By: Andrew W. Schultz, Reg. No. 66,869
`
`Pepper Hamilton LLP
`
`125 High Street, High Street Tower
`
`Boston, MA 02110
`
`(617) 204-5100 (telephone)
`
`schultza@pepperlaw.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`GOOGLE INC.
`Petitioner
`
`v.
`
`IXI IP, LLC
`Patent Owner
`
`___________________
`
`Case No. IPR2016-01669
`Patent 7,552,124
`___________________
`
`PATENT OWNER’S OPPOSITION TO MOTION TO TERMINATE OR
`STAY CO-PENDING REEXAMINATION
`
`
`
`
`
`
`
`
`
`
`
`
`Pepper Hamilton LLP
`
`125 High Street, High Street Tower
`
`Boston, MA 02110
`
`(617) 204-5100 (telephone)
`
`schultza@pepperlaw.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`GOOGLE INC.
`Petitioner
`
`v.
`
`IXI IP, LLC
`Patent Owner
`
`___________________
`
`Case No. IPR2016-01669
`Patent 7,552,124
`___________________
`
`PATENT OWNER’S OPPOSITION TO MOTION TO TERMINATE OR
`STAY CO-PENDING REEXAMINATION
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2016-01669
`Patent 7,552,124
`
`
`TABLE OF CONTENTS
`
`Page(s)
`
`Table of Authorities ................................................................................................. iii
`Table of Exhibits ...................................................................................................... vi
`THE BOARD SHOULD NOT STAY OR TERMINATE THE ’124
`I.
`PATENT REEXAM ....................................................................................... 1
`PETITIONER HAS NOT POINTED TO ANY AUTHORITY THAT
`SUGGESTS TERMINATION IS APPROPRIATE ....................................... 4
`III. CONCLUSION ............................................................................................... 5
`
`
`II.
`
`i
`
`
`
`Case No. IPR2016-01669
`Patent 7,552,124
`
`
`TABLE OF AUTHORITIES
`
`
`CASES
`IBG, LLC et al. v. Trading Tech. Int’l, Inc., CBM2015-00179, Paper 52
`(PTAB May 2, 2016) ........................................................................................ 2, 4
`
`Page(s)
`
`Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26
`(PTAB Jun. 11, 2013) ....................................................................................... 2, 3
`
`Kaiser Aluminum v. Constellum Rolled Products Ravenwood, IPR2014-
`01002, Paper 24 (PTAB Feb. 21, 2015) ............................................................... 4
`
`M&P Golf, LLC et al. v. Max Out Golf, LLC, IPR2016-00784, Paper 33
`(PTAB Mar. 10, 2017) .......................................................................................... 4
`
`Sienna Biopharmaceuticals, Inc., v. William Marsh Rice University,
`IPR2017-00046, Paper 10 (PTAB Apr. 24, 2017) ........................................... 3, 4
`
`
`
`STATUTES
`
`35 U.S.C. § 305 .......................................................................................................... 2
`
`
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.122 ..................................................................................................... 4
`
`Manual of Patent Examining Procedure § 2261 ........................................................ 2
`
`
`
`
`
`ii
`
`
`
`Case No. IPR2016-01669
`Patent 7,552,124
`
`
`PATENT OWNER’S TABLE OF EXHIBITS
`
`
`Exhibit Description
`
`Previously filed
`
`Exhibit No.
`
`2001
`
`Declaration of Lin Chase, Ph.D.
`
`2002
`
`“Keyword spotting,” downloaded from Wikipedia: The Free
`Encyclopedia, https://en.wikipedia.org/wiki/Keyword_spotting
`(June 29, 2017).
`
`2003
`
`U.S. Patent No. 8,433,611 of Lax et al., assigned to Google Inc.
`
`
`
`
`
`iii
`
`
`
`Pursuant to the Board’s authorization during a teleconference on August 21,
`
`IPR2016-01669
`Patent 7,552,124
`
`
`2017, Patent Owner (“IXI”) hereby submits this Opposition to Petitioner’s Motion
`
`to Terminate or Stay Co-Pending Reexamination (Paper 15, “Motion”). The
`
`Motion should be denied as Petitioner has failed to demonstrate that it is entitled to
`
`the requested relief to terminate or stay the ex parte reexamination of U.S. Patent
`
`7,552,124 (Control No. 90/013,988, “the ’124 Patent Reexam”).
`
`I.
`
`THE BOARD SHOULD NOT STAY OR TERMINATE
`THE ’124 PATENT REEXAM
`In response to Petitioner’s request to institute inter partes review of claims
`
`1-10 of the ’124 Patent, the Institution Decision dated March 8, 2017 instituted
`
`review of claims 1-5 on the various asserted grounds and denied review of claims
`
`6-10 finding that “Petitioner fails to demonstrate a reasonable likelihood of
`
`prevailing in its challenge to claims 6-10….” Paper 9 at 9. On July 17, 2017, IXI
`
`filed a request for ex parte reexam as to non-instituted claims 6-10 of the ’124
`
`Patent, and submitted therewith two new independent claims 11 and 12 that differ
`
`from any of the claims 1-10 as originally issued.
`
`Petitioner concedes that the Board declined to institute on the claims that
`
`served as the basis for the ’124 Patent Reexam, that the CRU ordered reexam on
`
`the basis of SNQPs in light of art that is not at issue in the present proceeding, and
`
`that PO presented new claims in the request. Motion at 1-2. Petitioner nonetheless
`
`requests that IXI be prevented from expeditiously pursuing reexam of the claims
`
`1
`
`
`
`that are not at issue in these proceedings. See MPEP 2261 (reexam is to be
`
`Case No. IPR2016-01669
`Patent 7,552,124
`
`
`conducted with “special dispatch” and with “priority over all other cases” when
`
`those patents are involved in litigation). Indeed, the “Board ordinarily will not stay
`
`a reexamination because, in the absence of good cause, reexaminations are
`
`conducted with special dispatch.” IBG, LLC et al. v. Trading Tech. Int’l, Inc.,
`
`CBM2015-00179, Paper 52 at 3 (May 2, 2016) (citing 35 U.S.C. § 305).
`
`Petitioner’s request for termination or stay based on the assertion that IXI’s
`
`reexam request failed “to raise a new question of patentability, thus likely should
`
`not have been granted in the first place” and therefore risks inconsistent results is
`
`misplaced and fails to establish good cause. Rather, Petitioner asks this panel to
`
`second guess the CRU’s determination that a SNQP has in fact been raised with
`
`respect to claims and art that are not before the Board in the instant IPR. Indeed,
`
`as noted in IXI’s request for reexam (see Ex. 1015 at 7), the Board in Idle Free
`
`Systems, Inc. v. Bergstrom, Inc. previously denied arguments that reexamination of
`
`claims involved in an IPR is inappropriate, even when a reexamination request is
`
`based on the identical art and grounds in the Board’s IPR institution decision:
`
`If a patent owner desires a complete remodeling of its claim structure
`according to a different strategy, it may do so in another type of
`proceeding before the Office. For instance, a patent owner may file a
`request for ex parte reexamination, relying on the Board’s conclusion
`of a petitioner’s having shown reasonable likelihood of success on
`
`2
`
`
`
`certain alleged grounds of unpatentability as raising a substantial
`new question of unpatentability.
`
`Case No. IPR2016-01669
`Patent 7,552,124
`
`
`IPR2012-00027, Paper 26 at 6 (June 11, 2013) (emphasis added).
`
`Petitioner’s Motion fails to address why the Board’s guidance in Idle Free
`
`Systems should be ignored to wholly deny IXI access to reexam proceedings,
`
`especially in a case such as in the instant IPR/reexamination where the claims upon
`
`which reexam was ordered are not involved in the IPR. Indeed, in the only
`
`previous IPR decision cited in Petitioner’s Motion, the Board determined that
`
`allowing an IPR and reexam to proceed concurrently “would result in duplicative
`
`efforts within the Office and would be an inefficient use of Office and Board
`
`resources” and “may result in inconsistencies between the proceedings” precisely
`
`because they “are involving claims that are the same.” Sienna
`
`Biopharmaceuticals, Inc., v. William Marsh Rice University, IPR2017-00046,
`
`Paper 10 at 2 (Apr. 24, 2017) (emphasis added); see also id. at 1 (“These are the
`
`same claims at issue in this inter partes review proceeding that has been instituted
`
`by the Board.”). Contrary to the Board’s reasoning in Sienna, no such risk of
`
`“duplicative” efforts or “inconsistencies” exists in the present case because the
`
`claims that served as the basis for reexam are not involved in the IPR. Rather,
`
`staying or terminating the ’124 Patent Reexam would only postpone a decision on
`
`the patentability of these uninvolved claims to the detriment of IXI.
`
`3
`
`
`
`Petitioner’s Motion not only ignored the clear distinctions between the
`
`Case No. IPR2016-01669
`Patent 7,552,124
`
`
`present proceeding and the facts in Sienna, but also failed to address numerous
`
`other Board decisions in which a motion to stay a reexam co-pending with an AIA
`
`proceeding was denied. See e.g., IBG, CBM2015-00179, Paper 52; M&P Golf,
`
`LLC et al. v. Max Out Golf, LLC, IPR2016-00784, Paper 33 at 3-4 (Mar. 10, 2017)
`
`(“Patent Owner filed 62 new claims and amended independent claims 1 and 4 to
`
`recite subject matter not before us in this inter partes review. . . The new claims
`
`and newly amended claims 1-6 are not part of this inter partes review proceeding.
`
`Staying the reexamination would postpone a decision on the patentability of claims
`
`not involved in this proceeding, or of a narrower scope, all to the detriment of
`
`Patent Owner.”); Kaiser Aluminum v. Constellum Rolled Products Ravenwood,
`
`IPR2014-01002, Paper 24 (Feb. 21, 2015).
`
`For at least the above reasons, the motion should be denied at least because
`
`Petitioner has failed to demonstrate that it is entitled to the requested relief.
`
`II.
`
`PETITIONER HAS NOT POINTED TO ANY AUTHORITY THAT
`SUGGESTS TERMINATION IS APPROPRIATE
`
`Should the Board ultimately decide to exercise its discretion pursuant to 37
`
`C.F.R. § 42.122, IXI submits that such an order should be limited to staying the
`
`’124 Patent Reexam, until and only until a final judgment has been issued in the
`
`instant IPR. Indeed, Petitioner has failed to cite any precedent for its request that
`
`the Board terminate a patentee-initiated reexamination that exclusively involves
`
`4
`
`
`
`claims that are not before the Board (and for which the Board has already denied
`
`Case No. IPR2016-01669
`Patent 7,552,124
`
`
`institution). IXI respectfully submits that termination of the ’124 Patent Reexam
`
`would unduly prejudice IXI by putting claims that are not involved in the instant
`
`IPR in a permanent state of limbo and would, in fact, reward Petitioner for failing
`
`to meet its IPR burden at institution by essentially treating the Board’s preliminary
`
`decision of non-institution with respect to certain claims as a final determination
`
`that the non-instituted claims are unpatentable.
`
`III. CONCLUSION
`For the above reasons, Petitioner’s Motion should be denied.
`
`Dated: September 7, 2017
`
`
`
`Respectfully submitted,
`
`By: /Andrew W. Schultz/
`Andrew W. Schultz, Reg. No. 66,869
`Pepper Hamilton LLP
`125 High Street, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`schultza@pepperlaw.com
`Attorney for Patent Owner
`
`5
`
`
`
`IPR2016-01669
`Patent 7,552,124
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on September 7, 2017, a true and correct copy of the foregoing
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO TERMINATE OR STAY
`CO-PENDING REEXAMINATION was served on the following counsel via email:
`
`
`Naveen Modi
`Joseph E. Palys
`Daniel Zeilberger
`Arvind Jairam
`Paul Hastings LLP
`875 15th Street, N.W.
`Washington, D.C., 20005
`Tel.: (202) 551-1700
`Email: PH-Google-IXI-IPR@paulhastings.com
`
`
`Dated: September 7, 2017
`
`
`
`Respectfully submitted,
`
`By: /Andrew W. Schultz/
`Andrew W. Schultz, Reg. No. 66,869
`Pepper Hamilton LLP
`125 High Street, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`schultza@pepperlaw.com
`
`
`
`
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