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
`U.S. Patent No. 7,076,431
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S
`REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`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
`U.S. Patent No. 7,076,431
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S
`REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`Case No. IPR2020-00846
`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” .................................................. 2
`Fintiv Factor 2: “proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision” ............................................... 3
`Fintiv Factor 3: “investment in the parallel proceedings” ......................................... 4
`Fintiv Factor 4: “overlap between issues raised in the petition and in the
`parallel proceeding” ......................................................................................... 5
`Fintiv Factor 5: “whether the petitioner and the defendant in the parallel
`proceeding are the same party” ....................................................................... 7
`Fintiv Factor 6: “other circumstances … including the merits” ................................ 7
`
`i
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`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`505 Games Interactive, Inc. and 505 Games (U.S.), Inc. v. Babbage
`Holdings LLC,
`IPR2014-00954, Paper 17 (PTAB Aug. 22, 2014) ............................................... 1
`Agilysys, Inc. v. Ameranth, Inc.,
`CBM2014-00014, Paper 11 (PTAB Feb. 11, 2014) ............................................. 2
`
`ii
`
`
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`
`TABLE OF EXHIBITS
`Description
`Order Denying Motion to Stay Pending Inter Partes Review, C.A.
`No. 6-18-cv-00201
`Exhibit A9 Kovatch Claim Chart 7076431
`Exhibit C Obviousness Claim Chart 7076431 (Corrected)
`Reserved
`Reserved
`Standing Order Re Scheduled Hearings in Civil Cases, 19-cv-00432
`Claim Construction Order, 1-20-cv-00351
`Claim Construction Order, 6-19-cv-00532
`Claim Construction Order, 6-18-cv-00308
`U.S. Patent No. 6,157,705 (Perrone)
`Defendants’ Corrected Invalidity Contentions, 6-19-cv-00432
`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
`Markman Hearing Transcript, 6-19-cv-00432-ADA
`Claim Construction Order, 6-19-cv-00432-ADA
`Order Consolidating Cases, 6-19-cv-00432-ADA
`
`Exhibit
`2001
`
`2002
`2003
`2004
`2005
`2006
`2007
`2008
`2009
`2010
`2011
`2012
`2013
`2014
`2015
`2016
`2017
`
`iii
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`
`
`Case No. IPR2020-00686
`Patent No. 7,076,431
`
`Patent Owner Parus sued Petitioners Samsung, LG, and Google (and non-
`
`Petitioners Amazon and Apple) in the District Court for the Western District of
`
`Texas for infringement of the challenged patent. Petitioners argue that the
`
`subsequent transfer of the dispute between Parus and LG (but not the other
`
`Petitioners or Apple) materially affects the applicability of NHK and Fintiv to this
`
`Petition. It does not.
`
`That transfer does not alter that the Western District of Texas Court is
`
`conducting a trial between Parus, Petitioners, Amazon, and Apple concerning the
`
`validity of the challenged patent (included the references asserted by Petitioners
`
`here) in July 2021, three months before any final written decision deadline in the
`
`requested IPR. In light of this earlier trial date to resolve the same issues as those
`
`presented by Petitioners’ Petition, all six Fintiv factors weigh in favor of denying
`
`the present Petition to serve “the efficiency and integrity of the system.” This is
`
`true regardless of whether there may be another later trial between Parus and LG.
`
`Moreover, that one of the named Petitioners (LG) has elected to not
`
`participate in that earlier trial is of no matter because the Petitioners chose to
`
`jointly file the Petition and thus are treated as a “single party filing the petition, no
`
`matter how many companies are listed as petitioners.” (505 Games Interactive, Inc.
`
`and 505 Games (U.S.), Inc. v. Babbage Holdings LLC, IPR2014-00954, Paper 17,
`
`2). Because a trial is proceeding against one or more Petitioners, that earlier trial
`
`1
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`Case No. IPR2020-00846
`Patent No. 7,076,431
`(and all of the inefficiencies that institution would create in light of that earlier trial
`
`date) counts against all of the Petitioners and their joint Petition, because the
`
`PTAB may not treat one Petitioner differently than another without prejudicing
`
`Parus. (Agilysys, Inc. v. Ameranth, Inc., CBM2014-00014, Paper 11, 3-4);
`
`(IPR2020-00846, Paper 7).
`
`Fintiv Factor 1: “whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted”
`Petitioners’ Reply ignores the two questions actually posed by this factor.
`
`First, has the Court “granted a stay”? No, it has not, and Petitioners do 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 Petitioners, even after
`
`additional briefing on this issue, do not even try to identify any. They cannot because
`
`to date, Judge Albright has denied every opposed motion to stay pending
`
`proceedings in his court pending resolution of an instituted IPR.1
`
`And Petitioners’ argument—without explanation or support—that Parus
`
`merely relied on “different cases with different facts” and failed to provide “’specific
`
`evidence’ for [this] particular case” is baseless. (Reply at 1). Contrary to Petitioners’
`
`conclusory argument, Parus’s POPR identified specific evidence showing the Court
`
`does not grant stays in the exact circumstances of this particular case; specifically,
`
`1 Based on Patent Owner’s research, Judge Albright has denied every opposed
`motion to stay he has ruled on. See Ex. 2001 and 2012-2014.
`
`2
`
`
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`Case No. IPR2020-00846
`Patent No. 7,076,431
`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 Proceeding here even if the requested IPR is instituted. (POPR,
`
`8-9). Tellingly, Petitioners do not acknowledge or apply Judge Albright’s test at all,
`
`nor do they address or dispute Parus’s application of that controlling test.
`
`Fintiv Factor 2: “proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision”
`Petitioners do not dispute that the jury trial here is scheduled for three months
`
`before the FWD deadline (more than one month earlier than the trial date in Fintiv),
`
`but nonetheless attempt to argue that this factor somehow favors institution by
`
`speculating that Judge Albright cannot keep his own docket on schedule. But after
`
`falsely asserting that Parus’s Fintiv Factor 1 arguments and evidence concern
`
`“different cases with different facts” and are not directed to the specific facts of the
`
`present Parallel Proceeding in the Western District of Texas, that is exactly what
`
`Petitioners attempt to do here.
`
`Petitioners argue about other earlier cases that have been postponed and other
`
`cases presently before Judge Albright, but ignore that Judge Albright has already set
`
`a trial date in this Parallel Proceeding for July 2021, and that he has explicitly stated
`
`that he intends for this trial to proceed “as scheduled.” (Ex. 2006). Indeed, as
`
`recently as August 21, 2020, Judge Albright reiterated that regardless of any
`
`3
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`Case No. IPR2020-00846
`Patent No. 7,076,431
`conflicts, “the goal of the Court is to get the case tried in July.” (Ex. 2015, Markman
`
`Transcript, 52-54). Petitioners filed their Reply ten days after this explicit statement
`
`refuting their present arguments, but failed to address or disclose this statement to
`
`the Board.
`
`Fintiv Factor 3: “investment in the parallel proceedings”
`Contrary to Petitioners’ Reply, 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
`
`Petitioners do not dispute) the parties have already completed all claim construction
`
`discovery and briefing, and the Court has already held its Markman hearing and
`
`issued its claim construction order. (Ex. 1032, Scheduling Order; Ex. 2016, Claim
`
`Construction Order).
`
`4
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`Case No. IPR2020-00846
`Patent No. 7,076,431
`Further, Petitioners do not dispute that the parties have already spent
`
`considerable time and resources in the Parallel Proceeding and will continue to do
`
`so prior to and beyond the Board’s institution decision deadline. They cannot
`
`because by that date, the parties will already have: exchanged their initial
`
`infringement and
`
`invalidity contentions; completed
`
`their
`
`initial document
`
`productions; extensively briefed and argued motions to dismiss and motions to
`
`transfer; conducted claim construction discovery; and begun fact discovery. (POPR
`
`at 6-7, 12-13). Moreover, 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 all invalidity issues. (POPR at 12-13).
`
`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”
`Petitioners’ offer to narrowly stipulate that “if the IPR is instituted,
`
`Petitioners 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 Petitioners have offered only a conditional
`
`stipulation from themselves. As established in the POPR, the other co-defendants
`
`5
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`Case No. IPR2020-00846
`Patent No. 7,076,431
`in the Parallel Proceedings are also asserting the same art there as in Petitioner’s
`
`Petition. (POPR, 13-14; Ex. 2003). Petitioners conditional stipulation thus will not
`
`prevent the Petition art from still being asserted in the Parallel Proceeding, so
`
`complete overlap still exists.2
`
`Beyond this, there is still a large degree of overlap as to Petitioners themselves
`
`because Petitioners’ offered stipulation is so narrow that Petitioners would still be
`
`free to continue asserting in the Parallel Proceeding the same type of invalidity
`
`grounds asserted in the Petition. Under the narrow stipulation, Petitioners can (and
`
`are) still pursuing invalidity on the basis of prior art patents or printed publications,
`
`just like in the Petition. That Petitioners have 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 they are 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,
`
`2 Petitioners attempt to avoid this defect in their narrow stipulation by asserting
`that Apple and Amazon are defendants in separate proceeding, but ignore and fail
`to inform the Board that the Court ordered that those proceedings all be
`consolidated into a single case. (Ex. 2017, Order Consolidating Cases). Indeed, the
`preliminary invalidity contentions that Petitioners cite are not Apple and Amazon’s
`contentions, as Petitioners misrepresent, but the invalidity contentions of all of the
`Defendants. (Ex. 2011)
`
`6
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`Case No. IPR2020-00846
`Patent No. 7,076,431
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`e.g., Fintiv, Paper 11 at 5-6.
`
`To this end, the Sand decision relied on by Petitioners 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. Petitioners and the other co-defendants have not done so, so this factor
`
`still weighs in favor of denial.
`
`Fintiv Factor 5: “whether the petitioner and the defendant in the parallel
`proceeding are the same party”
`The Petitioners chose to jointly file the Petition and at least some (indeed, all
`
`but one) of the named Petitioners are indisputably named Defendants in the Parallel
`
`Proceeding. This factor therefore indisputably 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. Fintiv,
`
`Paper 11 at 15. Petitioners’ Reply does not identify even a close call on the remaining
`
`challenged claims. Parus’s POPR provides specific evidence and explanations
`
`establishing the fatal defects in the Petition, and Petitioners’ Reply does not refute
`
`Parus’s POPR, but instead merely relies on the same insufficient arguments and
`
`misrepresentations already refuted in detail in Parus’ POPR.
`
`7
`
`
`
`Dated: September 14, 2020
`
`Case No. IPR2020-00846
`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. IPR2020-00846
`Patent No. 7,076,431
`
`CERTIFICATE OF SERVICE
`
`I certify that copies of Patent Owner’s Sur-Reply to Petitioner’s Reply to
`
`Patent Owner’s Preliminary Response and accompanying exhibits are being served
`
`by electronic mail on the following counsel of record:
`
`Lead Counsel
`Elisabeth H. Hunt (Reg. No. 67,336)
`Wolf, Greenfield & Sacks, P.C.
`600 Atlantic Avenue
`Boston, MA 02210-2206
`Telephone: (617) 646-8000
`Facsimile: (617) 646-8646
`EHunt-PTAB@wolfgreenfield.com
`
`Backup Counsel
`Gregory S. Nieberg (Reg. No. 57,063)
`Wolf, Greenfield & Sacks, P.C.
`600 Atlantic Avenue
`Boston, MA 02210-2206
`Telephone: (617) 646-8000
`Facsimile: (617) 646-8646
`GNieberg-PTAB@wolfgreenfield.com
`
`Richard F. Giunta (Reg. No. 36,149)
`Wolf, Greenfield & Sacks, P.C.
`600 Atlantic Avenue
`Boston, MA 02210-2206
`Telephone: (617) 646-8000
`Facsimile: (617) 646-8646
`RGiunta-PTAB@wolfgreenfield.com
`
`Dated: September 14, 2020
`
`/Michael J. McNamara/
`Michael J. McNamara (Reg. No. 52,017)
`
`103035964
`
`9
`
`
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