Petitioner’s Preliminary Reply
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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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`FACEBOOK, INC., INSTAGRAM, LLC and WHATSAPP INC.,
`Petitioner,
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`v.
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`BLACKBERRY LIMITED,
`Patent Owner
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`Case IPR2019-00942
`Patent 8,677,250
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`PETITIONER’S PRELIMINARY REPLY1
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`1 This Reply was authorized by the Board’s email dated September 17, 2019.
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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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`FACEBOOK, INC., INSTAGRAM, LLC and WHATSAPP INC.,
`Petitioner,
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`v.
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`BLACKBERRY LIMITED,
`Patent Owner
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`
`
`Case IPR2019-00942
`Patent 8,677,250
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`PETITIONER’S PRELIMINARY REPLY1
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`1 This Reply was authorized by the Board’s email dated September 17, 2019.
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`Petitioner’s Preliminary Reply
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`Petitioner respectfully requests that the Board decline to exercise its discretion
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`to deny institution under § 325(d) or § 314.
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`§ 325(d): Patent Owner asserts that Galli (Ex. 1003) is similar to Kirmse
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`(cited during prosecution) because both allegedly “discuss displaying a selectable
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`object in the user interface of an instant message application, which upon selection
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`launches another application.” (POPR at 23-24.) But conclusory assertions of
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`“similarities” do not trigger § 325(d). See Comcast Cable Commc’ns, LLC v. Veveo,
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`Inc., Case IPR2019-00239, Paper 15 at 11 (PTAB July 5, 2019) (“[I]it is axiomatic
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`that references used to examine the patentability of and the references presented in
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`a Petition challenging the same patent will have some similarities.”).
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`Patent Owner’s § 325(d) arguments highlight a key difference between Galli
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`and Kirmse. During prosecution, the applicants amended the claims to further recite
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`“detecting a selection in the instant messaging conversation user interface to switch
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`to the game in progress.” (Ex. 1010 at 008 (emphasis added).) Applicants explained
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`that by “enabling selections within the conversation user interface to initiate the
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`game in progress user interface, game play can be identified both from a contact list
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`view and within a conversation, and navigation between messaging and game play
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`is further facilitated.” (Id. (emphasis added).)
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`But the prior art considered during prosecution did not disclose selection from
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`within the instant messaging conversation user interface. This is confirmed by the
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`1
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`Petitioner’s Preliminary Reply
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`following figure – directly from Patent Owner’s Preliminary Response – which
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`shows the selectable object in Kirmse accessible only from a contact list view,
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`whereas Galli discloses selections from the conversation user interface:
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`(POPR at 24.) Patent Owner’s own figure above shows how Galli provides a key
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`disclosure missing from the prior art before the Examiner.
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`§ 314: Patent Owner has not cited or discussed the General Plastic factors or
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`shown that they favor denial under § 314(a). Petitioner is aware of no prior petitions,
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`by anyone, challenging the ’250 patent. The Petition challenges claims 1, 4-6, 8, 9,
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`and 12-14, while only claims 9 and 14 remain asserted in the litigation. (Ex. 1011
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`at 003.) “[D]iffering claim sets is a factor that weighs against exercise of …
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`discretion under § 314(a) to deny institution based on [parallel litigation].” 3Shape
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`A/S v. Align Tech., Case IPR2019-00160, Paper 9 at 39 (PTAB June 11, 2019).
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`Moreover, the Board in NHK found it significant that the IPR petition relied
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`on the same prior art and arguments as the district court. NHK Spring v. Intri-Plex
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`Techs., Case IPR2018-0072, Paper 8 at 19-20 (PTAB Sept. 12, 2018). But here, the
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`Petitioner’s Preliminary Reply
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`references are not the same. (Ex. 1012 at 003-004.) The key reference cited in the
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`IPR—Galli (Ex. 1003)—is not relied upon in the litigation to show invalidity.
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`In addition, the NHK petitioner did not disclose any intention to seek a stay of
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`the court proceeding. Petitioner here intends to renew its request for a stay,
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`particularly considering that three IPR petitions challenging other patents asserted
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`against Petitioner were recently instituted. See IPR2019-00528 (Paper 8), IPR2019-
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`00516 (Paper 7), IPR2019-00706 (Paper 9).2 Thus, the trial date in the district court
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`is not set in stone. But even if the trial date does not change, institution would be
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`warranted. See RTI Surgical, Inc. v. LifeNet Health, Case IPR2019-00571, Paper 20
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`at 2-3, 8 (PTAB Aug. 12, 2019) (instituting IPR after court litigation and Federal
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`Circuit affirmance because Patent Office and courts had not considered cited prior
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`art).
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`2 On the issue of a stay, Patent Owner in other IPR proceedings involving Petitioner
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`has cited the district court’s ruling in an unrelated case, Cal-Tech v. Broadcom Ltd.
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`et al., Case No. 2:16-cv-3714 (C.D. Cal.), denying a renewed motion to stay. But
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`the district court’s ruling in Cal-Tech has no bearing on how it would likely rule
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`here. The court placed particular importance on the fact that there were asserted
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`claims from all patents in that case that were not the subject of any PTAB
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`proceedings. (Ex. 1013 at 003.) That will not be the case here as noted in the text.
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`3
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`Petitioner’s Preliminary Reply
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`Dated: September 20, 2019
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
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`By:
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`Respectfully submitted,
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`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioner
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`2
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`CERTIFICATE OF SERVICE
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`I hereby certify, pursuant to 37 C.F.R. § 42.6, that a complete copy of the
`attached PETITIONER’S PRELIMINARY REPLY, including all exhibits (Nos.
`1010-1013) and related documents, are being served via electronic mail on the 20th
`day of September, 2019, upon counsel of record for the Patent Owner as follows:
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`
` / Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`COOLEY LLP
`1299 Pennsylvania Ave. NW,
`Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
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`James M. Glass
`Sam Stake
`Ogi Zivojnovic
`QUINN EMANUEL URQUHART &
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`SULLIVAN LLP
`qe-blackberry-ipr@quinnemanuel.com
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`DATED: September 20, 2019
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