted that although the above examples may be illustrated in terms of various 

operations being performed by certain components of access control system 100, 

this disclosure is not to be understood as limited to those particular illustrations.”) 

(emphasis added). Thus, Petitioner alleges a nonexistent motivation to modify 

Soleimani. 

Petitioner’s motivation-to-combine argument is further deficient because it 

largely ignores the “fully enclosed cavity” requirement. Petitioner mentions “a 

fully enclosed cavity” and “protection from external elements” in the first 

paragraph of the subsection. Pet. at 24. But, as explained above, the argument in 

this paragraph rests on faulty reasoning. Petitioner’s subsequent arguments are 

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based on “miniaturization” and are directed to “the dimensions recited in this 

limitation.” Id. at 25 (emphasis added). Thus, Petitioner offers no properly 

supported rationale to motivate a combination that would meet the “fully enclosed 

cavity” requirement. 

Accordingly, Soleimani does not disclose the required form factor, nor does 

Petitioner present proper motivation to modify Soleimani in view of Yuen to 

render obvious the required form factor. 

B. Ground 2 Fails Because of a Lack of Motivation to Combine and 

Because of Missing Elements in the Combined Device 

Like Soleimani, Berg in view of Badinski and Goosen does not disclose the 

inventive, unconventional arrangement of the invention of claim 11, including all 

of the functionalities alongside the beacon feature. Further, there is no motivation 

to combine Goosen in the first place. 

1. Petitioner Presents Insufficient Motivation to Combine 

Berg with Goosen 

Petitioner concedes that Berg does not discloses the periodic beacon claim 

limitation and attempts to combine Goosen’s disclosure to meet this limitation. 

Pet. at 38, 51. Petitioner, however, presents insufficient motivation to combine the 

two. 

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First, as explained above, Petitioner’s few reasons common to all grounds to 

combine the references at best amounts to an assertion that the references could be 

combined. See supra Part III.A.4. That is not enough. 

Petitioner’s alleged motivation to combine Berg and Goosen with respect to 

claim element 11[f] is also insufficient. First, Petitioner cites no teaching or 

suggestion from Berg that would have motivated a POSITA to look for another 

system to combine with Berg for this limitation. See generally Pet at 51-53. 

Further, Petitioner’s reliance on Goosen to supply the requisite motivation is 

misplaced for two reasons. One, the arguments that Goosen’s teachings “dovetail 

with Berg’s” and that “a POSITA would consider it obvious to use a BLE antenna 

to emit a periodic beacon signal” “[i]n view of the disclosures of Berg and 

Goosen” say no more than that a POSITA “would have understood that they could 

be combined.” Pers. Web Techs., 848 F.3d at 993 (emphasis in original) (finding 

same of an argument that the combination of two references would have allowed 

the feature of one to be used with a different feature of the other). That is not 

enough. Two, the alleged advantage of “making efficient use of battery power” 

because of BLE’s “low power usage” does not even make sense. If Berg does not 

teach, and therefore can operate without, emitting a periodic beacon signal, 

modifying Berg to do so increases power consumption. Thus, if making efficient 

use of battery power is desirable as Petitioner alleges, a POSITA would have been 

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motivated to not add to Berg’s working device a feature that consumes more 

power. 

2. Berg in View of Goosen Teaches Away from the Claimed 

Portable Wireless Device 

Insufficient motivation aside, the combination of Berg and Goosen does not 

actually constitute the portable device of claim 11. Petitioner relies on Goosen’s 

role-reversal disclosure to allege the combination discloses claim element 11[f]. 

Pet. at 52. But, as Petitioner recognizes, Goosen’s beacon refers to a “very simple” 

Bluetooth device. Id. (quoting Goosen at 9). So simple, in fact, it “does little else

than to periodically advertise themselves with small 31 byte data packages.” 

Goosen at 9 (emphasis added). Consistent with the beacon’s very limited 

capability, when the roles of beacons and smartphone (the portable device) are 

reversed, “nothing happens on the smartphone, since it is only advertising itself to 

the scanning beacons.” Id. at 37. This teaches away from the claimed portable 

wireless device, which is configured to, among others, establish secure 

communication links and transmit the private identifier only across secure 

communication links. 

C. Ground 3 Fails Because the Alleged Motivation to Combine Is 

Insufficient 

Apparently concerned over the deficiency of ground 2, Petitioner proposes a 

ground 3 substituting Goosen in ground 2 with the BLE specification. Similar to 

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its argument in ground 2, Petitioner cites no teaching or suggestion from Berg that 

would have motivated a POSITA to look for another system to combine with Berg 

for this limitation. See generally Pet at 57-58. Petitioner also repeats the same 

rationales from ground 2 for the alleged motivation, including that the BLE 

Specification’s and Berg’s teachings “dovetail[],” and that “a POSITA would 

recognize as well-known and obvious at the time of invention to use a BLE 

antenna to emit a periodic beacon signal” “[i]n view of the disclosures of Berg and 

the BLE Specification.” Id. at 57. As explained above, however, such rationales 

say no more than that the reference could be combined, not that a POSITA would 

have been motivated to combine them. See supra Part III.B.1. Petitioner also 

repeats the “low power usage” or “battery efficiency” argument. Pet. at 57-78. 

But as also explained above, this argument does not even make sense. See supra 

Part III.B.1. The argument of “a reasonable expectation of success” (id. at 58) 

does not make up for a lack of motivation to combine because that argument 

addresses a separate element of the obviousness analysis. Pers. Web Techs., 848 

F.3d at 991 (“the Board had to find that a person of ordinary skill in the art would 

have been motivated to combine the prior art in the way claimed by the . . . patent 

claims at issue and had a reasonable expectation of success in doing so.”) 

(emphasis added). 

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Petitioner additionally argues that “advances in access control technology” 

would have motivated a POSITA to add the alleged periodic beacons from the 

BLE Specification to Berg. Pet. at 58. The chronology of prior-art publications 

belies this argument. The BLE Specification, published in 2010, preceded Berg’s 

filing date of 2016 by almost six years. BLE Specification at 1 (showing 

publication date of June 30, 2010); Berg at 1 (showing filing date May 2, 2016). If 

the alleged “advances” would have motivated a POSITA, Berg would have 

incorporated the periodic beacons from the BLE Specification since Berg 

presumably was aware of the specification, published six years earlier. 

Moreover, the alleged “advances in access control technology” has no 

relevance to the periodic-beacon limitation for which Petitioner uses the BLE 

Specification to allege obviousness. Pet. at 58. Specifically, the alleged advances 

include the evolution of communication protocols “to offer more security, 

portability, and interoperability.” Id. But adding a periodic beacon broadcast to 

Berg’s disclosures does not serve any security purpose, does not make the devices 

smaller or more portable, and requires the same modification to both transmitting 

and receiving devices and is thus at best neutral with respect to interoperability. 

Petitioner does not explain why doing so would increase any of these 

characteristics. See id. Further, Petitioner does not identify any deficiency in the 

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security, portability, or interoperability of Berg’s device that would have motivated 

a POSITA to seek “more.” See id.

Accordingly, Petitioner’s alleged motivation falls short. 

D. Ground 4 Fails Because Raina Does Not Disclose the Claimed 

Private Identifier of Claim 11 and Because Motivation to 

Combine Raina and Yuen Is Insufficient 

Claim 11 requires the portable wireless device to comprise a processor 

controlling the portable wireless device to store and transmit a private identifier 

unique to the portable wireless device. Petitioner alleges that “information for 

validation” disclosed by Raina constitutes this private identifier. Pet. at 70. 

Petitioner is mistaken. 

Raina does not disclose the claimed private identifier, which the claim 

language clearly requires to be unique to the portable device. Raina discloses 

“information, such as user profile, balance amount, passes and concession 

information” or “credentials, such as user account number” or “user’s credentials 

which may be a user ID, account number, or a similar unique identifier which can 

be used to access the user’s information from the backend server” may be stored 

on the mobile device and used for validation. Raina ¶¶ [0052]-[0056] (cited in Pet. 

at 70). Equating such information or credential with the claimed private identifier 

is at best conclusory. 

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Indeed, the information and credentials disclosed in Raina are associated 

with the user — e.g., user profile, user account number, user ID — rather than the 

portable device. Further, Raina distinguishes the user from the mobile device. 

Compare id. ¶ [0021] (“User refers to anyone or anything trying to gain access to 

the restricted area 101.”) with id. ¶ [0022] (“end user mobile devices 130 that can 

each run an access control application 132 to exchange information with beacons 

140 and zone computers 150 . . . .”). Consistent with Raina’s differentiation of a 

user from the mobile device, Raina discloses “the processor 612 validates a user 

associated with the mobile device 130a . . . .” Id. ¶ [0062] (emphasis added); see 

also id. ¶¶ [0064], [0066], cls. 1, 9, 11, 18 (validating “a user associated with the 

mobile device”); id. ¶ [0074] (“the mobile device 130a may send user credentials 

of the user 131 a during the message exchange to validate the user 131a. The user 

credentials may include account information, password, or any information needed 

to validate the user 131a.”) (emphases added); id. ¶ [0080] (“Validation 1122 . . . 

may include a message exchange with mobile device 130a to receive user 

credentials and validate the user 131a based on the credentials and send a 

validation decision back to the mobile device 130a.”) (emphasis added). 

Such information and credentials, associated with the user, would be distinct 

from an identifier unique to the portable wireless device as required by claim 11. 

For example, a user may use more than one device to gain access. Raina itself 

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contemplates that “[t]he mobile devices 130 may be any computer that a user may 

carry and that can run applications including the access control applications 132. 

Examples of the mobile devices 130 include mobile phones, tablets, wearable 

computers, such as GOOGLE glass or smart devices embedded into clothing, a 

smart watch, fitness tracker, or wireless enabled shoes, or some other type of 

mobile computer.” Id. ¶ [0024]. A typical user often would have more than one of 

these devices. Each device would store the user’s profile or account information 

as credentials, and thus all of the user’s devices would have the same user 

identifier. Further, information such as balance amount, passes and concession 

information, is not unique and does not constitute an identifier, much less a private 

identifier. For example, many users to an event may have the same concession 

information, rendering it nonunique. 

Ground 4 fails for an additional reason related to motivation to combine the 

references. Specifically, Petitioner presents substantively identical arguments to 

allege motivation to combine Raina and Yuen as in ground 1. Compare Pet. at 24-

25 with id. at 61-62. Thus, the alleged motivation falls short for the same reasons 

explained above in ground 1. See supra Part III.A.4. 

IV. THE PETITION SHOULD BE DENIED IN THE DISCRETION OF 

THE DIRECTOR UNDER 35 U.S.C. § 314(a) 

The present Petition is exactly the type which the Board’s standards for 

discretionary denial are designed to prevent. Petitioner, after first attempting to 

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challenge the patent’s validity via an unenforceability claim in a declaratory 

judgment action, after already presenting the same prior art in the district court five 

months before filing the Petition, and after waiting until nearly the last possible 

day to file its petition, now comes to the Board with no reasonable argument under 

any of the Fintiv factors. Institution should be denied. 

Section 314(a) “invests the Director with discretion on the question whether 

to institute review.” SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1351 (2018); 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.”). The 

Board, in determining whether to exercise discretion to deny institution under 35 

U.S.C. § 314(a), may consider an early trial date in related litigation as part of an 

assessment of all relevant circumstances of the case, including the merits, in an 

effort to balance considerations such as efficiency and fairness. Apple Inc. v. 

Fintiv, Inc., IPR2020-00019, Paper 11 at 5-6 (P.T.A.B. Mar. 20, 2020) 

(precedential) (“Fintiv Order”); NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., 

IPR2018-00752, Paper 8 (P.T.A.B. Sept. 12, 2018) (precedential) (denying 

institution relying, in part, on § 314(a) because the parallel district court 

proceeding was scheduled to finish before the Board reached a final decision). 

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 

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district courts, or the ITC.” Consolidated Trial Practice Guide November 2019 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 Fintiv Order at 5-6. 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. 

Fintiv Order at 5-6. In 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. at 6. 

Here, each Fintiv factor favors denying institution, some strongly so. The 

combined weight of these factors tips the scale decisively in favor of denial. 

A. Whether the court granted a stay or evidence exists that one may 

be granted if a proceeding is instituted 

This factor weighs in favor of denial because a stay has not been granted, 

and the record evidence is that a stay will not be sought, and in any case would not 

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be granted, if the Petition is instituted. Under the first Fintiv factor, “[i]f a court 

has denied a defendant’s motion for a stay pending resolution on a PTAB 

proceeding, and has not indicated to the parties that it will consider a renewed 

motion or reconsider a motion to stay, if a PTAB trial is instituted, this fact has 

sometimes weighed in favor of exercising authority to deny 

institution.” Fintiv Order at 7-8. 

Neither party to the Florida Litigation has moved for a stay. Moreover, the 

District Court set a March 12, 2021 “[d]eadline to file a motion to stay the lawsuit 

pending reexamination in the U.S. Patent Office.” Ex. 2021 (Dkt. No. 73 

(Scheduling Order)) at 2. Petitioner waited until after this deadline to file the 

subject Petition and has not sought, either before or after the deadline, to amend 

the deadline. Indeed, as discussed further below, both parties have submitted 

proposals for an amended case schedule through discovery and trial next year, with 

no mention of the possibility of a stay. Accordingly, this factor favors denial. 

Mylan Lab’ys Ltd. v. Janssen Pharmaceutica Nv, No. IPR2020-00440, 2020 WL 

5580472, at *6 (P.T.A.B. Sept. 16, 2020) (“the balance of facts in the two 

litigations indicate that no stay is likely to be entered in either, and therefore Fintiv

factor 1 leans towards denial of institution.”). 

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B. Proximity of the court’s trial date to the Board’s projected 

statutory deadline for final written decision 

Under the second Fintiv factor, “[i]f the court’s trial date is earlier than the 

projected statutory deadline the Board generally has weighed this fact in favor of 

exercising authority to deny institution ... If the court’s trial date is at or around the 

same time as the projected statutory deadline or even significantly after the 

projected statutory deadline, the decision whether to institute will likely implicate 

other factors . . . such as the resources that have been invested in a parallel 

proceeding.” Fintiv Order at 9. 

If review is instituted in this proceeding, Carnival estimates that the statutory 

deadline will fall sometime around October 2022. See 35 U.S.C. § 316(a)(11); 35 

U.S.C. § 314(b)(1). The Florida Litigation is currently scheduled for trial in 

January 2022 (Ex. 2021 (Dkt. 73 at 3)—eight months before the Board’s expected 

statutory deadline. The Board “generally takes courts’ trial schedules at face value 

absent some strong evidence to the contrary.” Apple v. Fintiv, No. IPR2020-00019, 

Paper 15, 12-13 (P.T.A.B. May 13, 2020) (informative) (“Fintiv II”). The parties 

recently have filed motions proposing modifications to the scheduling order.4

4

 Of note, the parties now have begun the claim construction process in the Florida 

Litigation, exchanging lists of terms for construction on July 12, 2021. The parties 

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Carnival’s proposal would have trial set for June 2022, about four months before 

the projected deadline for the Board’s final written decision. See Ex. 2024 (Dkt. 

No. 166) at 6. The Board has previously found that this factor “weighs somewhat 

in favor of discretionary denial” where trial is set to occur just two months prior to 

the final written decision deadline. Fintiv II at 12-13. Thus, this factor favors 

denial under Carnival’s proposal. 

Petitioner’s conduct in this regard is quite revealing. On April 30, Petitioner 

filed a brief proposing a new case schedule with trial set for August 2022. Ex. 

2022 (Dkt. 154-1) at 6-7. Under Fintiv II, this schedule also would favor denial, as 

trial would happen about two months before the projected statutory date. Just days 

before this preliminary response was due, however, Petitioner filed a new motion 

proposing a trial date of November 2022—just after the expected final written 

decision date in the event that the Board institutes this IPR. See 35 U.S.C. § 

316(a)(11); 35 U.S.C. § 314(b)(1). Notably, this date is several months after the 

trial date (in August 2022) that would be expected if the court follows the timing 

set forth in its usual patent case track keyed off the claim construction deadlines. 

See Ex. 2023 (Dkt. 44) at 1, 3-4. 

also have agreed to a schedule of claim construction deadlines culminating in 

briefing to be filed in November 2021. Ex. 2024 (Dkt. No. 166) at 5. 

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The Court has yet to rule on these motions, but regardless, Carnival submits 

that the Board should weigh this factor in favor of denial given that (a) the current 

trial date is well in advance of the projected statutory deadline, (b) the district court 

is likely to enter a schedule with trial scheduled for several months before the 

projected statutory deadline, and (c) Petitioner’s latest proposed schedule with a 

later trial date is just further evidence of Petitioner’s efforts to delay the district 

court case to justify unnecessary parallel IPR proceedings. 

C. Investment in the parallel proceeding by the court and the parties 

and petitioner’s delay in filing the petition 

The third Fintiv factor weighs heavily in favor of denial given (a) 

Petitioner’s unexplained delay of over five months after serving invalidity 

contentions raising the same prior art and arguments it makes here, and even 

longer after Petitioner first made clear its intent to file IPRs against Carnival’s 

patents, and (b) the substantial investment by the District Court and the parties in 

the parallel proceeding. 

Under the third Fintiv factor, “[t]he Board also . . . consider[s] the amount 

and type of work already completed in the parallel litigation by the court and the 

parties at the time of the institution decision.” Fintiv Order at 9. Such 

“investments” can come in various forms. For example, “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.” Fintiv Order at 9-10. 

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Ultimately, this particular factor “is related to the trial date factor, in that more 

work completed by the parties and court in the parallel proceeding tends to support 

the arguments that the parallel proceeding is more advanced, a stay may be less 

likely, and instituting would lead to duplicative costs.” Fintiv Order at 10. 

In the present case, contrary to Petitioner’s assertion that “investment in the 

parallel proceeding has been minimal” (Pet. at 82), the court has in fact issued two 

detailed opinions on the parties’ motions to dismiss Exs. 2018, 2002 (Dkt. 120, 

128), opinions regarding Carnival’s infringement contentions and Petitioner’s 

motion to amend the protective order as it related to IPR-specific issues Exs. 2020, 

2019 (Dkt. 119, 129), and has conducted a number of hearings to resolve various 

discovery disputes, resulting in a ruling on cross-motions to compel. Ex. 2004 

(Dkt. 163). These rulings are detailed in Section II.D above. The extensive effort 

the district court has put into the parallel litigation weighs in favor of denial. 

Of note, the district court unquestionably has issued “substantive orders 

related to the patent at issue in the petition,” and thus this factor favors denial 

under Fintiv II. In particular, the Court became familiar with both the disclosures 

and the claims of the related ’184 Patent in considering and denying Petitioner’s 

motion to dismiss based on Section 101. Ex. 2018 (Dkt. No. 120) at 20-28. 

Petitioner blames the so-called lack of investment on “several deadlines” 

that “have slipped and have not been rescheduled.” Pet. at 82. But these delays 

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stem entirely from Petitioner’s withholding of core documents, which has 

prevented the parties from moving forward with the claim construction process. 

Petitioner refused to produce its technical documents on the basis of what it was 

calling a “trade secrets objection.” But its “trade secrets objection” was that 

Carnival had not identified its trade secrets to Petitioner’s satisfaction, a question 

the Magistrate Judge noted was irrelevant to Petitioner’s production of its own 

technical documents. Ex. 2025 (Dkt. No. 93) at 7:22-25 (“Now, what I don’t 

understand is, why would you need to know what Carnival’s alleged trade secret is 

to be able to identify what your trade secret is? Why would it be dependent on 

Carnival?”). As the Magistrate Judge further observed on more than one occasion, 

it “makes no sense” for Petitioner to withhold discovery relevant to the patent 

issues based on its complaints about Carnival’s identification of trade secrets: “The 

two are not linked at all.” Ex. 2026 (1/7/2021 Hr’g Tr.) at 20:20-21:25; see also 

Ex. 2027 (4/9/2021 Hr’g Tr.) at 40:22-24 (Judge Torres expressing that he was “at 

a loss as to why the patent disclosures and the patent production can’t be separately 

completed” despite Petitioner’s “trade secrets” objection). Ultimately, the district 

court granted Carnival’s motion to compel and put an end to Petitioner’s tactics. 

Ex. 2004 (Dkt. No. 163). The Board should not reward these dilatory tactics. See, 

e.g., Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 

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1336, 1362 (Fed. Cir. 2001) (declining to award prejudgment interest where “delay 

was a litigation tactic”). 

A separate compelling basis for denial under this factor is Petitioner’s 

lengthy and unexplained delay in filing the IPR after (a) signaling its intent to do 

so, (b) receiving Carnival’s identification of asserted claims, and (c) serving its 

invalidity contentions identifying the same prior art and arguments presented in the 

petition. In evaluating this third Fintiv factor, the Board has also considered the 

question of how expeditiously the petitioner filed the petition. If a petitioner, 

“faced with the prospect of a looming trial date, waits until the district court trial 

has progressed significantly before filing a petition,” that decision “may impose 

unfair costs to a patent owner.” Fintiv Order at 11. Here, Petitioner waited nearly 

the full year before the time bar expired to file its petition. See Ex. 2028 (Return of 

Service, Carnival Corp. v. DeCurtis Corp., No. 20-21547, Dkt. No. 15) (Carnival’s 

complaint asserting infringement of the ’514 Patent served on DeCurtis LLC on 

April 15, 2020; Petition, IPR No. 2021-00783 (dated April 7, 2021). There is no 

good reason for the delay. Petitioner has been unequivocally aware of the claims 

being asserted in the Florida Litigation since at least September 2020, when 

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Carnival served its preliminary infringement contentions.5 Yet Petitioner delayed 

another seven months after Carnival identified the asserted claims, waiting until 

just days before the statutory time bar would expire to file this Petition—hardly 

“expeditious[]” or “diligent [].” Cf. Fintiv Order at 11 (“If the evidence shows that 

the petitioner filed the petition expeditiously, such as promptly after becoming 

aware of the claims being asserted, this fact has weighed against exercising the 

authority to deny institution under NHK.”). 

In addition, Petitioner served its invalidity contentions in October 2020, 

identifying the same prior art it relies on in this Petition. Compare Pet. at 5 with

Ex. 2029 (Dkt. 153-4) at A1-A10 (listing Soleimani, Yuen, Hulusi, Berg, Badinski, 

Raina, Goosen, and the BLE Specification in its list of prior art references), ii-iii 

(alleging that the asserted ’514 Patent claims are invalid under 35 U.S.C. § 102 or 

103 “in light of at least the prior art references identified in Appendix A”). “If ... 

the evidence shows that the petitioner did not file the petition expeditiously, such 

as at or around the same time that the patent owner responds to the petitioner’s 

invalidity contentions, ... these facts have favored denial.” Fintiv Order 11-12. 

See, e.g., Google, LLC v. Personalized Media Commc’ns, No. IPR2020-00720, 

5

 Carnival has amended its infringement contentions since September, but has not 

added any new claims. Ex. 2019 (Dkt. No. 129) at 5. 

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2020 WL 6530766, at *3 (P.T.A.B. Nov. 5, 2020) (Fintiv factor 3 weighed in favor 

of denying institution where “Petitioner was aware of the claims asserted and 

presented invalidity contentions against those claims, and then waited a significant 

amount of time . . . before filing the Petition.”).

It is of course no surprise that there is almost complete overlap between the 

prior art identified in Petitioner’s invalidity contentions and the prior art identified 

in this Petition: Petitioner knew all along that it intended to seek inter partes

review of the asserted patents. In July of 2020—nearly nine months before filing 

the Petition—when the parties were negotiating the terms of the protective order in 

the Florida Litigation, Petitioner proposed a prosecution bar that would “preclude 

the parties’ counsel from advising or participating in potential claim amendments 

sought for an existing patent in a parallel invalidity proceeding.” Ex. 2030 (Dkt. 

No. 77) at 3-4. Carnival opposed adding that language to the protective order, so 

Petitioner filed a motion in September 2020 to amend the protective order 

specifically to add this provision. Ex. 2030 (Dkt. 77). The District Court granted 

that motion in January 2021. Ex. 2020 (Dkt. 119). Petitioner knew when it was 

negotiating the Protective Order, and certainly by the time it filed a motion to 

amend the Protective Order to add an IPR amendment-specific provision, that it 

would be filing this Petition, yet still waited until the last possible moment to do 

so. 

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Petitioner’s twelve-month delay in filing its petition cannot be explained or 

justified. 

For the reasons set forth above, this factor strongly weighs in favor of 

denying institution.6

D. Overlap between issues raised in the petition and the parallel 

proceeding 

Under the fourth Fintiv factor, the Board evaluates whether “the petition 

includes the same or substantially the same claims, grounds, arguments, and 

evidence as presented in the parallel proceeding[.]” Fintiv Order at 12. In such 

6

 This factor is an important distinction between this case and Sand Revolution II, 

LLC v. Continental Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 

(June 16, 2020), cited by Petitioner. In Sand Revolution, the Petitioner’s diligence 

in filing the Petition was not addressed as a factor weighing against institution. Id. 

at 10-11. In Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 

(December 1, 2020), a much shorter delay than here (approximately two months 

after initial invalidity contentions compared to over five months here) was excused 

by settlement discussions and office closures among other factors. Id. at 16-17. 

There are no such excuses here. Sotera also is meaningfully distinct in that the 

Petitioner had moved to stay the district court case and the court already had 

vacated Markman deadlines pending a ruling on that motion. Id. at 13-14.

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cases, this fact “has favored denial.” Id. The question of “the degree of overlap is 

highly fact dependent,” id. at 13: 

For example, if a petition involves the same prior art challenges but 

challenges claims in addition to those that are challenged in the 

district court, it may still be inefficient to proceed because the district 

court may resolve validity of enough overlapping claims to resolve 

key issues in the petition. The parties should indicate whether all or 

some of the claims challenged in the petition are also at issue in 

district court. 

Id. (emphasis added). Petitioner challenges claim 11 of the ’514 Patent in this 

proceeding, precisely the claim at issue in the Florida Litigation. This represents a 

complete overlap. 

Petitioner stipulates in its Petition that “if this IPR proceeding is instituted, 

then Petitioner will not pursue in the [Florida] Litigation the specific grounds 

identified above in connection with the referenced . . . claims, or any other ground 

that was raised or 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 printed 

publications).” Pet. at 77. But this stipulation is so narrow as to be meaningless. 

In particular, even with this stipulation in place, Petitioner intends to litigate 

prior art invalidity-based arguments in the Florida Litigation. This factor therefore 

favors denying institution. 

As noted above, the District Court dismissed Petitioner’s prior art fraudbased unenforceability claims but did not dismiss Petitioner’s unenforceability 

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claims based on alleged improper inventorship. Petitioner intends to litigate issues 

based on alleged prior art invalidity in its effort to prove those remaining claims. 

Petitioner’s theory is that Carnival and its agents omitted a proper inventor from 

the ’514 Patent, and that the motive was to prevent that inventor from notifying the 

Patent Office of supposedly material prior art. Petitioner recently filed an Answer 

and Counterclaims alleging that this prior art was “material” because it supposedly 

discloses elements claimed in the ’514 Patent (and other Carnival patents). Ex. 

2031 (Dkt. 155) at 42-47. 

Petitioner’s stipulation is carefully limited to “any ground that could be 

raised under §§ 102 or 103 on the basis of prior art patents or printed publications,” 

which presumably would leave Petitioner free to litigate issues of what various 

alleged prior art references disclose in connection with its unenforceability theory. 

E. Whether the petitioner and the defendant in the parallel 

proceeding are the same party 

In cases where the “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.” Fintiv Order at 13-14. But here, the parties are identical: 

Carnival is the Plaintiff in the Litigation and Patent Owner before the Board, and 

DeCurtis is the Defendant in the Florida Litigation and Petitioner before the Board. 

For this reason, this factor weighs in favor of denying institution. 

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F. Other circumstances that impact the Board’s exercise of 

discretion, including the merits 

For the reasons set forth above, the Fintiv factors strongly favor denial of 

institution. And, for the reasons set forth in further detail herein, Carnival 

respectfully submits that Petitioner has not set forth “sufficiently strong” proposed 

grounds that would support a grant of institution. Fintiv Order at 15 (“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.”). 

Furthermore, DeCurtis sought a declaratory judgment in the Florida 

Litigation that the patents asserted are unenforceable, but those unenforceability 

claims are based on allegations of prior art invalidity. Petitioner’s original 

declaratory judgment Complaint and First Amended Complaint in the Florida 

Litigation alleges that the ’514 Patent is unenforceable “because the purported 

inventors, patent attorneys, and others associated with [its] filing and prosecution 

knowingly failed to disclose to the USPTO material prior art that would have 

otherwise prevented the Carnival Patents from issuing.” Ex. 2001 (Dkt. No. 1 

(Petitioner’s Original Complaint)) ¶ 72; see also id. ¶¶ 73-84. In particular, 

Petitioner asserted that “the implementation details of [certain] prior art Disney 

systems,” including Disney’s “Be Our Guest” system and MagicBands, “were 

material to the prosecution of the Carnival Patents.” Id. ¶ 77. Petitioner 

acknowledged that the inventors disclosed “certain patents and patent applications 

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related to” the Disney prior art, but claims that Carnival “failed to disclose the full 

extent of the prior art systems and the available publications relating to those 

systems.” Id. ¶ 76. And, according to Petitioner, “[h]ad the USPTO examiner been 

made aware of the full extent of the Disney ... prior art, the USPTO examiner 

would not have issued ... the Carnival Patents ...,” including the ’514 Patent (id. 

¶¶ 79, 134-135).7

Petitioner pleaded these as unenforceability claims, but nonetheless, the 

claims are premised on a challenge to the validity of the patents. A party cannot 

file an IPR petition against a patent after having already brought 

a declaratory judgment action challenging the validity of a claim of that patent. 35 

7

 In its First Amended Complaint, Petitioner repeated these allegations and added 

nearly identical allegations about Carnival’s failure to disclose the “full extent of” 

Assa Abloy’s “Allure” electronic lock system, which it argued was relevant prior 

art for the ’514 Patent. See Ex. 2032 (Dkt. No. 87 (DeCurtis’ First Amended 

Complaint)) ¶¶ 84-96. Although the District Court subsequently dismissed 

Petitioner’s prior art-based fraud allegations with prejudice for failure to state a 

claim (Ex. 2002 (Dkt. No. 128) at 22-28), this subsequent dismissal does not affect 

whether the statutory bar which was triggered by Petitioner’s filing of the 

declaratory judgment complaint. 

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U.S.C. § 315(a)(1); see also WesternGeco LLC v. ION Geophysical Corp., 889 

F.3d 1308, 1318 (Fed. Cir. 2018). “With respect to pleadings, it is understood that 

a court looks to ‘the quality of its substance rather than according to its form or 

label.’” Totes-Isotoner Corp. v. United States, 594 F.3d 1346, 1355 (Fed. Cir. 

2010) (citing 5 Charles Alan Wright & Arthur R. Miller, Federal Practice and 

Procedure § 1286 (3d ed. 2004)). Petitioner’s declaratory judgment action asked 

the district court to declare the ’514 Patent unenforceable because, had the patent 

examiner known about a relevant piece of prior art, the patent would not have 

issued because the claims would have been found invalid over the prior art. That is 

the core of a 35 U.S.C. §102/§103 validity challenge. Moreover, to establish 

“inequitable conduct” and prove unenforceability, a party must show the asserted 

prior art is “but-for material” to patentability: “Because neither mere nondisclosure 

of prior art references to the PTO nor failure to mention prior art references in an 

affidavit constitutes affirmative egregious misconduct, claims of inequitable 

conduct that are based on such omissions require proof of but-for materiality.” 

Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1292-93 (Fed. Cir. 

2011). And “[w]hen an applicant fails to disclose prior art to the PTO, that prior art 

is but-for material if the PTO would not have allowed a claim had it been aware of 

the undisclosed prior art.” Id. at 1291. Accordingly, Petitioner’s unenforceability 

claim in substance constituted “a civil action challenging the validity of the claim 

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of the patent,” and thus the Petition is statutorily barred under 35 U.S.C. § 

315(a)(1). 

Even if the Board were to find that the statutory bar does not apply here, 

however, Petitioner’s declaratory judgment action should be considered as one 

factor (of many) favoring discretionary denial of the Petition. Institution of this 

Petition would be inconsistent with the purpose of the statutory bar of Section 

315(a), which is to prevent an accused infringer from using the IPR process as a 

“second bite at the apple” after challenging the validity of a patent in district court. 

Epic Games, Inc. v. Acceleration Bay LLC, No. 4:19-CV-04133-YGR, 2020 WL 

1557436, at *1 (N.D. Cal. Apr. 1, 2020). See also Douglas Dynamics, LLC v. 

Meyer Prods. LLC, No. 14-cv-886-jdp, 2017 WL 1382556, at *4 (W.D. Wis. Apr. 

18, 2017) (“Congress intended IPR to serve as a complete substitute for litigating 

validity in the district court.”) (quoting SAS Inst., Inc. v. ComplementSoft, LLC, 

825 F.3d 1341, 1354 (Fed. Cir. 2016) (Newman, J, dissenting in part)). 

Even if the Board determines that this challenge does not violate the “letter 

of the law” to trigger the statutory bar, it certainly violates the spirit of the statute’s 

intent to prevent overlapping parallel proceedings—particularly when it is the 

Petitioner who chose to initiate both proceedings. The Board should take this into 

account in balancing considerations of system efficiency and fairness as yet 

another factor weighing against institution. 

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V. CONCLUSION 

This Petition is subject to the Director’s discretionary denial and statutorily 

barred. Further, Petitioner has failed to establish a reasonable likelihood of 

prevailing on the challenged claim of the ’514 Patent. Thus, this Petition for inter 

partes review should be denied. 

Respectfully submitted by: 

Date: July 14, 2021 / Christopher J. Higgins/

Christopher J. Higgins, Reg. No. 66,422

ORRICK, HERRINGTON & SUTCLIFFE 

LLP 

Columbia Center 

1152 15th Street, N.W. 

Washington, D.C. 20005-1706 

Telephone: (202) 339-8400 

Fax: (202) 339-8500 

0CHPTABDocket@orrick.com

Counsel for Patent Owner

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CERTIFICATION UNDER 37 C.F.R. § 42.24(d) 

This Preliminary Response of Patent Owner complies with the requirements 

of 37 C.F.R. § 42.24. As calculated by the word count feature of Microsoft Word, 

it contains 10,878 words, excluding the words in the following: Table of Contents, 

Table of Authorities, List of Exhibits, Certification Under § 42.24(d) and 

Certificate of Service. 

Date: July 14, 2021 / Christopher J. Higgins/

Christopher J. Higgins, Reg. No. 66,422

ORRICK, HERRINGTON & SUTCLIFFE 

LLP 

Columbia Center 

1152 15th Street, N.W. 

Washington, D.C. 20005-1706 

Telephone: (202) 339-8400 

Fax: (202) 339-8500 

0CHPTABDocket@orrick.com

Counsel for Patent Owner

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CERTIFICATE OF SERVICE 

The undersigned hereby certifies that a true copy of the foregoing was 

served by electronic mail on counsel of record for the Petitioner as follows: 

James Glass 

Patrick Schmidt 

Sam Stake 

Gavin Snyder 

Jared Kneitel 

Richard Lowry 

Quinn Emanuel Urquhart & Sullivan, LLP 

51 Madison Ave., 22nd Floor 

New York, NY 10010 

Tel: (212) 849-7000 

Email: jimglass@quinnemanuel.com

Email: patrickschmidt@quinnemanuel.com

Email: samstake@quinnemanuel.com

Email: gavinsnyder@quinnemanuel.com

Email: jaredkneitel@quinnemanuel.com

Email: richardlowry@quinnemanual.com

Respectfully submitted by: 

Date: July 14, 2021 / Christopher J. Higgins /

Christopher J. Higgins, Reg. No. 66,422

ORRICK, HERRINGTON & SUTCLIFFE 

LLP 

Columbia Center 

1152 15th Street, N.W. 

Washington, D.C. 20005-1706 

Telephone: (202) 339-8400 

Fax: (202) 339-8500 

0CHPTABDocket@orrick.com

Counsel for Patent Owner

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