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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`World Programming Limited
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`Petitioners
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`v.
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`SAS Institute Inc.
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`Patent Owner
`____________
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`Case No. Unassigned
`Patent 7,447,686
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`PETITIONER’S EXPLANATION OF PARALLEL PETITIONS AND
`RANKING OF PETITIONS
`FOR U.S. PATENT NO. 7,447,686
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`Petition for IPR of U.S. Patent 7,447,686
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`Petitioners provide this Explanation of Parallel Petitions and Notice of
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`Ranking of Petitions pursuant to the July 2019 Update of the Trial Practice Guide.
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`U.S. Patent No. 7,447,686 (the “’686 patent”) is subject to a pending lawsuit
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`entitled SAS Institute Inc., v. World Programming Limited, et. al., Case No. 2-18-
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`cv-00295 (E.D. Tex.) (the “Litigation”) in which Petitioner World Programming
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`Limited is a defendant. The ’686 Patent has 50 claims. Ex. 1001, claims 1-50. In
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`the Litigation, Patent Owner asserted all 50 claims of the ’686 Patent. Given the
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`number of claims being asserted, it is impossible for Petitioner to address all of the
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`claims in just one petition. Petitioner therefore has concurrently filed two Petitions
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`(“Petition 1” and “Petition 2”) relating to the ’686 Patent, which in combination
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`address claims 1-40, 43-48, and 50. Thus, the present circumstance is consistent
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`with the example in the July 2019 Update of the Trial Practice Guide, which states
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`that “the Board recognizes that there may be circumstances in which more than one
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`petition may be necessary, including, for example, when the patent owner has
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`asserted a large number of claims in litigation.”
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`Although Petitioner believes that its two petitions are both meritorious and
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`justified in light of the number of claims being asserted by Patent Owner in the
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`Litigation, Petitioner requests that the Board consider the petitions in the following
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`order:
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`1
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`Petition for IPR of U.S. Patent 7,447,686
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`Rank
`1
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`Petition
`Petition 1
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`Grounds and References
`Ground 1: InterViso and Selvaraj
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`2
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`Petition 2
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`Ground 1: InterViso and Selvaraj
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`Below are some of the material differences between the two petitions:1
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`1.
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`Petition 1:
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`a.
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`Ground 1 – Claims Challenged: 1-12 and 46-48
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`2.
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`Petition 2:
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`a.
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`Ground 1 – Claims Challenged: 13-40, 43-45, and 50
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`As shown above, the grounds set forth in the concurrently filed petitions are not
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`redundant and are materially different because the claims being challenged in each
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`petition differ, with dependent claims being challenged in Petition 2 that are not
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`challenged in Petition 1. A summary of the similarities and material differences
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`between Petitions 1 and 2 are identified in the table below.
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`1 Independent claims are bolded.
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`2
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`Petition for IPR of U.S. Patent 7,447,686
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`Grounds
`Independent Claims Being Challenged:
`claim 1
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`Dependent Claims Being Challenged:
`claims 2-12 and 46-48
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`Dependent Claims Being Challenged:
`claims 13-40, 43-45, and 50
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`Obviousness Combination and
`Motivation to Combine InterViso and
`Selvaraj
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`Petition 1
`✓
`✓
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`✓
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`Petition 2
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`✓
`✓
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`The Board should consider both petitions and not exercise its discretion to
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`deny institution in either IPR given the number of claims being asserted by the
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`Patent Owner in the Litigation. And as shown above, the two petitions are not
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`redundant, and the differences between the two petitions are material given the
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`different dependent claims being challenged.
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`3
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`Petition for IPR of U.S. Patent 7,447,686
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`Date: August 5, 2019
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`Respectfully submitted,
`BAKER BOTTS L.L.P.
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`/s/Christopher V. Ryan/
`Christopher V. Ryan (Reg. No. 54,759)
`98 San Jacinto Blvd., Suite 1500
`Austin, Texas 78701
`Phone: (512) 322-2586
`Facsimile: (512) 322-3686
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`LEAD COUNSEL FOR PETITIONER
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`4
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing PETITIONER’S
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`EXPLANATION OF PARALLEL PETITIONS AND RANKING OF
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`PETITIONS FOR U.S. PATENT NO. 7,447,686 was served on August 5, 2019
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`on the following counsel of record for Patent Owner at the correspondence address
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`of record for the subject patent,
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`John V. Biernacki
`Jones, Day, Reavis & Pogue
`North Point, 901 Lakeside Avenue
`Cleveland OH 44114
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`via Express Mail or by means at least as fast and reliable as Express Mail.
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`Additionally, a courtesy copy was served via FEDERAL EXPRESS on the Patent
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`Owner’s counsel at the following address:
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`Jason W. Cook
`McGuireWoods LLP
`2000 McKinney Ave.
`Suite 1400
`Dallas, TX 75201
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`Respectfully submitted,
`BAKER BOTTS L.L.P.
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`/s/Christopher V. Ryan/
`Christopher V. Ryan (Reg. No. 54,759)
`98 San Jacinto Boulevard, Suite 1500
`Austin, TX 78701-4078
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`ATTORNEY FOR PETITIONER
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`Date: August 5, 2019
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