Paper 7
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––
`
`
`
`SALESFORCE.COM, INC.
`Petitioner
`
`
`v.
`
`MICHAEL PHILIP KAUFMAN
`Patent Owner
`––––––––––––––
`
`U.S. Patent No. 7,885,981
`
`“Systems and Method for Generating Automatic User Interface for Arbitrary
`Complex or Large Databases”
`––––––––––––––
`
`Inter Partes Review No. 2021-00397
`
`––––––––––––––
`
`PRE-INSTITUTION REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE TO ADDRESS FINTIV FACTORS
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––
`
`
`
`SALESFORCE.COM, INC.
`Petitioner
`
`
`v.
`
`MICHAEL PHILIP KAUFMAN
`Patent Owner
`––––––––––––––
`
`U.S. Patent No. 7,885,981
`
`“Systems and Method for Generating Automatic User Interface for Arbitrary
`Complex or Large Databases”
`––––––––––––––
`
`Inter Partes Review No. 2021-00397
`
`––––––––––––––
`
`PRE-INSTITUTION REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE TO ADDRESS FINTIV FACTORS
`
`
`
`
`
`
`Exhibit
`
`Description
`
`Ex. 1001 U.S. Patent No. 7,885,981 (“the ’981 patent”)
`
`Ex. 1002 Declaration of Dr. Benjamin Bederson (“Bederson”)
`
`Ex. 1003
`
`Ex. 1004
`
`File History of U.S. Patent No. 7,318,066 (U.S. Patent
`Application No. 10/428,209)
`
`File History of U.S. Patent No. 7,885,981 (U.S. Patent
`Application No. 11/925,236)
`
`Ex. 1005 U.S. Patent No. 5,590,190 (“Yeager”)
`
`Ex. 1006 U.S. Patent No. 6,035,300 (“Cason”)
`
`Ex. 1007
`
`Nadkarni et al., WebEAV: Automatic Metadata-driven
`Generation of Web Interfaces to Entity-Attribute-Value
`Databases, Journal of the American Medical Informatics
`Association, July/August 2000 (“Nadkarni”)
`
`Ex. 1008
`
`List of Recent Expert Witness Engagements of Dr.
`Benjamin B. Bederson
`
`Ex. 1009 Curriculum Vitae of Dr. Benjamin Bederson
`
`Ex. 1010
`
`Claim Construction and Scheduling Order, Michael Philip
`Kaufman v. Microsoft Corp., Case No. 16 Civ. 2880
`(AKH), Dkt. 69 (S.D.N.Y. Apr. 11, 2018)
`
`Ex. 1011
`
`Journal of the American Medical Informatics Association,
`WebEAV: Automatic Metadata-driven Generation of Web
`Interfaces to Entity-Attribute-Value Databases,
`https://academic.oup.com/jamia/article/7/4/343/713438
`(last visited Nov. 11, 2020)
`
`Ex. 1012
`
`ResearchGate, WebEAV: Automatic Metadata-driven
`Generation of Web Interfaces to Entity-Attribute-Value
`Databases,
`https://www.researchgate.net/publication/12432293_Web
`EAV_Automatic_Metadata-
`driven_Generation_of_Web_Interfaces_to_Entity-
`Attribute-Value_Databases (last visited Nov. 11, 2020)
`Ex. 1013 National Institutes of Health, WebEAV: Automatic
`Metadata-driven Generation of Web Interfaces to Entity-
`
`
`
`i
`
`
`
`
`
`
`Exhibit
`
`Ex. 1014
`
`Ex. 1015
`
`Ex. 1016
`
`Ex. 1017
`
`Ex. 1018
`
`Ex. 1019
`
`Description
`Attribute-Value Databases,
`https://pubmed.ncbi.nlm.nih.gov/10887163/ (last visited
`Nov. 11, 2020)
`
`Patent Owner’s Opening Claim Construction Brief in
`Michael Philip Kaufman v. Microsoft Corp., Case No. 16-
`CV-02880-AKH (S.D.N.Y.)
`
`Patent Owner’s Patent Owner Preliminary Response in
`IPR2017-01142
`
`Decision Denying Institution of Inter Partes Review, in
`IPR2017-01142
`
`Decision Denying Institution of Inter Partes Review,
`Paper 7, in IPR2017-01141
`
`Standing Order M10-468, November 30, 2020,
`https://nysd.uscourts.gov/sites/default/files/2020-
`11/20mc622%20Standing%20Order.pdf
`
`Standing Order Regarding Post-Markman Cases, Fintiv,
`Inc. v. Apple Inc., Case No. 1-19-cv-01238, Dkt. 122
`(W.D. Tex. Apr. 9, 2020)
`
`Ex. 1020
`
`Order, DivX, LLC v. Netflix, Inc., Case No. 2-19-cv-
`01602, Dkt. 106 (C.D. Cal May 11, 2020)
`
`Ex. 1021
`
`Ex. 1022
`
`Ex. 1023
`
`New York Times, New York Coronavirus Map and Case
`Count, last visited December 21, 2020,
`https://www.nytimes.com/interactive/2020/us/new-york-
`coronavirus-cases.html
`
`Law360, Trial for Ex-Giuliani Associates Delayed Again,
`November 30, 2020,
`https://www.law360.com/articles/1333129/print
`
`Law360, COVID-19 Outbreak Leads to Mistrial in EDTX,
`November 17, 2020,
`https://www.law360.com/articles/1329617/print
`
`
`
`ii
`
`
`
`
`
`
`Description
`
`Civil Case Management Plan and Scheduling Order,
`Michael Philip Kaufman v. salesforce.com, inc., Case No.
`20cv6879 (JPC), Dkt. 24 (S.D.N.Y. Oct. 26, 2020)
`
`Joint Claim Terms Chart, Michael Philip Kaufman v.
`salesforce.com, inc., Case No. 20cv6879 (JPC), Dkt. 39
`(S.D.N.Y. Dec. 9, 2020)
`
`Exhibit
`
`Ex. 1024
`
`Ex. 1025
`
`Ex. 1026
`
`DocketNavigator, Comparing scheduling order to trial
`dates
`
`Ex. 1027 DocketNavigator, Time to Milestones (nationwide)
`
`Ex. 1028 DocketNavigator, Time to Milestones (S.D.N.Y.)
`
`Ex. 1029 Declaration of Sylvia D. Hall-Ellis, Ph.D.
`
`Ex. 1030 Curriculum Vitae of Sylvia D. Hall-Ellis, Ph.D.
`
`Ex. 1031
`
`Ex. 1032
`
`Ex. 1033
`
`Ex. 1034
`
`Opinion & Order Regarding Salesforce’s Motion to
`Transfer, Kaufman v. Microsoft Corp., Case No. 16 Civ.
`2880 (AKH), Dkt. 81 (April 29, 2021)
`
`CF Traverse LLC v. Amprius, Inc., Case No. 20-cv-
`00484-RS, Dkt. 117 (N.D. Cal Nov. 6, 2020)
`
`Uniloc USA Inc. v. Apple Inc., Case No. 18-cv-00361-
`PJH, Dkt. 87 (N.D. Cal May 25, 2018)
`
`DocketNavigator, Success of Motions to Stay Pending
`Inter Partes Review (NDCA)
`
`Ex. 1035 DocketNavigator, Time to Milestones (NDCA)
`
`Ex. 1036
`
`Kaufman’s Responsive Claim Construction Brief,
`Kaufman v. Microsoft Corp., Case No. 16 Civ. 2880
`(AKH), Dkt. 59 (January 29, 2021)
`
`
`
`
`
`
`
`
`iii
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Page
`
`Apple Inc. v. Fintiv, Inc.,
` IPR2020-00019, Paper 15, at 13 (PTAB May 13, 2020) ................. passim
`
`CF Traverse LLC v. Amprius, Inc.,
` Case No. 20-cv-00484-RS, Dkt. 117 (N.D. Cal Nov. 6, 2020) ................ 4
`
`SAS Institute v. Iancu,
` 138 S. Ct. 1348 (2018) ............................................................................... 4
`
`Uniloc USA Inc. v. Apple Inc.,
` Case No. 18-cv-00361-PJH, Dkt. 87 (N.D. Cal May 25, 2018) ................ 4
`
`
`
`
`
`
`
`
`iv
`
`
`
`
`
`PO is mistaken that trial is likely to occur before a final written decision
`
`(FWD). In fact, after the Petition was filed, PO filed a joint motion with
`
`Petitioner to amend the schedule in the co-pending district court litigation
`
`(“the Litigation”) that not only vacated the original July 23, 2021 trial date
`
`(and all interim case dates), but further keyed all such remaining dates off the
`
`issuance of orders on both Markman and on Salesforce’s pending motions to
`
`dismiss and strike the Compliant—with no hearings scheduled for either.
`
`Specifically, trial will occur either 207 days after a claim construction ruling
`
`or 162 days after rulings on Salesforce’s Motions to Dismiss and Strike—
`
`whichever is later. Critically, however, the Court stayed all Markman
`
`proceedings indefinitely. Thus, not only is PO’s statement that trial is “likely”
`
`to occur before a FWD incorrect, the opposite is true—trial will not occur here
`
`until months after the mentioned rulings, with no such rulings or respective
`
`hearings on the horizon. Moreover, even this schedule is now in question, as
`
`the Court just issued an order transferring the Litigation to the Northern
`
`District of California (“NDCA”), a district that has longer time-to-trial
`
`averages and routinely grants motions to stay pending IPR, like Salesforce’s
`
`pending motion. Ex. 1031.
`
`PO further ignores that there are no overlapping issues between this
`
`Petition and the Litigation. Importantly, Petitioner stipulated it would not rely
`
`
`
`1
`
`
`
`
`
`on the Petition’s cited references in the Litigation in the event of institution,
`
`allaying any concerns of inefficiency and duplicative efforts.
`
`A. Fintiv Factor 2: Proximity Of The Trial Date To FWD
`
`A trial is unlikely to occur before a FWD—as of the filing of this Reply,
`
`there is no trial date because the case was recently transferred to NDCA. The
`
`NDCA Court has yet to assign the case, let alone adopt the amended SDNY
`
`schedule or calendar hearings (e.g., Markman) that lead to rulings triggering
`
`a trial date. Trial is also unlikely to proceed in NDCA as previously scheduled
`
`in SDNY because NDCA courts average 14 months from claim construction
`
`to jury trial, placing the trial date well after a FWD. Ex. 1035.
`
`Even if the NDCA Court adopted the SDNY schedule, trial is still
`
`unlikely to occur before a FWD. The amended schedule calls for a trial date
`
`either 207 days after a claim construction ruling or 162 days after rulings on
`
`Salesforce’s Motions to Dismiss and Strike—whichever is later. Ex. 2002 at
`
`2. But no hearings have been set for these triggering events.1 PO is also
`
`
`1 Even if PO’s recently filed motion to set aside the transfer order is granted,
`
`trial is unlikely to occur for the same reasons discussed in this section, and
`
`additionally because the SDNY Court stayed consideration of Markman
`
`issues indefinitely. Ex. 1036 at 5; see Pet. at 85-86.
`
`
`
`2
`
`
`
`
`
`incorrect in suggesting a June Markman ruling would result in trial in April
`
`2022 because this fails to consider a later ruling on Salesforce’s Motions. See
`
`POPR at 6. A June Markman date is also unrealistic in view of the Court’s
`
`transfer order and PO’s challenge thereto.
`
`B.
`
`Fintiv Factor 6: Other Circumstances, Including Merits
`
`PO argues that a previous litigation and IPRs involving PO and
`
`Microsoft weigh in favor of discretionary denial. PO, however, ignores a
`
`critical fact—Petitioner was not party or an RPI to either the litigation or those
`
`IPRs. Indeed, PO alleges no relationship between Petitioner and Microsoft
`
`such that discretionary denial would be proper, nor does any exist. Tellingly,
`
`PO cites no authority to support its position that a litigation or IPRs between
`
`unrelated parties may be used to support discretionary denial.
`
`Moreover, the proceedings are substantively very different, yet another
`
`fact PO fails to address. The Microsoft litigation involved entirely different
`
`prior art, and thus, there was no opportunity for the district court in that case
`
`to evaluate the art raised here. No district court has yet had an opportunity to
`
`assess the validity of the ’981 patent in light of the Petition’s cited art.
`
`Likewise, not only did the Microsoft petitions involve different prior
`
`art, they were denied entirely on procedural grounds. One Microsoft petition
`
`was denied because Microsoft’s asserted prior art did not pre-date PO’s
`
`
`
`3
`
`
`
`
`
`asserted priority date. Ex. 1016 at 11. The other was denied because
`
`Microsoft failed to address a claim limitation regarding scanning a database,
`
`a limitation the Petition examines in depth for each ground. Ex. 1017 at 15.
`
`Finally, PO contends that the Petition should be denied because Yeager
`
`was listed on the face of the ’981 patent. However, Yeager was not raised by
`
`the examiner as the basis for any office action, nor is it cumulative of any
`
`reference cited in prosecution, and nor has there been any allegation that it is.
`
`C. Fintiv Factor 1: Likelihood Of A Stay
`
`Petitioner moved to stay the Litigation pending IPR on February 1,
`
`2021 and the issue has been fully briefed since February 23, 2021. Following
`
`transfer, this motion will be heard in NDCA, a district that commonly grants
`
`stays pending IPR. Since SAS Institute v. Iancu, 138 S. Ct. 1348 (2018),
`
`NDCA courts have granted 82% of all such motions (Ex. 1034), often before
`
`an institution decision. See, e.g., CF Traverse LLC v. Amprius, Inc., Case No.
`
`20-cv-00484-RS, Dkt. 117 (N.D. Cal Nov. 6, 2020) (staying case pending IPR
`
`institution decision) (Ex. 1032); Uniloc USA Inc. v. Apple Inc., Case No. 18-
`
`cv-00361-PJH, Dkt. 87 (N.D. Cal May 25, 2018) (Ex. 1033).
`
`D. Fintiv Factor 4: Overlap With The Parallel Proceeding
`
`PO points out that the Litigation involves the same patent as this IPR—
`
`a fact that has no bearing on this analysis and is true of every IPR filed by a
`
`
`
`4
`
`
`
`
`
`defendant of a parallel district court proceeding. PO also tellingly cites no
`
`supporting authority. Most importantly, PO wholly ignores Petitioner’s
`
`stipulation to withdraw, and not rely on, the Petition’s cited references
`
`(Yeager, Cason, and Nadkarni) in the Litigation for the ’981 patent in the
`
`event of institution. Pet. at 71-72. This waiver eliminates any overlap in
`
`invalidity issues between the Litigation and an IPR, thus alleviating any
`
`concerns of inefficiency and duplicative efforts. Id. (collecting cases).
`
`E.
`
`Fintiv Factor 3: Investment In The Parallel Proceeding
`
`The district court has invested little time in assessing the parties’ claims
`
`and defenses, and the Litigation has not materially progressed since the
`
`Petition. Although the parties have briefed a motion to dismiss the Complaint
`
`and a motion to stay, there has yet to be a ruling on either. Neither party has
`
`taken a deposition. A Markman hearing has yet to be scheduled. By the time
`
`of institution, summary judgment briefing will still be many months away.
`
`Ex. 2002 (dispositive motions deadline 141 days after Markman).
`
`For the foregoing reasons, Patent Owner’s request for discretionary
`
`denial should be rejected, and the petition instituted.
`
`
`
`
`
`
`
`
`
`5
`
`
`
`Date: May 6, 2021
`
`
`
`
`
`
`
`
`
`
` By: /s/ Jim Glass
`James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`jimglass@quinnemanuel.com;
`Phone: 212-849-7142
`
`Ray Zado (pro hac vice to be requested
`upon grant authorization)
`Quinn Emanuel Urquhart & Sullivan,
`LLP
`555 Twin Dolphin Dr., 5th Floor
`Redwood Shores, CA 94065
`rayzado@quinnemanuel.com
`Tel: (650) 801-5000
`
`Sam Stake (pro hac vice to be requested
`upon grant authorization)
`Quinn Emanuel Urquhart & Sullivan,
`LLP
`50 California St., 22nd Floor
`San Francisco, CA 94111
`samstake@quinnemanuel.com
`Tel: (415) 875-6600
`
`Gavin Snyder (pro hac vice to be
`requested upon grant authorization)
`Quinn Emanuel Urquhart & Sullivan,
`LLP
`1109 First Avenue
`Suite 210
`Seattle, WA 98101
`gavinsnyder@quinnemanuel.com
`
`6
`
`
`
`
`
`Tel: (206) 905-7000
`
`Richard Lowry (Reg. No. 70,306)
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`1300 I Street, NW, Suite 900
`Washington, DC 20005
`richardlowry@quinnemanuel.com;
`Phone: (202) 538-8000
`
`Counsel for Petitioner salesforce.com,
`inc.
`
`
`
`7
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. §§ 42.6(E), 42.105(A))
`
`The undersigned hereby certifies that, on May 6, 2021 a copy of the
`
`foregoing document was served on counsel of record at the email addresses
`
`below:
`
`Ronald Abramson (Reg. No. 34,762)
`ron.abramson@listonabramson.com
`
`Ari J. Jaffess (Reg. No. 74,558)
`ari.jaffess@listonabramson.com
`
`M. Michael Lewis (Reg. No. 50,478)
`michael.lewis@listonabramson.com
`
`
`
`Date: May 6, 2021
`
` By: /s/ Richard Lowry
`Richard Lowry (Reg. No. 70,306)
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`1300 I Street, NW, Suite 900
`Washington, DC 20005
`richardlowry@quinnemanuel.com;
`Phone: (202) 538-8000
`
`Counsel for Petitioner salesforce.com,
`inc.
`
`
`8
`
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
