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`IPR2018-00082
`U.S. Patent No. 6,088,802
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
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`
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`WESTERN DIGITAL CORPORATION
`Petitioner
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`v.
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`SPEX TECHNOLOGIES, INC.
`Patent Owner
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`
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`Patent No. 6,088,802
`Filing Date: June 4, 1997
`Issue Date: July 11, 2000
`Title: PERIPHERAL DEVICE WITH INTEGRATED SECURITY
`FUNCTIONALITY
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`
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`__________________________________________________________________
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`SPEX TECHNOLOGIES, INC.’S
`PATENT OWNER’S SUR-REPLY
`
`Case No. IPR2018-00082
`______________________________________________________________________________
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`
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`I.
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`Petitioner Inexcusably Delayed Filing the Petition
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`A.
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`Institution of Inter Partes Review Is Discretionary
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`Petitioner’s argument that Congress did not authorize the Board to deny
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`inter partes review under the General Plastic framework must be rejected. The
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`Supreme Court interpreted 35 U.S.C. § 314(a) to mean that “the agency’s decision
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`to deny a petition is a matter committed to the Patent Office’s discretion.” Cuozzo
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`Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (citing 5 U.S.C.
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`§ 701(a)(2); 35 U. S. C. § 314(a)). The Board’s decisions in General Plastic Indus.
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`Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (Sept. 6, 2017)
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`(precedential), and NetApp Inc. v. Realtime Data LLC, IPR2017-01354, Paper 16
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`at 10 (Nov. 4, 2017), provide guidance for the exercise of that discretion.
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`Petitioner’s contention that it lacked proper notice that the Board “changed
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`its procedure” is undercut by the fact that the Board did not, in fact, adopt a new
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`procedure, and even if it did, the General Plastic case adopted and made
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`precedential the same non-exhaustive list of factors previously set forth in the
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`NVIDIA case long before Petitioner filed its Petition. General Plastic, IPR2016-
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`01357, Paper 19, at * 3, 8-10 (Sept. 6, 2017), citing NVIDIA, IPR2016-00134,
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`Paper 9 (May 4, 2016). In any event, the General Plastic factors are designed to
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`promote fairness in the inter partes review process, and Petitioner cannot argue in
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`1
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`good faith that preventing it from prejudicing Patent Owner through the use of
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`follow-on petitions somehow deprives Petitioner of due process.
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`B. General Plastic Applies to Different Petitioners
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`In addition to NetApp, the Board has consistently applied the General
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`Plastic factors to protect patent owners from “unfair and inefficient” roadmapping
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`by different petitioners. See, e.g., Google LLC v. Uniloc Luxemberg S.A.,
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`IPR2017-01665, Paper 10 (P.T.A.B., January 11, 2018); Samsung Electronics Co.,
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`Ltd. v. Elm 3DS Innovations, LLC, IPR2017-01305, Paper 11 (P.T.A.B. October
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`17, 2017). Nothing restricts the Board’s discretion to deny institution of serial
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`petitions based solely on the type of petitioner.
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`C. The General Plastic Factors Favor Denial of Institution
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`Factor 3 favors denial. Petitioner fails to address the fact that “all of the
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`Challenged Claims were addressed in both prior petitions.” Paper 6 at 9.
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`Confronted with strong evidence of Petitioner’s knowledge of the 430 IPR and 824
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`IPR and its failure to disclose them in its Mandatory Notices, Petitioner carefully
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`contends that the April 3, 2017 status report “does not establish receipt” without
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`ever denying actual knowledge. Paper 9 at 4. Requiring patent owners to show
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`actual receipt of specific filings in prior inter partes reviews would eviscerate
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`Factor 3. Circumstantial evidence indicating that Petitioner studied the POPRs and
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`institution decisions for 2-6 months before filing should suffice.
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`2
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`Factor 4 favors denial. Petitioner does not deny awareness of three of the
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`four prior art references as of at least March 30, 2017 (likely well before). Paper 6
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`at 10. Petitioner also does not contest that Wang is largely (and increasingly)
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`irrelevant to the Petition. Id. at 10-11. Moreover, roadmapping and tailoring is
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`evidenced by the inclusion of Wang after having six months to study the POPR in
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`the 430 IPR (in which Patent Owner took a contrary position regarding petitioner’s
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`reliance on an FPGA). See IPR2017-00430, Paper 7 at 6, 17, and 22.
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`Factor 5 favors denial. Petitioner contends that it delayed this Petition to
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`wait for the district court’s claim construction ruling, Paper 9 at 5, but if Petitioner
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`preferred to use the district court’s constructions, it would have used the district
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`court’s tentative constructions issued on September 18, 2017 and attached to the
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`Petition, Ex. 1014, and not Patent Owner’s constructions. More likely, Petitioner
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`chose Patent Owner’s constructions because the district court’s tentative
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`indefiniteness ruling would have prevented Petitioner from challenging claims 6, 7,
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`23, 24 and 25. Id.at 40. Petitioner’s explanation should be rejected as disingenuous.
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`Factor 6 favors denial. Petitioner does not explain why the joint defense
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`group did not pursue joint petitions or multiple petitions filed at or around the same
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`time. The fact that this Petition is different from the 824 IPR is irrelevant to
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`whether it could not have been filed earlier to conserve Board resources.
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`3
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`II. NON-COMPLIANCE WITH 37 C.F.R. § 42.104(b)(3)
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`
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`A. The Board Routinely Denies Institution for Non-
`Compliance 37 C.F.R. § 42.104(b)(3)
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`Patent Owner has not waived any challenge under § 42.104(b)(3).
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`Petitioner’s position that any failure to construe claims in a petition must be
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`challenged by a patent owner upon the issuance of a filing date is unsupportable.
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`The Board routinely denies institution (without a rehearing, post-POPR) for non-
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`compliance with section 42.104(b)(3), particularly not identifying how a claim is to
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`be construed. Clearcorrect, IPR2017-01829, Paper 10, at *7 (February 5, 2018);
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`Unified Patents, IPR2017-01525, Paper 11, at *13-14 (December 1, 2017).
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`B.
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`Failure to Adopt a Claim Construction Is Fatal
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`Petitioner fails to comply with its obligation to show “how the challenged
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`claim is to be construed.” 37 C.F.R § 42.104(b)(3). A petitioner cannot comply
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`with this obligation by simply identifying constructions without providing any
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`legal or factual support for the constructions. Petitioner seeks to game the system
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`by avoiding its own indefiniteness positions advanced in the district court while
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`seeking to foist on Patent Owner the burden of disproving its own constructions.
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`Section 42.104(b)(3) derives its authority, in part, from 35 U.S.C. § 312,
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`which requires that “the petition identifies, in writing and with particularity, each
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`claim challenged, the grounds on which the challenge to each claim is based, and
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`4
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`the evidence that supports the grounds for the challenge to each claim.” 35
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`
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`U.S.C. § 312 (a)(3) (emphasis added). Thus, Petitioner must support its challenge
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`with evidence. By merely listing Patent Owner’s constructions without providing
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`any evidentiary support for why they are correct and should be adopted by this
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`Board to potentially cancel the Patent Owner’s claims does not meet Petitioner’s
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`evidentiary burden under the statute.
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`This conclusion is consistent with Petitioner’s Rule 11-type obligations to
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`the Board, particularly with respect to Petitioner’s certification that, to the best of
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`the party’s knowledge, information, and belief, the Petition’s “legal contentions
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`therein are warranted by existing law” and its “factual contentions have evidentiary
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`support.” 37 C.F.R. § 42.11, § 11.18(b)(2). Petitioner’s position that there is no
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`legal basis for requiring a “belief in correctness” in its claim constructions, Paper 9
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`at 7, is an affront to Petitioner’s fundamental obligations to the Board.
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`The Office’s trial practice guide also assumes that the Petitioner believes in
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`correctness of its positions: “where a party believes that a specific term has
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`meaning other than its plain meaning, the party should provide a statement
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`identifying a proposed construction of the particular term and where the disclosure
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`supports that meaning.” See Trial Practice Guide, 77 Fed. Reg. at 48,764.
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`(emphasis added).
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`5
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`Petitioner attempts to distinguish Carefusion on the basis that Petitioner has
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`not explicitly stated that Patent Owner’s district court constructions are incorrect.
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`Paper 9 at 7. Petitioner seems to argue that it should be able to advance
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`constructions that it believes are incorrect as long as it does not admit to doing so.
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`Petitioner should not be rewarded for its lack of candor.
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`Petitioner’s citation to Power Integrations is inapposite because its Petition
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`did not apply the district court’s tentative or actual construction. Paper 9 at 8. The
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`Petition applied Patent Owner’s construction that Petitioner believes are incorrect.
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`The Federal Circuit views “highly questionable” and “with extreme
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`disfavor” contradictory constructions from the same party. See, e.g., Key Pharm. v.
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`Hercon Labs. Corp., 161 F.3d 709, 715 (Fed. Cir. 1998); see also N. Telecom Ltd.
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`v. Samsung Elecs. Co., 215 F.3d 1281, 1290 (Fed. Cir. 2000). The Board should
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`bar petitioners from taking inconsistent positions on the very patent claims it
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`advocates are indefinite in district court so as to preserve the integrity of the Office
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`and its valuable resources. See, e.g., Yniguez v. State of Ariz., 939 F.2d 727, 738-39
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`(9th Cir. 1991) (applying the doctrine of judicial estoppel to prevent a party from
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`changing its position over the course of judicial proceedings) (citations omitted).
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`III. CONCLUSION
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`As set forth herein and in the preliminary response, Patent Owner
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`respectfully requests a denial of institution.
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`6
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`Dated: February 26, 2018
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`Respectfully submitted,
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`/Peter Lambrianakos/
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`
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`
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`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
`Email: plambrianakos@brownrudnick.com
`
`Vincent J. Rubino, III (Reg. No. 68,594)
`Enrique W. Iturralde (Reg. No. 72,883)
`Back-up Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`Email: vrubino@brownrudnick.com
`Email: eiturralde@brownrudnick.com
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`7
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`IPR2018-00082
`U.S. Patent No. 6,088,802
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`CERTIFICATE OF SERVICE
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`A copy of Patent Owner’s Sur-Reply has been served on Petitioner’s
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`attorneys of record at the correspondence of the Petitioner as follows:
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`Brian Buroker
`Gibson, Dunn & Crutcher LLP
`1050 Connecticut Avenue, N.W.
`Washington, D.C. 20036-5306
`bburoker@gibsondunn.com
`
`Blair Silver
`Gibson, Dunn & Crutcher LLP
`1050 Connecticut Avenue, N.W.
`Washington, D.C. 20036-5306
`bsilver@gibsondunn.com
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`Rustin Mangum
`Gibson, Dunn & Crutcher LLP
`3161 Michelson Drive
`Irvine, CA 92612-4412
`rmangum@gibsondunn.com
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`February 26, 2018
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`
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`By:
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`/Peter Lambrianakos /
`
`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
`Email: plambrianakos@brownrudnick.com
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