UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`______________________
`
`IPR2020-00757
`
`U.S. Patent No. 7,012,960
`______________________
`
`PETITIONER’S REPLY TO
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`______________________
`
`IPR2020-00757
`
`U.S. Patent No. 7,012,960
`______________________
`
`PETITIONER’S REPLY TO
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`LIST OF EXHIBITS
`
`Ex. No.
`
`Description
`
`IPR2020-00757
`Patent No. 7,012,960
`
`Previously
`Submitted
`
`Ex. 1001 U.S. Patent No. 7,012,960 to Bourge et al.
`
`Ex. 1002 Declaration of Jeffrey J. Rodriguez, Ph.D.
`
`Ex. 1003 Curriculum Vitae of Jeffrey J. Rodriguez, Ph.D.
`
`Ex. 1004 Prosecution History of U.S. Patent No. 7,012,960
`
`Ex. 1005 Keesman et al. “Transcoding of MPEG bitstreams,”
`Signal Processing: Image Communication, Vol. 8, No.
`6 (September 1996)
`
`Ex. 1006 Neri et al. “Inter-block filtering and downsampling in
`DCT domain,” Signal Processing: Image
`Communication, Vol. 6, No. 4 (August 1994)
`
`Ex. 1007 Dubois et al., “Noise Reduction in Image Sequences
`Using Motion-Compensated Temporal Filtering,” IEEE
`Transactions on Communications, Vol. Com-32, No. 7
`(July 1984)
`
`Ex. 1008 U.S. Patent No. 6,249,549 to Kim
`
`Ex. 1009 U.S. Patent No. 6,792,045 to Matsumura et al.
`
`Ex. 1010 Excerpts from Smith, The Scientist and Engineer’s
`Guide to Digital Signal Processing (1997)
`
`Ex. 1011 Opening Claim Construction Brief of Uniloc 2017 in
`Uniloc 2017 LLC v. Google LLC, Case No. 2:18-CV-
`551-JRG (E.D. Tex. Jan. 23, 2020), ECF No. 121
`
`Ex. 1012 Defendant Google LLC’s Responsive Claim
`Construction Brief in Uniloc 2017 LLC v. Google LLC,
`Case No. 2:18-CV-551-JRG (E.D. Tex. Jan. 23, 2020),
`ECF No. 130
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`i
`
`
`
`
`
`IPR2020-00757
`Patent No. 7,012,960
`
`X
`
`X
`
`X
`
`X
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`X
`
`X
`
`Ex. 1013 U.S. Patent No. 6,456,663 to Kim
`
`Ex. 1014 U.S. Patent No. 5,428,456 to Parulski et al.
`
`Ex. 1015 European Application No. 00402939
`
`Ex. 1016 European Application No. 01400588
`
`Ex. 1017 Declaration of Ingrid Hsieh-Yee, Ph.D.
`
`Ex. 1018 Mitchell et al., MPEG Video Compression Standard,
`Chapman & Hall (1996)
`
`Ex. 1019 Memorandum and Order Granting Defendant’s Motion
`to Transfer Venue to the Northern District of California
`in Uniloc 2017, LLC v. Google LLC, No. 2-18-cv-
`00551 (E.D. Tex. Jun. 19, 2020), ECF No. 163.
`
`Ex. 1020
`
`Joint Stipulation for Stay Pending Transfer in Uniloc
`2017, LLC v. Google LLC, No. 2-18-cv-00551 (E.D.
`Tex. Jun. 10, 2020), ECF No. 162.
`
`Ex. 1021 Order Setting Initial Case Management Conference and
`ADR Deadlines in Uniloc 2017, LLC v. Google LLC,
`No. 3-20-cv-05344 (N.D. Cal. Aug. 6, 2020), ECF No.
`167.
`
`Ex. 1022 Clerk’s Notice re Consent or Declination To Proceed
`Before a Magistrate Judge in Uniloc 2017, LLC v.
`Google LLC, No. 3-20-cv-05344 (N.D. Cal. Aug. 6,
`2020), ECF No. 168.
`
`Ex. 1023 Declination To Proceed Before a Magistrate Judge in
`Uniloc 2017, LLC v. Google LLC, No. 3-20-cv-05344
`(N.D. Cal. Aug. 6, 2020), ECF No. 169.
`
`Ex. 1024 Clerk’s Notice of Pending Reassignment To a U.S.
`District Court Judge in Uniloc 2017, LLC v. Google
`LLC, No. 3-20-cv-05344 (N.D. Cal. Aug. 6, 2020), ECF
`No. 170.
`
`
`
`
`
`
`
`
`
`
`
`
`
`ii
`
`
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`
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`IPR2020-00757
`Patent No. 7,012,960
`
`Ex. 1025 Order Staying Uniloc 2017, LLC v. Google LLC, No. 2-
`18-cv-00551 (E.D. Tex. Feb. 14, 2020), ECF No. 147.
`
`Ex. 1026 Order Continuing Stay in Uniloc 2017, LLC v. Google
`LLC, No. 2-18-cv-00551 (E.D. Tex. Mar. 20, 2020),
`ECF No. 159.
`
`Ex. 1027
`
`Joint Motion To Continue Stay in Uniloc 2017, LLC v.
`Google LLC, No. 2-18-cv-00551 (E.D. Tex. May 19,
`2020), ECF No. 160.
`
`Ex. 1028 Lex Machina 2020 Patent Litigation Report, Excerpted
`
`Ex. 1029 Docket Navigator Listing of Cases with Uniloc 2017
`LLC Filed since June 8, 2018
`
`iii
`
`
`
`IPR2020-00757
`Patent No. 7,012,960
`
`I.
`
`Introduction
`
`Petitioner Google LLC submits this reply to explain why, under Apple Inc. v.
`
`Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), the
`
`Board should not exercise its discretion to deny institution of this IPR in light of a
`
`co-pending district court litigation, Uniloc 2017 LLC v. Google LLC, No. 2:18-cv-
`
`00551 (E.D. Tex.) (“the parallel litigation”).
`
`The circumstances of the parallel litigation are very different from those
`
`suggested by Uniloc in its Preliminary Response (“POPR”). The district court
`
`granted Google’s transfer to the Northern District of California, further delaying
`
`trial. Ex. 1019. The parties have agreed to stay all proceedings until the case is
`
`formally transferred, Ex. 1020, and the formal transfer occurred just yesterday
`
`(August 6, 2020), Ex. 1021. A new schedule including a trial date will not be set
`
`until the case is transferred and assigned to a judge in the Northern District of
`
`California, and most likely not until the parties appear for a status conference before
`
`the new court. Exs. 1022-1024. As a result of these significant changes, the Fintiv
`
`factors weigh against discretionary denial even more strongly than before.
`
`Notably, the Board has declined to exercise its discretion to deny institution
`
`in substantially similar circumstances involving the same parties, finding that “[t]he
`
`various impacts of transferring the Texas litigation proceeding to the Northern
`
`District of California weight against a discretionary denial of the Petition because
`
`1
`
`
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`IPR2020-00757
`Patent No. 7,012,960
`
`that transfer casts a significant degree of uncertainty over the likely progression of
`
`that proceeding.” Google LLC v. Uniloc 2017 LLC, IPR2020-00441, Paper 13 at 38
`
`(July 17, 2020); see also id. at 33-38. The Board should do the same here.
`
`II.
`
`Factor 1: The Litigation Would Likely Be Stayed If This IPR Is
`Instituted
`
`This Fintiv factor favors institution. The Northern District of California
`
`frequently stays cases in view of IPRs, both before and after institution. See, e.g.,
`
`Uniloc 2017 LLC v. Apple Inc., No. 3:19-cv-01904, Dkt. 89 (N.D. Cal. Jan. 30,
`
`2020) (after institution); J&K IP Assets, LLC v. Armaspec, Inc., No. 3:17-cv-07308,
`
`Dkt. 61 (N.D. Cal. Sep. 12, 2019) (same); Cellwitch Inc. v. Tile, Inc., No. 4:19-cv-
`
`01315, Dkt. 68 (N.D. Cal. Jan. 17, 2020) (before institution); Elekta Ltd. v. ZAP
`
`Surgical Sys., Inc., No. 4:19-cv-02269, Dkt. 42 (N.D. Cal. Nov. 8, 2019) (same).
`
`Here, a stay is likely because discovery is not yet complete: most party
`
`depositions remain pending, expert reports have not been served (and will only be
`
`delayed by the transfer), the claim construction hearing has yet to occur, there is no
`
`claim construction order, and no trial date in the Northern District of California is
`
`set. In addition, this IPR would greatly simplify issues in the district court because
`
`the ’960 patent is the only patent at issue and every asserted claim is challenged in
`
`the petition. Given the new court’s unfamiliarity with the case, simplification of the
`
`issues may be a particularly compelling factor. See also Google LLC, IPR2020-
`
`00441, Paper 13 at 35 (finding in similar circumstances that “the fact that the
`
`2
`
`
`
`IPR2020-00757
`Patent No. 7,012,960
`
`Northern District of California has thus far expended no more than minimal
`
`resources weighs in favor of institution”). Thus, a stay pending IPR is likely.
`
`III. Factor 2: The Transfer Moots the Trial Date
`
`Due to the transfer, there is no set trial date. The initial case management
`
`conference set for November 5, 2020 (Ex. 1021, 2) has been vacated until a district
`
`court judge is assigned (Ex. 1024) as Patent Owner did not consent to the jurisdiction
`
`of a magistrate judge (Ex. 1023). It will be several weeks (if not months) before the
`
`new court even sets a schedule including a trial date. Thus, any expectation of a
`
`schedule or trial date would be pure speculation.
`
`As the Board has explained, “[t]he fact that no trial date has been set weighs
`
`significantly against exercising [] discretion to deny institution.” Google LLC,
`
`IPR2020-00441, Paper 13 at 35 (citing Oticon Med. AB v. Cochlear Ltd., IPR2019-
`
`00975, Paper 15 (Oct. 16, 2019) (precedential)); see also Apple Inc. v. Omni MedSci,
`
`Inc., IPR2019-00914, Paper 13 at 36 (PTAB Nov. 6, 2019). The same is true here.
`
`Depending on the congestion of the new court’s docket, the trial date could even be
`
`delayed beyond the decision date for this IPR. Thus, this factor favors institution.
`
`IV. Factor 3: Most Investment in the District Court Litigation Lies in
`the Future and Could Be Avoided By A Stay
`
`The transfer order (Ex. 1019) and the parties’ agreed stay pending transfer
`
`(Ex. 1020) puts a hold on further investment in the district court litigation. Indeed,
`
`the parallel proceeding has been stayed since February 14, 2020. Exs. 1025-1027.
`
`3
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`
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`IPR2020-00757
`Patent No. 7,012,960
`
`Further investment will also likely be postponed by a further stay in the Northern
`
`District of California, especially since such a stay may even be granted prior to
`
`institution here, due October 21, 2020. Elekta, Dkt. 42 (granting stay before
`
`institution because no claim construction order had issued); see also POPR at 6 (n.1).
`
`Uniloc contends that Google delayed filing its petition. POPR at 6. But the
`
`statute provides one year for defendants to prepare and file a petition. 35 U.S.C.
`
`§ 315(b). To the extent Uniloc claims the costs already imposed during the district
`
`court litigation are “unfair,” Fintiv, 11, Uniloc (not Google) chose to file 21 nearly
`
`simultaneous suits in a district court known to proceed quickly.1
`
`V.
`
`Factor 4: The IPR Ground Is Not at Issue in the Litigation
`
`This factor weighs against discretionary denial. While Google’s invalidity
`
`contentions identify some of the prior art at issue here, POPR at 7-10, they do so
`
`alongside many other prior art references and combinations and other invalidity
`
`theories. Ex. 2002 at 15-16, 20-21, 23-26, 78-81. The Board has declined to deny
`
`
`1 Uniloc was one of the most active patent plaintiffs over the last decade and the
`
`most active plaintiff last year. Ex. 1028. It has filed more than 150 litigations in the
`
`last two years alone, often serially asserting the same patent against multiple entities.
`
`Ex. 1029. Instituting this IPR could thus save the resources of courts, future parties,
`
`and the Board itself.
`
`4
`
`
`
`IPR2020-00757
`Patent No. 7,012,960
`
`institution in such situations, since “there is no guarantee that the district court will
`
`even consider . . . the prior art references that are asserted in the present Petition.”
`
`Intel Corp. v. VLSI Tech. LLC, IPR2019-01192, Paper 15 at 12 (Jan. 9, 2020).
`
`VI. Factor 5: Google is the Defendant in the District Court Litigation
`
`Google is the defendant in the district court litigation.
`
`VII. Factor 6: Other Circumstances Weigh Against Discretionary
`Denial
`
`Notwithstanding Uniloc’s protestations,
`
`the challenged claims are
`
`unpatentable as set out in the petition, which followed all applicable rules for an IPR
`
`petition prescribed under 35 U.S.C. § 316 including those set forth in 37 C.F.R.
`
`§ 42.104. The prior art has not been considered by the Office. The public interest
`
`thus weighs against discretionary denial here.
`
`And Google’s IPR is the only challenge to the ’960 patent before the Board.
`
`None has ever been filed before. The Board has explained that a “crucial fact” when
`
`exercising discretion to deny is that “the challenged patent is currently the subject of
`
`[other] instituted IPRs.” Google LLC v. Uniloc 2017 LLC, IPR2020-00115, Paper
`
`10 at 6 (May 12, 2020). That crucial fact is missing here.
`
`VIII. Conclusion
`
`Because the Fintiv factors weigh against discretionary denial, Google requests
`
`the Board grant institution.
`
`5
`
`
`
`IPR2020-00757
`Patent No. 7,012,960
`
`Respectfully submitted,
`
`By: /Naveen Modi/
`Naveen Modi (Reg. No. 46,224)
`
`
`
`Dated: August 7, 2020
`
`
`
`6
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`
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`IPR2020-00757
`Patent No. 7,012,960
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on August 7, 2020, I caused a true and correct copy of the
`
`foregoing Petitioner’s Reply to Patent Owner’s Preliminary Response and
`
`supporting exhibits to be served electronically on counsel for Patent Owner at the
`
`following addresses:
`
`Ryan Loveless (ryan@etheridgelaw.com)
`Brett Mangrum (brett@etheridgelaw.com)
`James Etheridge (jim@etheridgelaw.com)
`Brian Koide (brian@etheridgelaw.com)
`Jeffrey Huang (jeff@etheridgelaw.com)
`
`
`
`By: /Naveen Modi/
`Naveen Modi (Reg. No. 46,224)
`
`
`
`
`
`
`
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`
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