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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––
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`NETFLIX, INC.,
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`Petitioner,
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`v.
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`CA, Inc.,
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`Patent Owner.
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`––––––––––
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`Case No. IPR2021-01319
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`U.S. Patent No. 7,103,794
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`––––––––––
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`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`On November 24, 2021, the Board authorized this Preliminary Reply. This
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`Petition is part of a larger dispute between the parties. PO initially filed a lawsuit
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`against the Petitioner in California. Petitioner filed ten petitions against the initially
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`asserted patents, seven of which were instituted. To evade PTAB review, PO filed
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`a new litigation in E.D. Tex. The Board should decline discretionary denial under
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`§ 314(a) to avoid rewarding PO’s gamesmanship.
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`The Board has granted institution based on similar facts. In Tianma
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`Microelectronics Co. Ltd. v. Japan Display Inc., the Board instituted an IPR one
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`month before the scheduled trial date in E.D. Tex. IPR2021-01057, Paper 15 at 5-
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`14 (PTAB Jan. 6, 2022). The FWD deadline was 11 months after trial. Similar to
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`this case, there is a Sotera stipulation and pending motion to transfer. Id.
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`Moreover, the Tianma petition was filed six months after receiving infringement
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`contentions; Petitioner Netflix filed in less than one month. See also Apple Inc. v.
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`SEVEN Networks, LLC, IPR2020-00506, Paper 11 at 5-19 (PTAB Sept. 1, 2020);
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`Samsung Electronics Co., Ltd. v. Acorn Semi, LLC, IPR2020-01205, Paper 23 at
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`27-39 (PTAB Jan. 13, 2021).
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`Fintiv Factor 1. Judges Gilstrap and Payne have a record of staying cases
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`based on IPR institutions even in light of impending trial dates, including severing
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`patents challenged in instituted IPRs and staying the severed case. Ex-1037 (Order,
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`SEVEN Networks, LLC v. Apple Inc. (E.D. Tex. Sept. 22, 2020) (Gilstrap, J.) at
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`-1-
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`000001-2 (severing and staying claims pending resolution of IPR proceedings
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`where “jury selection [was] less than six weeks away”)); Ex-1038 (Memorandum
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`Order, Arbor Global Strategies v. Samsung Elecs. (E.D. Tex. Jan. 7, 2021) at 4, 6).
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`PO’s argument that a stay is unlikely is contradicted by its own cited case, in
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`which Judge Payne found the prejudice factor as neutral, reasoning that the patent
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`holder’s interest in timely enforcement of its patent right “is present in every case
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`in which a patentee resists a stay[.]” Uniloc 2017 LLC v. Samsung Elecs. Am., Inc.,
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`2020 WL 1433960, at *4 (E.D. Tex. Mar. 24, 2020). PO’s argument that it is
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`somehow prejudiced by the Board’s consideration contradicts the Federal Circuit’s
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`acknowledgement of IPR proceedings’ effectiveness. In re Intel Corp., 2021 WL
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`4427875, at *2 (Fed. Cir. Sept. 27, 2021).
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`Fintiv Factor 2. PO’s assumptions that the parallel proceeding will continue
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`in E.D. Tex. and that the trial will occur as scheduled are both subject to significant
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`uncertainties. First, the District Court’s denial of Petitioner’s motion to dismiss or
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`transfer contradicts controlling precedents (e.g., In re Google LLC, 949 F.3d 1338
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`(Fed. Cir. 2020)) and should be reversed by the Federal Circuit. See, e.g., Ex-1039
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`at 000014. Once this case is dismissed or transferred, there will be no trial date
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`before or near the FWD deadline. The Board has recognized the impact of a
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`motion to dismiss or transfer on the Fintiv analysis for creating uncertainties for
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`the trial date. See Dish Network L.L.C. v. Broadband iTV, Inc., IPR2020-01359,
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`Paper 15 at 15-16 (PTAB Feb. 12, 2021); Chewy, Inc. v. International Business
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`Machines Corp., IPR2021-00757, Paper 9 at 11 (PTAB Oct. 12, 2021).
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`Second, it is uncertain that the trial in the parallel proceeding will occur on
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`schedule. E.D. Tex. is one of the busiest courts for patent cases. A total of six jury
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`selection sessions and two pretrial conferences are scheduled before Judge Gilstrap
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`on April 18, 2022 alone. Ex-1040; Acorn, IPR2020-01205, Paper 23 at 31 (“the
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`number of other cases that are also scheduled to start trial on April 5, 2021 …
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`introduce some uncertainty …”). The current thirteen-month go-to-trial schedule is
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`unprecedented—in the past five years, 61 cases have gone to trial before Judge
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`Gilstrap and the median time to trial was 592 days or over 19 months. None of
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`these cases proceeded to trial within thirteen months.1 Ex-1041. The parties also
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`jointly moved to modify various due dates in the parallel proceeding. Ex-1042. The
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`scheduled trial date thus “calls for speculation.”2 In re Apple Inc., 979 F.3d 1332,
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`1344, n.5 (Fed. Cir. 2020); Dish, IPR2020-01359, Paper 15 at 13-16. The
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`scheduled trial date is subject to uncertainties caused by Texas’ peaking COVID-
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`1 Two case technically proceeded to trial in about two months because they were
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`consolidated with or severed from earlier filed cases.
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`2 Scheduled district-court trial dates used in Fintiv analyses are highly unreliable,
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`as shown by a recent survey. Ex-1043.
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`19 cases. Ex-1044. Factor 2 weighs against exercising discretion to deny institution
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`or is at least neutral due to these uncertainties. See Sand Revolution II, LLC v.
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`Cont’l Intermodal Grp.-Trucking LLC, IPR2019-01393, Paper 24 at 8-9 (PTAB
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`June 16, 2020) (informative).
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`Fintiv Factor 3. PO’s assertions of the court’s and the parties’ investment in
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`the parallel case are mitigated by Petitioner’s diligence in filing the Petition. Apple
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`Inc. v. Seven Networks, LLC, IPR2020-00157, Paper 10 at 11-12 (PTAB Jun. 15,
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`2020). Even if Petitioner filed its Petition the day PO filed its complaint (i.e.,
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`March 9, 2021), the currently scheduled trial date would still have been about five
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`months before the statutory deadline for a FWD. Petitioner was expeditious in
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`filing the Petition less than one month after “it learn[ed] which claims [were]
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`being asserted against it” on July 1, 2021, especially in light of its preparation of
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`multiple petitions simultaneously. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper
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`11 at 11 (PTAB Mar. 20, 2020); Snap Inc. v. Sanderling Management Ltd.,
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`IPR2021-00781, Paper 20 at 17 (PTAB Nov. 9, 2021).
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`Fintiv Factor 4. Petitioner’s Sotera stipulation (Ex-1045) weighs “strongly
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`in favor of [the Board] not exercising discretion to deny institution.” Sotera
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`Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 19 (precedential).
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`Fintiv Factor 5. While Petitioner and PO are the same parties as in the
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`parallel district court case, it is “far from an unusual circumstance that a petitioner
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`in inter partes review and a defendant in a parallel district court proceeding are the
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`same.” Sand, IPR2019-01393, Paper 24 at 12-13.
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`Fintiv Factor 6. The Petition is particularly strong on the merits. PO’s only
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`substantive argument is that the cited prior art fails to disclose the ’794 patent’s
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`“cache engine” because a “cache engine” must be a “special purpose device for
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`caching network objects.” POPR, 34-55. PO argues that a “cache engine” cannot
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`be implemented on a general purpose server. Id. at 35, 44. But the ’794 patent
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`teaches the exact opposite: “the invention can be implemented using general
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`purpose processors and storage devices.” Ex-1001, 2:61-62; see also id., 3:21-24.
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`The lack of any meritorious opposition to institution shows that the Petition is
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`particularly strong on the merits.
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`Multiple other circumstances also weigh in favor of instituting the IPR,
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`including that the Board has instituted multiple other IPRs currently in dispute
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`between the parties, SEVEN, IPR2020-00506, Paper 11 at 16, and that the large
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`number of patents and complex issues in dispute between the parties make the
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`PTAB the optimal venue for “in depth” analyses and thorough resolution of the
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`dispute, SEVEN, IPR2020-00157, Paper 10 at 22. Finally, if the Board uses its
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`discretion under § 314(a) to deny institution, PO’s gamesmanship and evasion of
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`review would be rewarded.
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`-5-
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`Date: January 10, 2022
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`Respectfully submitted,
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`SHEPPARD, MULLIN,
`RICHTER & HAMPTON LLP
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` /Harper Batts/
`Harper Batts (Reg. No. 56,160)
`Attorney for Petitioner
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`CERTIFICATE OF COMPLIANCE
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`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that the foregoing
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`Petitioner’s Reply to Patent Owner’s Preliminary Response complies with 37 CFR
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`§ 42.6 and the five-page limit specified by the Board. The page count does not
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`include those portions excepted by 37 C.F.R. § 42.24(a)(1).
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`Respectfully submitted,
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` SHEPPARD, MULLIN,
`RICHTER & HAMPTON LLP
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`/Harper Batts/
`Harper Batts (Reg. No. 56,160)
`Attorney for Petitioner
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`-7-
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on January 10, 2022, true and correct
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`copies of the Petitioner’s Reply to Patent Owner’s Preliminary Response were
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`served in entirety via email to all parties to this proceeding at the addresses
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`indicated:
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`Daniel S. Young (Reg. No. 48,277)
`dyoung@adseroip.com
`dyoung@sbiplaw.com
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`Chad E. King (Reg. No. 44,187)
`chad@adseroip.com
`cking@sbiplaw.com
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`ADSERO IP LLC d/b/a
`Swanson & Bratschun LLC
`8210 Southpark Terrace
`Littleton, CO 80120
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`SHEPPARD, MULLIN,
`RICHTER & HAMPTON LLP
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` /Harper Batts/
`Harper Batts (Reg. No. 56,160)
`Attorney for Petitioner
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`-8-
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