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`Paper No. __
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`GOOGLE LLC, SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`LG ELECTRONICS INC., and
`LG ELECTRONICS U.S.A., INC.,
`Petitioners,
`
`v.
`
`PARUS HOLDINGS INC.,
`Patent Owner.
`_____________
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`_____________
`
`PETITIONERS’ REPLY
`TO PATENT OWNER’S PRELIMINARY RESPONSE
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`TABLE OF CONTENTS
`
`I.
`
`FACTOR 1 (DISTRICT COURT STAY) IS NEUTRAL ................................ 1
`
`II. FACTOR 2 (PROXIMITY OF TRIAL DATE TO FWD) FAVORS
`INSTITUTION .................................................................................................. 1
`
`III. FACTOR 3 (INVESTMENT BY THE COURTS AND PARTIES)
`FAVORS INSTITUTION ................................................................................. 3
`
`IV. FACTORS 4-5 (OVERLAPPING ISSUES AND PARTIES) FAVOR
`INSTITUTION .................................................................................................. 4
`
`V. FACTOR 6 (OTHER CIRCUMSTANCES) FAVORS INSTITUTION .......... 5
`
`A. The Kovatch Grounds Are Strong ............................................................... 5
`
`B. The Kurganov-262 Grounds Are Strong ..................................................... 6
`
`VI. ADDITIONAL CONSIDERATIONS FAVOR INSTITUTION ...................... 7
`
`
`
`
`
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Apple v. Fintiv,
`IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) ............................ 4, 5, 7
`
`Apple v. Fintiv,
`IPR2020-00019, Paper 15 (May 13, 2020) (informative) ..................................1, 3
`
`Apple v. Maxell,
`IPR2020-00204, Paper 11 (June 19, 2020) ........................................................4, 5
`
`Apple v. Seven Networks,
`IPR2020-00156, Paper 10 (June 15, 2020) ............................................... 3, 4, 5, 7
`
`Bradium Techs. v. Iancu,
`923 F.3d 1032 (Fed. Cir. 2019) .............................................................................. 6
`
`Google v. Uniloc 2017,
`IPR2020-00441, Paper 13 (July 17, 2020) ............................................................. 2
`
`In re: Adobe Inc.,
`2020 WL 4308164 (Fed. Cir. July 28, 2020) ......................................................... 3
`
`Multimedia Content Management v. Dish Network,
`Civil No. 6:18-CV-00207 (W.D. Tex. May 30, 2019) (J. Albright) ...................... 1
`
`Nalox-1 Pharms. v. Opiant Pharms.,
`IPR2019-00685, Paper 11 (Aug. 27, 2019) ............................................................ 5
`
`Sand Revolution v. Continental Intermodal Group–Trucking,
`IPR2019-01393, Paper 24 (June 16, 2020) (informative) ......................... 1, 2, 3, 4
`
`STATUTES
`
`35 U.S.C. § 315(b) ..................................................................................................... 4
`
`35 U.S.C. § 316(b) ..................................................................................................... 7
`
`
`
`
`
`
`
`ii
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`
`
`LISTING OF EXHIBITS
`
`
`
`Exhibit Description
`
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`1022
`1023
`1024
`
`1025
`
`
`
`U.S. Patent 7,076,431 (“’431 patent”)
`Declaration of Stuart J. Lipoff (“Lipoff”)
`Curriculum Vitae of Stuart J. Lipoff
`U.S. Patent Publication 2001/0047262 (“Kurganov-262”)
`PCT Publication WO2001/050453 (“Kovatch”)
`U.S. Provisional Application 60/174,371 (“Kovatch-Provisional”)
`U.S. Patent 6,324,534 (“Neal”)
`U.S. Patent 6,418,433 (“Chakrabarti”)
`U.S. Patent 5,787,470 (“DeSimone”)
`U.S. Patent 5,855,020
`U.S. Patent 6,085,160
`U.S. Patent 6,434,524
`McGraw-Hill Electronics Dictionary (6th ed. 1997) (“McGraw-Hill”)
`American Heritage Dictionary of the English Language (3d ed. 1996)
`Dictionary of Computing (4th ed. 2002)
`Scheduling Order (Dkt. 85), Parus v. Apple Inc., 6:19-cv-00432-ADA
`(consolidated cases) (W.D. Tex. Jan. 17, 2020)
`Parus Holding’s Inc.’s First Amended Complaint for Patent
`Infringement, Parus Holdings Inc. v. Apple Inc., 6:19-cv-00432-ADA
`(W.D. Tex. Oct. 21, 2019)
`Parus Holding’s Inc.’s First Amended Complaint for Patent
`Infringement, Parus Holdings Inc. v. Google LLC, 6:19-cv-00433-
`ADA (W.D. Tex. Oct. 21, 2019)
`Parus Holding’s Inc.’s First Amended Complaint for Patent
`Infringement, Parus Holdings Inc. v. LG Electronics, Inc. et al., 6:19-
`cv-00437-ADA (W.D. Tex. Dec. 5, 2019)
`Parus Holding’s Inc.’s First Amended Complaint for Patent
`Infringement, Parus Holdings Inc. v. Samsung Electronics Co., Ltd. et
`al., 6:19-cv-00438-ADA (W.D. Tex. Nov. 19, 2019)
`U.S. Patent 9,451,084 (“’084 patent”)
`U.S. Provisional Application 60/180,344
`U.S. Provisional Application 60/233,068
`Prosecution History of U.S. Patent Application 09/776,996
`(U.S. Patent 6,721,705)
`Prosecution History of U.S. Patent Application 10/821,690
`
`iii
`
`
`
`Exhibit Description
`
`(U.S. Patent 7,076,431)
`Prosecution History of U.S. Patent Application 11/409,703
`(U.S. Patent 7,386,455)
`Prosecution History of U.S. Patent Application 12/030,556
`(U.S. Patent 7,881,941)
`Prosecution History of U.S. Patent Application 12/973,475
`(U.S. Patent 8,185,402)
`Prosecution History of U.S. Patent Application 13/462,819
`(U.S. Patent 9,451,084)
`Prosecution History of U.S. Patent Application 15/269,776
`(U.S. Patent 10,096,320)
`Prosecution History of U.S. Patent Application 16/155,523
`(pending)
`Order Granting Defendant LG’s Motion to Transfer Venue Under 28
`U.S.C. § 1404, Parus Holdings Inc. v. LG Elecs. Inc. & LG Elecs.
`U.S.A., Inc., 6:19-CV-00437-ADA (Aug. 6, 2020)
`Lauren A. Watt & Graham C. Phero, Success of Motions to Stay
`Rising, But Why?, https://www.sternekessler.com/news-
`insights/publications/success-motions-stay-rising-why (Feb. 2020)
`(last checked Aug. 25, 2020)
`Order Regarding Court Operation Under the Exigent Circumstances
`Created by the COVID-19 Pandemic (C.J. Garcia) (Mar. 13, 2020)
`Supplemental Order Regarding Court Operation Under the Exigent
`Circumstances Created by the COVID-19 Pandemic (C.J. Garcia)
`(Apr. 15, 2020)
`Supplemental Order Regarding Court Operation Under the Exigent
`Circumstances Created by the COVID-19 Pandemic (C.J. Garcia)
`(May 8, 2020)
`Supplemental Order Regarding Court Operation Under the Exigent
`Circumstances Created by the COVID-19 Pandemic (C.J. Garcia)
`(June 18, 2020)
`Supplemental Order Regarding Court Operation Under the Exigent
`Circumstances Created by the COVID-19 Pandemic (C.J. Garcia)
`(July 2, 2020)
`Supplemental Order Regarding Court Operation Under the Exigent
`Circumstances Created by the COVID-19 Pandemic (C.J. Garcia)
`(Aug. 6, 2020)
`PACER Docket Activity Report (Criminal Matters) for the United
`
`iv
`
`1026
`
`1027
`
`1028
`
`1029
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`1030
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`1031
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`1032
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`1033
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`1034
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`1035
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`1036
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`1037
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`1038
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`1039
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`1040
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`
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`Exhibit Description
`
`Stated District Court, Western District of Texas, Austin and Waco
`Divisions (01/01/2000-08/28/2020) (last checked Aug. 28, 2020)
`Open Civil Matters Before J. Albright (W.D. Tex.) Not On Appeal,
`Lex Machina, https://law.lexmachina.com (last checked Aug. 31,
`2020)
`Open Civil Matters Before J. Albright (W.D. Tex.) Not On Appeal
`Filed Before 07-22-2019, Lex Machina, https://law.lexmachina.com
`(last checked Aug. 31, 2020)
`Open Patent Matters Before J. Albright (W.D. Tex.) Not On Appeal,
`Lex Machina, https://law.lexmachina.com (last checked Aug. 31,
`2020)
`Open Patent Matters Before J. Albright (W.D. Tex.) Not On Appeal
`Filed Before 07-22-2019, Lex Machina, https://law.lexmachina.com
`(last checked Aug. 31, 2020)
`Judge Albright’s Standing Sample Order Governing Proceedings –
`Patent Case (OGP Version v3.0) (W.D. Tex.)
`MV3 Partners LLC v. Roku, Inc., 6:18-cv-00308-ADA, Docket
`Summary (W.D. Tex.) (last checked Aug. 31, 2020)
`Scott McKeown, District Court Trial Dates Tend to Slip After PTAB
`Discretionary Denials, https://www.patentspostgrant.com/district-
`court-trial-dates-tend-to-slip-after-ptab-discretionary-denials/ (July 24,
`2020) (last checked Aug. 25, 2020)
`E-mail from Bill Trac (Aug. 31, 2020)
`
`1041
`
`1042
`
`1043
`
`1044
`
`1045
`
`1046
`
`1047
`
`1048
`
`
`
`v
`
`
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`THE FINTIV FACTORS WEIGH AGAINST DISCRETIONARY DENIAL
`
`Parus sued Petitioners (Google, Samsung, and LG) in the Western District of
`
`Texas (“WDTX”), and all three Petitioners filed motions to transfer to the Northern
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`District of California (“NDCA”). LG’s motion was recently granted and its case
`
`transferred, based largely on the locations of Google’s evidence and witnesses. Ex.
`
`1032 at 5-7. Google’s and Samsung’s transfer motions are pending.
`
`I.
`
`Factor 1 (District Court Stay) Is Neutral
`
`Given NDCA’s high stay rates, NDCA may well stay LG’s case (and
`
`Google’s/Samsung’s if their transfer motions are granted) pending IPR. Ex. 1033.
`
`For the cases in WDTX (for now), Parus makes the same argument, citing
`
`the same Multimedia case, that the patent owner made in Fintiv regarding WDTX’s
`
`test for granting stays. Compare POPR, 9-10 with IPR2020-00019, Paper 13 at 2-
`
`3. The Fintiv DI rejected that argument and found Factor 1 neutral, “declin[ing] to
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`infer” based on different cases with different facts how WDTX would rule should a
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`stay be requested “in the parallel case here.” IPR2020-00019, Paper 15 at 12 (May
`
`13, 2020) (informative) (“Fintiv DI”); see also Sand Revolution v. Continental
`
`Intermodal Group–Trucking, IPR2019-01393, Paper 24 at 7 (June 16, 2020)
`
`(informative) (“Sand”) (finding Factor 1 neutral; explaining that WDTX “routinely
`
`deny[ing]” stays pending IPR was not “specific evidence” for that particular case).
`
`II.
`
`Factor 2 (Proximity of Trial Date to FWD) Favors Institution
`
`LG now has no trial date. Google’s and Samsung’s trial schedules will also
`
`
`
`1
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`
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`change if their transfer motions are granted. Google v. Uniloc 2017, IPR2020-
`
`00441, Paper 13 at 35-38 (July 17, 2020) (“transferring” to NDCA “casts a
`
`significant degree of uncertainty over the likely progression of that proceeding”).
`
`Even without transfer, Google’s/Samsung’s WDTX trials “currently
`
`scheduled” for only a few months before the FWD deadline are “in relatively close
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`proximity” to the expected FWD; this coupled with “uncertainty… surround[ing]
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`the scheduled trial date” contrasted with the Board adhering to its statutory FWD
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`deadline despite the COVID-19 pandemic, favors institution. Sand at 9-10. Due to
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`the pandemic, WDTX has issued a new suspension order every month for the past
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`six months and suspended all trials scheduled from 3/13/20 to 9/30/20. Exs. 1034-
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`1039. Although Judge Albright intends to resume trials in September, six months
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`of backlogged trials take precedence over Parus’s trials.
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`Judge Albright’s docket has 140 active criminal cases (many of which
`
`require speedy trials) and 692 active civil cases (104 filed before Parus’s). Exs.
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`1040-1042. 465 of the active civil cases are patent cases with Markman hearings,
`
`etc., occupying calendar days that cannot be used for trials; 34 of those are earlier-
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`filed and thus would be expected to beat Parus’s cases to trial. Exs. 1043-1044;
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`Ex. 1045 at 5. It would be unreasonable to assume the backlogged cases could all
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`be concluded in time to hold Parus’s trials within 60 weeks from now even in
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`normal times, let alone during the pandemic, which has forced Judge Albright to
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`
`
`2
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`
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`repeatedly postpone his first patent trial since taking the bench. Ex. 1046 (Dkt. 51,
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`271, 301, 306). That no patent infringement case before Judge Albright has yet
`
`made it to trial reinforces the uncertainty about when Parus’s trials will occur.
`
`Although Judge Albright continues to assume a July 2021 date for Parus’s
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`trials, WDTX’s “ability to set a [trial] schedule” does not mean its “docket
`
`congestion” won’t prevent it from meeting that schedule. In re: Adobe Inc., 2020
`
`WL 4308164, *3 (Fed. Cir. July 28, 2020). There is good reason for the Board to
`
`be skeptical. A recent study found “[i]n the WDTX, 70% of trial dates initially
`
`relied upon by the PTAB to [discretionarily] deny petitions have slid.” Ex. 1047.
`
`Finally, Factor 2 is analyzed on a “sliding scale,” and Petitioners’ diligence
`
`in filing three months before the statutory bar date weighs against denial. Apple v.
`
`Seven Networks, IPR2020-00156, Paper 10 at 9 (June 15, 2020) (“Seven”).
`
`III. Factor 3 (Investment by the Courts and Parties) Favors Institution
`
`In WDTX, like in Sand, only a Markman hearing has been held and only
`
`preliminary infringement and invalidity contentions have been served; otherwise
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`WDTX’s investment has related only to “ancillary matters untethered to the
`
`validity issue.” Sand at 10. “[F]act discovery [will] still [be] ongoing, expert
`
`reports [will] not yet [be] due, and substantive motion practice [will be] yet to
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`come.” Id. at 11. Unlike in Fintiv, the parties will not serve final infringement
`
`and invalidity contentions until after institution. Fintiv DI at 13-14 (Factor 3
`
`
`
`3
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`
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`weighed “somewhat” for denial where final contentions already served). Under
`
`similar facts, Sand found to the extent Factor 3 weighs “at all” for discretionary
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`denial it is “only marginally.” Sand at 11. But Petitioners’ diligence in filing
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`three months earlier than required by § 315(b), and only five weeks after serving
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`invalidity contentions, “weigh[s] against” denial. IPR2019-00019, Paper 11 at 11
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`(Mar. 20, 2020) (precedential) (“Fintiv Order”); Seven at 11.
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`In NDCA, no investment has been made, which favors institution.
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`IV. Factors 4-5 (Overlapping Issues and Parties) Favor Institution
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`None of the parallel district court proceedings concerning the ’431 patent
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`involves the same invalidity grounds and the same parties as this IPR.
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`Three parallel proceedings each involve one of the Petitioners (Google,
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`Samsung, LG) and two involve different defendants (Apple, Amazon). Petitioners
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`have stipulated that if this IPR is instituted, they will not pursue in district court
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`any ground presented in this IPR. Ex. 1048. In the proceedings involving Google,
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`Samsung, and LG, Petitioners’ stipulation will “streamline the court’s
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`consideration of invalidity issues… and create a significant distinction between
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`this case and the underlying litigation,” so Factor 4 outweighs Factor 5 in favor of
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`institution. Apple v. Maxell, IPR2020-00204, Paper 11 at 16 (June 19, 2020)
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`(“Maxell”) (finding Factor 4 weighed against denial in view of stipulation, and
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`instituting despite district court trial likely to occur nine months before FWD).
`
`
`
`4
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`
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`With respect to the other proceedings involving Apple and Amazon, Factor
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`5 outweighs Factor 4 in favor of institution because Petitioners and those
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`defendants are not the same parties. Fintiv Order at 13-14 (citing Nalox-1 Pharms.
`
`v. Opiant Pharms., IPR2019-00685, Paper 11 at 6 (Aug. 27, 2019) (declining to
`
`discretionarily deny where different party asserted the same prior art in litigation)).
`
`Apple and Amazon’s preliminary invalidity contentions list 100+ prior art
`
`publications or products (Ex. 2011) and will need to be narrowed before trial. Ex.
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`1016. It is not clear that any ground in this IPR will be presented by Apple or
`
`Amazon at trial. Indeed, Apple’s IPRs relied on entirely different prior art.
`
`That Parus’s POPR (at 39-42) raises a claim construction issue (about
`
`“identifying the information to be retrieved”) not raised in any of the litigations
`
`further weights Factor 4 toward institution. Seven at 17-18.
`
`V.
`
`Factor 6 (Other Circumstances) Favors Institution
`
`The Petition’s merits tip the balance in favor of institution. Maxell at 17-20;
`
`Seven at 20-22. Parus’s weak POPR arguments highlight the Petition’s strength.
`
`A. The Kovatch Grounds Are Strong
`
`First, Parus’s argument that Kovatch does not disclose an instruction set “for
`
`identifying said information to be retrieved” (POPR at 39-42) is wrong, and
`
`ignores the cited sections of Kovatch that teach executing instructions to find and
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`retrieve the specific information that was requested. Petition at 16, 22 (citing
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`
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`5
`
`
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`Kovatch, 4:25-27, 13:23-14:8 (Kovatch’s system “[n]avigat[es] to the destination
`
`and retrieve[s] requested information.”), 15:11-34, 17:28-18:3)).
`
`Second, the POPR (at 43) alleges “Kovatch never identifies a plurality of…
`
`web sites for answering the inquiry,” but ignores the Petition’s showing (at 22-24)
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`that Kovatch identifies a “list of valid [website] destinations” for retrieving user-
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`requested information, such as Amazon and CD Now websites for a CD request.
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`Third, the POPR (at 46-49) argues the Kovatch/Neal combination does not
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`sequentially access web sites because Neal’s preferred embodiment sequentially
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`accesses catalogs instead of web sites. This ignores the Petition’s combination,
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`which applies Neal’s teaching to make Kovatch’s web site access sequential.
`
`Petition at 12-15; Bradium Techs. v. Iancu, 923 F.3d 1032, 1050 (Fed. Cir. 2019)
`
`(obvious combination cannot be overcome by attacking references individually).
`
`B.
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`The Kurganov-262 Grounds Are Strong
`
`Parus’s POPR (at 52-54) alleges the parent specification provides written
`
`description for claim 9, but fails to identify any description of “periodically
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`search[ing]… to identify new web sites” in either the first (web site-related) or the
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`second (household device-related) embodiment.
`
`The POPR (at 53) alleges “devices in the second embodiment may… be
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`websites,” but ignores the Petition’s explanation (at 51-53) of why that is untrue.
`
`The POPR (at 53-54) alleges the second embodiment’s “ability to detect
`
`
`
`6
`
`
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`whether new devices have been added to the system” is “the same” as the first
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`embodiment, but (1) ignores the Petition’s explanation (at 51-53) that detecting
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`new household devices is not searching for new web sites, and (2) mischaracterizes
`
`the first embodiment’s description. As the Petition (at 51) explained, the first
`
`embodiment disclosure that the POPR (at 54) cites (Ex. 1004, ¶ [0051]) describes
`
`only “polling and reranking” web sites already in the database—not searching to
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`identify and add new web sites.
`
`Regarding claim 14, Parus’s assertion that there is support in Ex. 1004 ¶
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`[0029] mischaracterizes that paragraph as allegedly describing storing “the results
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`of a query” (POPR, 55-56) when in fact it only describes storing records indicating
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`which web sites “provide weather information for multiple days.” See Petition, 64.
`
`VI. Additional Considerations Favor Institution
`
`The Board’s role in supporting “the economy, [and] integrity of the patent
`
`system” weighs particularly strongly in favor of institution here, where Parus has
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`asserted unpatentable claims against virtually every major player in the mobile
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`device industry—a massive industry of immense importance to the nation’s
`
`economy. 35 U.S.C. § 316(b); see Seven at 7 (“[I]n evaluating the factors, the
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`Board holistically views whether denying or instituting review best serves the
`
`efficiency and integrity of the system.”) (citing Fintiv Order at 6).
`
`
`Date: Aug. 31, 2020
`
`Respectfully submitted,
`/Elisabeth Hunt/ Elisabeth H. Hunt, Reg. No. 67,336
`
`
`
`7
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`
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (e)(4)
`
`I certify that on August 31, 2020, I will cause a copy of the foregoing
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`document, including any exhibits filed therewith, to be served via electronic mail,
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`as previously consented to by Patent Owner, upon the following:
`
`Michael J. McNamara
`Michael T. Renaud
`William A. Meunier
`Andrew H. DeVoogd
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`Date: August 31, 2020
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`mmcnamara@mintz.com
`mtrenaud@mintz.com
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`wameunier@mintz.com
`ahdevoogd@mintz.com
`
`/MacAulay S. Rush/
`MacAulay S. Rush
`Paralegal
`WOLF, GREENFIELD & SACKS, P.C.
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