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`Petitioner’s Preliminary Reply
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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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`FACEBOOK, INC.,
`Petitioner,
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`v.
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`USC IP PARTNERSHIP, L.P.,
`Patent Owner
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`
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`Case IPR2021-00033
`Patent No. 8,645,300
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`PETITIONER’S PRELIMINARY REPLY
`(RE 35 U.S.C. § 314(A) AND FINTIV FACTORS)1
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`1 This Reply was authorized by the Board’s letter to counsel dated March 10, 2021.
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`Petitioner’s Preliminary Reply
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`Patent Owner’s arguments boil down to a single proposition – that the Board
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`should deny institution under § 314(a) simply because a trial is scheduled in the
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`Western District of Texas before a Final Written Decision could issue here. But the
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`Board has recently made clear that an earlier-scheduled trial in the Western District
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`of Texas is not the “death knell” for IPR institution that Patent Owner suggests it is.
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`See, e.g., HP Inc. v. Slingshot Printing LLC, IPR2020-01084, Paper 13 (PTAB Jan.
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`14, 2021) (“HP”) (instituting IPR despite trial in Western District of Texas
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`scheduled five months before projected deadline for Final Written Decision); Dish
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`Network L.L.C. v. Broadband iTV, Inc., IPR2020-01359, Paper 15 at 12-15 (PTAB
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`Feb. 12, 2021) (“Dish”) (same; three months); Apple Inc. v. Parus Holdings, Inc.,
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`IPR2020-00686, Paper 9 at 11-12 (PTAB Sept. 23, 2020) (“Parus”) (same; two
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`months). As shown below, the Fintiv factors are either neutral or weigh against
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`denial of institution under § 314(a).
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`Factor 1 (Stay Pending IPR). A stay motion has not been filed in the
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`litigation, but Petitioner intends to file one in the event of IPR institution. The Board
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`has consistently treated this factor as neutral under these circumstances as it will not
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`speculate on the outcome of a stay motion. See, e.g., HP at 9; Dish at 11-12.
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`Factor 2 (Proximity of Trial). The Board should treat this factor as neutral,
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`consistent with panels in HP and Parus. See HP at 9 (Factor 2 neutral despite trial
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`in W.D. Texas scheduled five months before Final Written Decision); see also Parus
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`-1-
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`Petitioner’s Preliminary Reply
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`at 13 (same; trial two months before). Petitioner filed its petitions more than eight
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`months before the statutory deadline and just a few weeks after receipt of
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`infringement contentions identifying the asserted claims. (EX1016.) Though no
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`fault of Petitioner, the PTAB did not accord a filing date to the petitions until almost
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`six weeks later on November 16, 2020. As a result, assuming the December 2021
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`trial is not delayed (see below), the maximum gap would be about five months. The
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`Board has instituted IPR despite greater gaps. See, e.g., Apple Inc. v. Seven
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`Networks, LLC, IPR2020-00506, Paper 11 at 9 (PTAB Sept. 1, 2020) (“Seven”)
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`(granting institution; nine month gap); Peag LLC v. Varta Microbattery GmbH,
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`IPR2020-01212, Paper 8 at 22–23 (PTAB Jan. 6, 2021) (seven months).
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`Patent Owner notes ongoing efforts of vaccination against COVID-19 but
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`ignores the significant trial backlog the pandemic created. See HP at 10 (“[E]ight
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`months of backlogged trials, including many active criminal cases that would take
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`precedence over civil trials, will potentially need to proceed before the district
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`court’s trial.”). There are at least 11 civil cases scheduled for trial before the district
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`court in December 2021 – with five scheduled just days before the trial date in the
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`related litigation and a second trial scheduled on the exact same date.2 Because the
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`2 See Impulse Downhole v. Rubicon Oilfield, No. 6:19-cv-00378 (W.D. Tex.) (trial
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`set for 12/6/2021); Estech v. Regions Fin., No. 6:20-cv-00322 (W.D. Tex.),
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`-2-
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`Petitioner’s Preliminary Reply
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`district court cannot physically conduct all of the trials currently scheduled in
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`December 2021, the December 13, 2021 trial may not proceed as scheduled. See
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`Seven at 9 (noting “uncertainty as to whether the trial actually will start on the
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`currently scheduled date” given existence of concurrently-scheduled trials).
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`Factor 3 (Investment in Related Litigation): This factor favors institution.
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`Other than an early claim construction hearing, there has been minimal investment
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`in the litigation. As of two months before the institution decision deadline, neither
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`party has produced documents (beyond
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`those accompanying preliminary
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`disclosures), responded to any written discovery, nor issued any deposition notices.
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`The vast majority of the work in the litigation lies in the months ahead.
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`The Board has recognized that an IPR petitioner’s diligence in filing IPR is
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`relevant to this factor, and weighs against denial of institution when the petition was
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`filed diligently after becoming aware of the claims being asserted. See Fintiv at 11-
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`12; Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 16-17
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`(PTAB Dec. 1, 2020) (noting that timing of IPR filing is relevant to Factor 3). As
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`EcoFactor v. Google, No. 6:20-cv-00075 (W.D. Tex.) (trial set for 12/7/2021),
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`EcoFactor v. Ecobee, No. 6:20-cv-00078 (W.D. Tex.) and EcoFactor v. Vivint, No.
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`6:20-cv-00080 (W.D. Tex.) (trial set for 12/7/2021); Ravgen v. Natera, No. 1:20-cv-
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`00692 (W.D. Tex.) (trial set for 12/13/2021, same day as related litigation).
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`-3-
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`Petitioner’s Preliminary Reply
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`noted, Petitioner filed its IPR petitions a few weeks after receipt of Patent Owner’s
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`infringement contentions in the litigation, weeks before the deadline for preliminary
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`invalidity contentions in district court, and more than a month before the exchange
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`of claim terms for construction. (EX1015 at 001-002.) The Board has found a party
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`to have been diligent despite considerably longer periods of delay. See Dish at 20–
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`21 (finding diligence when petition filed less than three months from notice of
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`asserted claims); Sotera Wireless at 17 (finding diligence when Petitioner filed two
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`months after service of invalidity contentions).
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`Factor 4 (Issue Overlap): This factor weighs heavily against denial of
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`institution, as there is zero overlap between the prior art relied upon in the IPR
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`grounds and the prior art identified in Petitioner’s invalidity contentions. (EX2007.)
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`Petitioner further represents to the Board that, in the event of IPR institution, it will
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`not rely on the IPR prior art references in district court. This means that the prior art
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`references cited in the IPRs will not be considered at any district court trial.3
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`Patent Owner makes much of the number of prior art references and
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`combinations preliminarily identified in the litigation, but does not explain how this
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`3 The invalidity contentions identify a patent to Rand Nickerson (U.S. Patent No.
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`7,865,455), which issued from a patent family unrelated to the Nickerson patent
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`cited in the IPR petitions, and which contains different disclosures. (EX1020.)
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`-4-
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`Petitioner’s Preliminary Reply
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`bears on Factor 4. Petitioner will of course narrow its prior art disclosures over the
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`course of discovery and present only a reasonable number of prior art references at
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`any trial. More importantly for Factor 4, those references will not include the
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`references relied upon in the IPR petitions. Patent Owner makes no attempt to show
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`any similarity between any prior art reference cited in the IPR petitions and any prior
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`art reference disclosed in the litigation. This weighs in favor of institution.
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`Factor 5 (Same Parties) weighs “either in favor of, or against, exercising
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`discretion to deny institution depending on which tribunal was likely to address the
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`challenged patent first.” Parus at 19. This factor is thus neutral for the same reasons
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`as Factor 2 (Proximity of Trial). See HP at 9 (finding this factor neutral).
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`Factor 6 (Other Considerations): Petitioner has presented strong challenges
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`to the claims of the ’300 patent and acted promptly in preparing and filing its
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`petitions. Patent Owner’s POPRs include no expert declaration and only cursorily
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`challenge the merits of the IPR petitions, relying largely on purported distinctions of
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`the prior art that are untethered to the actual language of the challenged claims. If
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`the Board agrees with Petitioner as to the merits of the challenges set forth in the
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`IPR petitions, this factor will weigh further in favor of institution of IPR.
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`In conclusion, because the Fintiv factors are either neutral or weigh in favor
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`of institution, Petitioner therefore respectfully requests that the Board not exercise
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`its discretion to deny institution under § 314(a).
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`-5-
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`Petitioner’s Preliminary Reply
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`Dated: March 17, 2021
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
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`By:
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`Respectfully submitted,
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`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioner
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`-6-
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`CERTIFICATE OF SERVICE
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`I hereby certify, pursuant to 37 C.F.R. § 42.6, that a complete copy of the
`attached PETITIONER’S PRELIMINARY REPLY, and related documents, are
`being served via electronic mail on the 17th day of March 2021, upon counsel of
`record for the Patent Owner as follows:
`
`
`Todd E. Landis
`John Wittenzellner
`C. Matthew Rozier
`WILLIAMS SIMONS & LANDIS PLLC
`tlandis@wsltrial.com
`johnw@wsltrial.com
`mrozier@wsltrial.com
`usccounsel@wsltrial.com
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`DATED: March 17, 2021
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`-1-
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`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`COOLEY LLP
`1299 Pennsylvania Ave. NW,
`Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`
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