Paper No. __
`Filed: August 30, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`
`
`GOOGLE INC.,
`Petitioner
`v.
`IXI IP, LLC
`Patent Owner
`
`
`
`Case IPR2016-01669
`Patent 7,552,124
`
`
`
`
`
`PETITIONER’S MOTION TO
`TERMINATE OR STAY CO-PENDING REEXAMINATION
`
`
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`
`
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`Filed: August 30, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`GOOGLE INC.,
`Petitioner
`v.
`IXI IP, LLC
`Patent Owner
`
`
`
`Case IPR2016-01669
`Patent 7,552,124
`
`
`
`
`
`PETITIONER’S MOTION TO
`TERMINATE OR STAY CO-PENDING REEXAMINATION
`
`
`
`
`
`
`
`Case IPR2016-01669
`
`
`I.
`
`Precise Relief Requested
`Petitioner Google Inc. (“Petitioner”) respectfully moves to terminate or stay
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`the ex parte reexamination (Control No. 90/013,988, “Reexamination”) recently
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`filed by Patent Owner IXI IP, LLC (“Patent Owner”).1 By Patent Owner’s design,
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`the request for reexamination (“Reexamination Request” or “Request”) presents a
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`prior art analysis that is essentially identical to that presented by Petitioner in this
`
`proceeding (though it omits important evidence and explanations). The Request
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`tacitly urges the examiner to interpret claims 6–10 of U.S. Patent No. 7,552,124
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`(“the ’124 patent”) in a manner inconsistent with the Institution Decision (Paper
`
`No. 9) and risks an interpretation of the prior art inconsistent with that of the
`
`Board. Thus, the Reexamination should be terminated or at the very least stayed
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`until final resolution of this proceeding including any appeal.
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`II. Background
`On March 8, 2017, the Board instituted inter partes review of claims 1–5 of
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`the ’124 patent, but declined to institute review of claims 6–10. Paper No. 9 at 40.
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`These latter claims were found to contain means-plus-function language governed
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`by 35 U.S.C. § 112 ¶ 6 but not supported by sufficient corresponding structure in
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`the specification. Id. at 7–9. The Board recognized that such claims are incapable
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`1 The Board authorized Petitioner to file this five-page motion in a conference call
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`with the parties on August 21, 2017.
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`1
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`Case IPR2016-01669
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`of construction, precluding any prior art analysis. Id. at 9.
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`On July 17, 2017, Patent Owner filed its Reexamination Request. In the
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`Request, attached as Exhibit 1015, Patent Owner acknowledges the indefiniteness
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`issue that compelled the Board to decline to institute review of claims 6–10.
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`Request at 2. However, Patent Owner nonetheless alleges that claims 6–10
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`“substantially track and correspond to the elements of instituted method claims 1–
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`5,” and proceeds to present an analysis that corresponds to the one presented by
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`Petitioner in this proceeding.2 Request at 2, 10. The Reexamination Request also
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`duplicates the analysis contained in a similar petition for inter partes review filed
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`by other petitioners in IPR2017-00898 and seeks to add two new claims. On
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`August 10, 2017, the central reexamination unit ordered reexamination of claims
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`6–10 of the ’124 patent.
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`III. Patent Owner’s Reexamination Should Be Terminated or Stayed
`“Where another matter involving the patent is before the Office, the Board
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`may during the pendency of the inter partes review enter any appropriate order
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`regarding the additional matter including providing for the stay, transfer,
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`consolidation, or termination of any such matter.” 37 C.F.R. § 42.122. The Board
`
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`2 Patent Owner omits many of the explanations about the prior art provided by
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`Petitioner, Petitioner’s expert, and the Board. See generally Request.
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`2
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`Case IPR2016-01669
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`thus has the authority to terminate or stay the Reexamination. Id.; see also 35
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`U.S.C. §§ 315(d), 325(d). That authority should be exercised here.3
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`A. The Reexamination Should Be Terminated to Avoid
`Inconsistency with the Institution Decision
`Patent Owner’s Reexamination Request seeks a result for claims 6–10 that is
`
`inconsistent with the Board’s interpretation of these claims. Specifically, Patent
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`Owner urges the examiner to determine whether the prior art at issue in this
`
`proceeding maps to claims 6–10. But this is exactly what the Board said cannot be
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`done in the Institution Decision given the lack of sufficient corresponding structure
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`in the ’124 patent specification. Paper No. 9 at 7–9.
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`In a reexamination, just like in an inter partes review, an examiner is not
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`permitted to consider issues relating to 35 U.S.C. § 112 for original claims. See 37
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`C.F.R. § 1.552; M.P.E.P. § 2258. Thus, given that the Reexamination Request has
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`been granted by the central reexamination unit, the examiner is at this point in a
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`position where any further analysis of claims 6–10 would be inconsistent with the
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`Board’s finding in the Institution Decision that these claims could not be
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`interpreted. A stay of the reexamination would not alleviate this issue as the Board
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`will not be revisiting claims 6–10.
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`3 If the Board finds the issues presented in this motion can instead be addressed
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`through consolidation, Petitioner would not be opposed to such consolidation.
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`3
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`Case IPR2016-01669
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`A reexamination is not supposed to be ordered where it seeks to call a Board
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`decision into question. Specifically, a reexamination is only supposed to be
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`ordered where it raises a “substantial new question of patentability.” 35 U.S.C. §§
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`303, 304. The Reexamination here, failing to raise a new question of patentability,
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`thus likely should not have been granted in the first place. See Order in Control
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`No. 90/013,148 dated March 21, 2014 at 4 (“The analysis supplied in the current
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`request . . . relies entirely upon the analysis presented . . . in IPR2013-00289.
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`While the examiner agrees that [the analysis] presents a substantial question of
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`patentability, the fact that the exact question is currently being considered by the
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`PTAB means that the question cannot be considered new.”). In any event, the
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`inconsistency the Reexamination calls for, which would subject the parties and the
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`public to varying views on the scope of the claims, should compel termination.
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`B.
`In the Alternative, the Reexamination Should Be Stayed
`The Reexamination should, at a minimum, be stayed. By Patent Owner’s
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`own admission, the same prior art is being applied in the same way in both the
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`present inter partes review and the Reexamination Request. Request at 10. Thus,
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`any consideration of the prior art in the Reexamination runs the serious risk of
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`creating inconsistencies with this proceeding. See Sienna Biopharmaceuticals, Inc.
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`v. William Marsh Rice University, IPR2017-00046, Paper No. 10 at 3 (Apr. 24,
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`2017) (staying reexamination where it “may result in inconsistencies”). While
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`4
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`Case IPR2016-01669
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`claims 1–5 are at issue here and claims 6–10 are at issue in the Reexamination, the
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`Reexamination Request is premised on claims 6–10 “substantially track[ing] and
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`correspond[ing] to the elements of instituted method claims 1–5.” Request at 2.
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`C. The Request’s New Claims Do Not Favor a Different Result
`Based on its representations during the conference call with the Board,
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`Patent Owner may argue the Reexamination is needed to allow it to pursue new
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`claims it could not have pursued here. As an initial matter, this is incorrect; Patent
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`Owner could have filed a motion to amend. 35 U.S.C. § 316(d); 37 C.F.R. §
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`42.121. In any event, the propriety of a reexamination should be assessed from the
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`perspective of the issued claims. M.P.E.P. § 2221; Sienna, IPR2017-00046, Paper
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`No. 28 at 5 (Aug. 21, 2017). Moreover, the new claims present the same concerns
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`discussed above as to inconsistency since they include many of the same
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`limitations as in claims 1–5 (and the concerns as to the original claims would exist
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`regardless). Compare Request at Appendix M, with Ex. 1001 at claims 1 and 6.
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`IV. Conclusion
`For the foregoing reasons, the Reexamination should be terminated or at
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`least stayed until final resolution of this proceeding including any appeal.
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`
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`Dated: August 30, 2017
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`
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`Respectfully submitted,
`
` /Naveen Modi/
`Naveen Modi
`Reg. No. 46,224
`Counsel for Petitioner
`
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`5
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`CERTIFICATE OF SERVICE
`
`Case IPR2016-01669
`Patent No. 7,552,124
`
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`I hereby certify that on this 30th day of August 2017, a copy of the
`
`foregoing Petitioner’s Motion to Terminate or Stay Co-Pending Reexamination
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`was served by e-mail on the following counsel of record for Patent Owner:
`
`
`Andy H. Chan (chana@pepperlaw.com)
`Charles F. Koch (kochc@pepperlaw.com)
`Griffin Mesmer (mesmerg@pepperlaw.com)
`Andrew Schultz (schultza@pepperlaw.com)
`
`
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`Respectfully submitted,
`
`
`
`
`
` /Naveen Modi/
`Naveen Modi
`Reg. No. 46,224
` Counsel for Petitioner
`
`
`
`Dated: August 30, 2017
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