UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`PARUS HOLDINGS, INC.,
`Patent Owner.
`
`Case No. IPR2020-00686
`U.S. Patent No. 7,076,431
`
`PATENT OWNER’S SUR-REPLY
`ADDRESSING PETITIONER’S REPLY ON THE FINTIV FACTORS
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`PARUS HOLDINGS, INC.,
`Patent Owner.
`
`Case No. IPR2020-00686
`U.S. Patent No. 7,076,431
`
`PATENT OWNER’S SUR-REPLY
`ADDRESSING PETITIONER’S REPLY ON THE FINTIV FACTORS
`
`
`
`Case No. IPR2020-00686
`Patent No. 7,076,431
`
`TABLE OF CONTENTS
`Fintiv Factor 1: “Whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted” .................................................. 1
`Fintiv Factor 2: “proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision” ............................................... 2
`Fintiv Factor 3: “investment in the parallel proceedings” ......................................... 3
`Fintiv Factor 4: “overlap between issues raised in the petition and in the
`parallel proceeding” ......................................................................................... 5
`Fintiv Factor 5: Apple does not contest that this factor weighs in favor of
`denial. ............................................................................................................... 6
`Fintiv Factor 6: “other circumstances … including the merits” ................................ 6
`
`i
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`
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`Case No. IPR2020-00686
`Patent No. 7,076,431
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc., v. Fintiv, Inc.,
`IPR2020-00019, Paper 15 (PTAB May 13, 2020) ......................................passim
`NHK Spring Co. Ltd. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) ......................................... 2, 6, 7
`
`Sand Revolution II, LLC, v. Continental Intermodal Group – Trucking
`LLC,
`IPR2019-01393, Paper 24 (PTAB June 16, 2020) ........................................... 3, 6
`Sand Revolution II, LLC v. Continental Intermodal Group-Trucking
`LLC,
`IPR2019-01393, Paper 20 (PTAB Apr. 13, 2020) ............................................... 1
`
`ii
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`Case No. IPR2020-00686
`Patent No. 7,076,431
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`TABLE OF EXHIBITS
`Description
`Order Denying Motion to Stay Pending Inter Partes Review, C.A. No.
`6:18-cv-00207-ADA
`Exhibit A3 Ladd Claim Chart 7076431
`Exhibit C Obviousness Claim Chart 7076431 (Corrected)
`Reserved
`Reserved
`Standing Order Regarding Scheduled Hearings in Civil Cases, 6:19-
`cv-00432-ADA
`Claim Construction Order, 1:20-cv-00351-ADA
`Claim Construction Order, 6:19-cv-00532-ADA
`Claim Construction Order, 6:18-cv-00308-ADA
`U.S. Patent No. 6,157,705 (Perrone)
`“instruction set” excerpt from 1997 Novell’s Dictionary of
`Networking
`Defendants’ Opening Claim Construction Brief, 6:19-cv-00432-ADA
`Excerpt of Case Docket Sheet, 6-19-cv-00278-ADA
`Excerpt of Case Docket Sheet, 6-19-cv-00514-ADA
`Excerpt of Case Docket Sheet, 6-19-cv-00515-ADA
`Excerpt of Case Docket Sheet, 7-18-cv-00147-ADA
`
`Exhibit
`2001
`
`2002
`2003
`2004
`2005
`2006
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`2007
`2008
`2009
`2010
`2011
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`2012
`2013
`2014
`2015
`2016
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`Case No. IPR2020-00686
`Patent No. 7,076,431
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`Fintiv Factor 1: “Whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted”
`Apple’s conclusory assertion that there is an “absence of specific evidence”
`
`on this factor is wrong and ignores all of the previously identified specific evidence
`
`showing that the Court in the Parallel Proceedings does not stay trials in these
`
`circumstances. The Board need not speculate on the two questions posed by this
`
`factor. First, has the Court “granted a stay”? No, it has not, and Apple does not argue
`
`or present evidence otherwise. Second, does “evidence exist[] that one may be
`
`granted if [the IPR] proceeding is instituted”? No, there does not, and Apple, even
`
`after additional briefing on this issue, does not even try to identify any.
`
`Apple cites PTAB’s Sand decision, but attempts neither to explain why that
`
`decision somehow applies here nor to support its conclusory assertion of “lack of
`
`evidence.” Apple cannot because, unlike the Patent Owner in Sand, Parus’s POPR
`
`identifies specific evidence showing the Court does not grant stays in these
`
`circumstances. Sand Revolution II, LLC v. Continental Intermodal Group-Trucking
`
`LLC, IPR2019-01393, Paper 20, 2-6. Patent Owner identified Judge Albright’s
`
`three-factor test, analyzed and applied the evidence to each factor, and showed that
`
`all three factors establish that the Court will not stay the Parallel Proceedings even
`
`if the requested IPR is instituted. (POPR, 8-9). Indeed, to date, Judge Albright has
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`denied every opposed motion to stay pending proceedings in his court pending
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`1
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`Case No. IPR2020-00686
`Patent No. 7,076,431
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`resolution of an instituted IPR.1
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`Apple ignores all of this. Because that trial will proceed as scheduled and
`
`resolve Apple’s and its co-defendants’ invalidity defenses before a final written
`
`decision deadline, this factor weighs heavily in favor of denying institution.
`
`Fintiv Factor 2: “proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision”
`In Fintiv, the Board found that this factor weighed in favor of denying
`
`institution because—as here—the Parallel Proceeding trial was scheduled to begin
`
`two months before the final written decision was due. Apple Inc., v. Fintiv, Inc.,
`
`IPR2020-00019, Paper 15 at 13 (PTAB May 13, 2020). Apple does not dispute that
`
`the jury trial here is scheduled for two months before the FWD deadline (just as in
`
`Fintiv), but nonetheless attempts to argue that this factor somehow favors institution
`
`by relying on two prior PTAB decisions. But neither supports Apple’s argument. For
`
`example, Apple points to Apple Inc. v. Maxell, Ltd., but there the Board found (as
`
`required under the Precedential-designated NHK and Fintiv decisions) that an earlier
`
`trial date means that “[t]his factor favors the exercise of discretionary denial.” NHK
`
`Spring Co. Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8, 20 (PTAB Sept.
`
`12, 2018) (precedential); and Fintiv, Paper 11 at 17.
`
`Apple’s reliance on the Sand decision for this factor is equally misplaced. In
`
`1 Based on Patent Owner’s research, Judge Albright has denied every opposed
`motion to stay he has ruled on. See Ex. 2001 and 2013-2016.
`
`2
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`Case No. IPR2020-00686
`Patent No. 7,076,431
`Sand, there was extensive evidence that the district court intended to and would
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`postpone the earlier trial date in that particular case. Sand Revolution II, LLC, v.
`
`Continental Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at 8-10
`
`(PTAB June 16, 2020). The opposite is true here, because Judge Albright already
`
`has confirmed that the Parallel Proceeding will proceed as scheduled despite the
`
`ongoing pandemic. (Ex. 2006).
`
`Apple cites to a W.D. Tex. General Order canceling trials but fails to inform
`
`the Board that this order only concerned trials scheduled to occur between May
`
`8, 2020 and June 30, 2020. (Reply at 2; Ex. 1035). The Parallel Proceeding is
`
`scheduled for July 2021, and Apple does not address or dispute that Judge Albright
`
`intends for this trial to proceed “as scheduled.” (Ex. 2006). Apple’s speculation
`
`about what other courts are doing in other proceedings is irrelevant. This Court has
`
`already indicated that this trial will proceed two months prior to the FWD deadline.
`
`This factor thus weighs heavily in favor of denying institution.
`
`Fintiv Factor 3: “investment in the parallel proceedings”
`In an effort to avoid the effect of the extensive work and resources both the
`
`parties and the Court will have expended both by the time of the Institution Decision
`
`and the earlier trial, Apple asserts that the “the relevant question is what resources
`
`the Court has invested into the question of invalidity and, in that regard, the answer
`
`is none.” (Reply at 3). Both assertions are wrong.
`
`3
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`Patent No. 7,076,431
`The PTAB’s precedential Fintiv opinion does not limit Factor 3 to invalidity,
`
`but instead states that the Board should broadly consider the “investment in the
`
`parallel proceeding by the Court and the parties.” Fintiv, Paper 11 at 6, 9-12. Fintiv
`
`does not limit the relevant investments to invalidity, but explains that “more work
`
`completed by the parties and court in the parallel proceeding tends to support the
`
`arguments that the parallel proceeding is more advanced, a stay may be less likely,
`
`and instituting would lead to duplicative costs.” Fintiv, Paper 11 at 10. One example
`
`of an investment that Fintiv identifies as favoring denial under this factor is claim
`
`construction. Fintiv, Paper 11 at 10. This alone means this factor weighs in favor of
`
`denial here because (as established in Parus’s POPR and as Apple does not dispute)
`
`by the time the Board issues its institution decision, the parties will have already
`
`completed all claim construction discovery and briefing, and the Court will have
`
`already held its Markman hearing and issued its claim construction order. (Ex. 1032,
`
`Scheduling Order). And even more work has already been done, and will be done,
`
`by the time of the institution decision, including document productions, exchanging
`
`infringement and invalidity contentions, extensive briefing, argument, and rulings
`
`on motions to dismiss and on venue, and fact discovery. (E.g., POPR at 11).
`
`The assertion that the Court (and the parties) will not have expended any
`
`resources on invalidity issues also is incorrect. Contention discovery began months
`
`ago, including discovery on Defendants’ invalidity contentions. Moreover, the
`
`4
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`Patent No. 7,076,431
`Court’s claim construction order will undoubtedly affect validity issues, and Apple
`
`does not and cannot argue otherwise. Finally, before any Final Written Decision in
`
`the requested IPR, the Court and the parties will have already expended the time,
`
`money and resources necessary to completely litigate and conduct a jury trial on the
`
`entire parallel litigation—including invalidity issues. (POPR at 11).
`
`For any and all of these reasons, “instituting would lead to duplicative costs”
`
`and this factor weighs against institution.
`
`Fintiv Factor 4: “overlap between issues raised in the petition and in the
`parallel proceeding”
`Apple’s offer to narrowly stipulate that “if the IPR is instituted, Apple will
`
`not pursue the same grounds in the district court litigation” does not remove the
`
`overlap of issues raised in the petition and the parallel proceeding. First, complete
`
`overlap still exists because Apple has offered only a conditional stipulation from
`
`itself. As established in the POPR, the other co-defendants in the Parallel
`
`Proceedings are also asserting the same art there as in Apple’s Petition. (POPR at
`
`12; Ex. 2003). Apple’s conditional stipulation thus will not prevent the Petition art
`
`from still being asserted in the Parallel Proceeding, so complete overlap still exists.
`
`Beyond this, there is still a large degree of overlap as to Apple itself because
`
`Apple’s offered stipulation is so narrow that Apple would still be free to continue
`
`asserting in the Parallel Proceeding the same type of invalidity grounds asserted in
`
`5
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`Case No. IPR2020-00686
`Patent No. 7,076,431
`the Petition. Under the narrow stipulation, Apple can (and is) still pursuing invalidity
`
`on the basis of prior art patents or printed publications, just like in the Petition. That
`
`Apple has attempted to circumvent the spirit and purpose of the Fintiv and NHK
`
`decisions by offering to pursue two sets of prior art patents and publications in
`
`parallel does not change that it is seeking to try the validity of the same challenged
`
`claims in two different forums. This is the clichéd two bites at the apple, and creates
`
`the exact type of wasteful and needless inefficiencies that IPRs and the NHK and
`
`Finitv decisions are intended to avoid. See, e.g., Fintiv, Paper 11 at 5-6.
`
`To this end, the Sand decision relied on by Apple warns that to convincingly
`
`move this factor towards favoring institution (dependent, of course, on the other
`
`factors), a Petitioner (and here the other co-defendants) should broadly stipulate that
`
`they “would not pursue any ground that could be raised under §§ 102 or 103 on the
`
`basis of prior art patents or printed publications.” Sand, Paper 24, Footnote 5. Apple
`
`and the co-defendants have not done so, so this factor still weighs in favor of denial.
`
`Fintiv Factor 5: Apple does not contest that this factor weighs in favor of
`denial.
`Fintiv Factor 6: “other circumstances … including the merits”
`Unless the merits are more than a “close call,” this factor favors denial. The
`
`Reply identifies no reason to conclude the merits are even a close call. For example,
`
`Parus’s POPR establishes that the Petition does not identify the claimed “at least one
`
`instruction set for identifying said information to be retrieved” required in each
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`6
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`Case No. IPR2020-00686
`Patent No. 7,076,431
`challenged claim. (POPR at 45-51). Apple’s Reply offers no rebuttal: it does not
`
`explain how the identified prior art URLs could be the claimed “instruction set,” nor
`
`does it attempt to explain how the Petition alleges, much less provides evidence of,
`
`these URLs somehow “identifying said information to be retrieved.” (Reply at 5).
`
`Similarly, Apple’s Reply concedes that none of the asserted references teaches
`
`“sequentially access[ing]” a plurality of pre-selected web sites until the information
`
`requested by a user is found, as required by every challenged claim. The Reply
`
`concludes that three to four different references could be combined to meet this (and
`
`the many other missing elements) but does not address or refute any of the reasons
`
`in Parus’s POPR establishing that the Petition fails to show it was obvious to
`
`combine these references. For example, Apple does not address or refute that (1)
`
`secondary references Kurosawa and Goedken are irrelevant to primary reference
`
`Ladd (and the challenged claims) because they do not concern voice activated
`
`systems; or (2) that the features of these secondary references, if combined with
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`Ladd’s system, would render it useless as for its intended purpose as a voice
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`browsing system.2
`
`2 Apple’s remaining arguments are contrary to the precedential NHK and Fintiv
`decisions and exceed the scope of this Board’s order limiting Apple’s requested
`additional briefing to addressing only Parus’s POPR arguments on the Fintiv
`factors. Moreover, Fintiv is binding on the Board; if Apple disagrees with the
`Fintiv decision, Apple’s recourse is to seek review by the Precedential Opinion
`Panel.
`
`7
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`
`
`Dated: August 6, 2020
`
`Case No. IPR2020-00686
`Patent No. 7,076,431
`
`/Michael J. McNamara/
`Michael J. McNamara (Reg. No. 52,017)
`Michael T. Renaud (Reg. No. 44,299)
`William A. Meunier (Reg. No. 41,193)
`Andrew H. DeVoogd (pro hac vice to be filed)
`MINTZ, LEVIN, COHN, FERRIS, GLOVSKY
`AND POPEO, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: 617-348-1884
`Facsimile: 617-542-2241
`E-mails: mmcnamara@mintz.com
` mtrenaud@mintz.com
` wameunier@mintz.com
` ahdevoogd@mintz.com
`
`8
`
`
`
`Case No. IPR2020-00686
`Patent No. 7,076,431
`
`CERTIFICATE OF SERVICE
`
`I certify that copies of Patent Owner’s Sur-Reply Addressing Petitioner’s
`
`Reply on the Fintiv Factors and accompanying exhibits are being served by
`
`electronic mail on the following counsel of record:
`
`Lead Counsel
`Jennifer C. Bailey (Reg. No. 52,583)
`ERISE IP, P.A.
`7015 College Blvd., Ste. 700
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`Jennifer.Bailey@eriseip.com
`
`Backup Counsel
`Adam P. Seitz (Reg. No. 52,206)
`ERISE IP, P.A.
`7015 College Blvd., Ste. 700
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`Adam.Seitz@eriseip.com
`
`Dated: August 6, 2020
`
`/Michael J. McNamara/
`Michael J. McNamara (Reg. No. 52,017)
`
`9
`
`
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