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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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`GOOGLE LLC
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2020-00757
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`PATENT 7,012,960
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`PATENT OWNER SUR REPLY TO PETITIONER’S REPLY
`TO THE PRELIMINARY RESPONSE
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`IPR2020-00757
`U.S. Patent No. 7,012,960
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`Google’s belated arguments as to discretionary denial fail to support Google’s
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`request that the Board institute trial, despite the advanced stage of a parallel district
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`court proceeding. Google does not persuasively dispute that, even after transfer of
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`the litigation between the same parties, (1) there is no evidence that a stay is likely or
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`(2) there is no evidence that a final written decision here would necessarily precede
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`a jury trial, and (3) it is a demonstrable and undisputed fact that the validity issues in
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`these parallel proceedings completely overlap. Accordingly, institution should be
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`denied for the reasons emphasized here and in Uniloc’s Preliminary Response.
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`A. There is no evidence the district court would grant a stay (Factor 1).
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`Google does not dispute that Apple v. Fintiv1 “considers fact-specific and case-
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`specific guidance from the district court, which is entirely, lacking here.” POPR at
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`5. At most, Google’s Reply generically asserts that the Northern District of California
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`“frequently” (and hence admittedly not always) stays cases in view of IPRs; and
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`Google cites cases without regard to facts and analyses set forth therein.
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`Google neglects to mention that one of the cases it cites as granting a stay after
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`a Board decision on institution was based on an unopposed motion. See Uniloc 2017
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`LLC v. Apple Inc., No. 3:19-cv-01904, Dkt. 89 (N.D. Cal. Jan. 30, 2020). The two
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`Northern District of California cases Google cites as granting stays before a Board
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`decision on institution both acknowledge that motions to stay are highly
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`individualized matters. Cellwitch Inc. v. Tile, Inc., No. 4:19-cv-01315, Dkt. 68 (N.D.
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`Cal. Jan. 17, 2020); Elekta Ltd. v. ZAP Surgical Sys., Inc., No. 4:19-cv-02269, Dkt.
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`1 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`(precedential) (“Fintiv”).
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`1
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`IPR2020-00757
`U.S. Patent No. 7,012,960
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`42 (N.D. Cal. Nov. 8, 2019). For example, in Cellwitch, the court found it significant
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`that the parallel IPR “sought review of every claim in the [challenged patent].” Slip
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`op. at 3. Here, the petition seeks review of only claims 1, 4 and 5.
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`Google also does not deny, or even acknowledge, that Cellwitch also
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`considered the fact that “[c]laims [sic] construction briefing has not yet been filed”
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`weighed in favor of a stay. POPR 6 (citing Cellwitch, at 4). This factor weighs
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`against a stay here because claim construction briefing in the parallel proceeding was
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`completed long ago and is made of record as Exhibits 1010, 1011, and 2002.
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`Cellwitch also found that the defendant seeking stay had “instigated the IPR
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`proceedings in a timely fashion.” Id. (citing Cellwitch, at 5). Here, Google offers no
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`explanation for why it delayed filing its petition until seven months after it had served
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`its overlapping invalidity contentions in litigation (Ex. 2002), and long after the court
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`and the parties had already expended considerable resources in litigation.
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`Cellwitch also favorably cites Finjan, Inc. v. Symantec Corp., 139 F. Supp. 3d
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`1032, 1037 (N.D. Cal. 2015) for the proposition that the court may consider whether,
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`if the court “were … to deny the stay until a decision on institution is made, the parties
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`and the Court would expend significant resources on issues that could eventually be
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`mooted by the IPR decision.” Cellwitch, at 5. Here, Google fails to articulate what
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`court resources, if any, allegedly would be expended in the interim.
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`Each of the other Northern District of California opinions Google cites
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`similarly consider highly individualized factors applied to the particular facts of the
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`case. Google’s speculative and unsupported assertion that the Northern District of
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`California will likely stay the litigation simply cannot be squared with the analyses
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`2
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`IPR2020-00757
`U.S. Patent No. 7,012,960
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`applied in the court opinions Google has cited. Google’s failure to address the
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`analysis in the opinions it cites is both telling and unsurprising, given Uniloc
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`anticipated Google would merely offer citations without explanation. POPR. 5‒7.
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`Accordingly, Google’s bald assertion concerning the mere possibility of a stay,
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`which is theoretically present in any case, fails.
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`B. Google fails to establish it is likely trial will be rescheduled in the
`transferee district well over an entire year from now (Factor 2).
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`Google suggests that the court’s transfer order renders moot the consideration
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`of the proximity of the court’s trial date to the Board’s projected statutory deadline
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`for a final written decision. Rep. 3. According to Google, predicting a trial date in
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`the transferee district would be speculative. Id. However, the new trial date need not
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`be predicted with absolute certainty. It is sufficient to consider the likelihood of a
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`jury trial being completed sometime prior to an expected final written decision.
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`Google does not deny that trial would have to be rescheduled in the transferee
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`district well over an entire year from now for this factor to weigh against
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`discretionary denial. Google also does not deny that this is highly unlikely under the
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`circumstances. That trial will likely be expedited in the transferee district is evidenced
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`at least by the undisputed fact that claim construction briefing was competed long
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`ago, which is a factor the transferee district considers as disfavoring a stay.
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`C. Google fails to address or even acknowledge the substantial investment
`in the parallel proceeding by the court and the parties (Factor 3).
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`Google misstates this factor as being forward looking. Rep. 3. In doing so,
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`Google fails to recognize that the third factor is retrospective at least in that it weighs
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`3
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`IPR2020-00757
`U.S. Patent No. 7,012,960
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`the amount of investment the parties and court have put into parallel litigation.
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`Indeed, the Apple v. Fintiv opinion repeatedly uses the past tense in defining this
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`factor in the context of work already completed. Fintiv, at 9‒10. As explained above,
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`the investment of resources and advanced stage in the parallel proceeding (prior to
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`transfer) is evidenced at least by the completion of claim construction briefing.
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`D. The Petition presents completely overlapping issues (Factor 4)
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`Google waived any argument concerning this well-established factor because
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`it clearly is part of the NHK analysis deemed precedential before Google filed its
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`petition. See POPR 7 (citing NHK, IPR2018-00752, Paper 8 at 19–20). In any event,
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`Google’s belated argument grossly misapplies this factor.
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`Google flips this factor on its head by arguing it weighs against discretionary
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`denial here ostensibly because its patentability challenges before the Board represent
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`only some, but not all, of the myriad of theories advanced in parallel litigation. Rep.
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`4‒5. However, under Fintiv, this factor weighs in favor of denial if “the petition
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`includes the same or substantially the same claims, grounds, arguments, and evidence
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`as presented in the parallel proceeding”; and this factor weighs against denial “if the
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`petition includes materially different grounds, arguments, and/or evidence than those
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`presented in the district court.” Fintiv, 12‒13. Application of this factor is
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`straightforward.
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`Google does not dispute that its petition includes the same or substantially the
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`same claims, grounds, arguments, and evidence as presented in the parallel
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`proceeding; and it remains undisputed that Google’s petition does not include
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`4
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`IPR2020-00757
`U.S. Patent No. 7,012,960
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`materially different grounds, arguments, and/or evidence. POPR 7‒8 (comparing Pet.
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`3‒4 with Ex. 2001). Accordingly, there can be no reasonable dispute that this factor
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`weighs in favor of denial.
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`E. Google is the Petitioner and defendant in the district court (Factor 5).
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`F. The other circumstances identified by Google are irrelevant or
`incorrect (Factor 6).
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`Fintiv instructs that “if the merits of the grounds raised in the petition are a
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`closer call, then that fact has favored denying institution when other factors favoring
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`denial are present.” Fintiv, 15. This factor further supports denial at least in view of
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`the example weaknesses of the petition Uniloc had identified. See generally POPR.
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`G. Conclusion.
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`The factors summarized in Fintiv, when properly understood and applied here,
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`and in view of undisputed facts, weigh in favor of discretionary denial.
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`Date: August 11, 2020
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`Respectfully submitted,
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`By: /Brett A. Mangrum/
`Ryan Loveless
`Reg. No. 51,970
`Brett A. Mangrum
`Reg. No. 64,783
`Attorneys for Patent Owner
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`5
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`CERTIFICATE OF COMPLIANCE
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`The undersigned certifies that this Sur Reply complies with the Board’s
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`IPR2020-00757
`U.S. Patent No. 7,012,960
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`authorization of a sur reply of no more than 5 pages.
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`Date: August 11, 2020
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`Respectfully submitted,
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`By: /Brett A. Mangrum/
`Ryan Loveless
`Reg. No. 51,970
`Brett A. Mangrum
`Reg. No. 64,783
`Attorneys for Patent Owner
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`6
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`IPR2020-00757
`U.S. Patent No. 7,012,960
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that the foregoing
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`was served via email to Petitioner’s counsel of record.
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`Date: August 11, 2020
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`Respectfully submitted,
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`By: /Brett A. Mangrum/
`Ryan Loveless
`Reg. No. 51,970
`Brett A. Mangrum
`Reg. No. 64,783
`Attorneys for Patent Owner
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`7
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