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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`GOOGLE LLC
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`Petitioner
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`v.
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`DDC TECHNOLOGY, LLC,
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`Patent Owner
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`_________________________________________________
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`U.S. Patent No. 11,093,001
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`Case No.: IPR2023-00711
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`_________________________________________________
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`PETITIONER’S REPLY TO PATENT
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`OWNER’S PRELIMINARY RESPONSE
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`_________________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________________________________
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`GOOGLE LLC
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`Petitioner
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`v.
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`DDC TECHNOLOGY, LLC,
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`Patent Owner
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`_________________________________________________
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`U.S. Patent No. 11,093,001
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`Case No.: IPR2023-00711
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`_________________________________________________
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`PETITIONER’S REPLY TO PATENT
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`OWNER’S PRELIMINARY RESPONSE
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`The Board should reject DDC’s desperate attempts to avoid the Petition’s
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`strong prior art by making baseless misconduct allegations and violating a
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`mediation agreement’s confidentiality terms. DDC does not raise a single
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`distinction over the prior art. Instead, DDC focuses its efforts on flawed
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`procedural arguments, including (1) a real-party-in-interest (RPI) argument about
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`Orora Packaging Solutions (OPS) that the Board already dismissed and (2) a
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`groundless RPI/privity argument for a former defendant of DDC’s that is a
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`member of Google’s Work-With-Google-Cardboard program (WWGC). DDC
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`additionally disclaims some claims and makes only weak motivation-to-combine
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`arguments for the others. See IPR2023-00710, EX2003; IPR2023-00708, EX2049.
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`Per the Board’s authorization in an email dated August 28, 2023, this Reply
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`addresses DDC’s RPI/privity arguments.
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`I. Real Party in Interest and Privity
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`The Federal Circuit’s most recent RPI/privity case explains that determining
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`whether a party is an RPI focuses on “whether a petition has been filed at a [ ]
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`party’s behest.” Uniloc 2017 LLC v. Facebook Inc., 989 F.2d 1018, 1028-29 (Fed.
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`Cir. 2021). Relevant considerations may include “whether a [ ]party exercises [or
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`could exercise] control over a petitioner’s participation in a proceeding, or whether
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`a [ ]party is funding the proceeding or directing the proceeding.” Id. at 1029.
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`1
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`As to privity, the Federal Circuit explains that it is also “a highly fact-based
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`inquiry, similarly ‘focus[ing] on the relationship between the named IPR petitioner
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`and the party in the prior lawsuit.’” Id. (emphasis in original). Whether a party is
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`in privity with another “depends on the nature of the relationship between the two;
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`‘it is important to determine whether the [parties’] relationship—as it relates to the
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`lawsuit—is sufficiently close that it can be fairly said that the petitioner [already]
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`had a full and fair opportunity to litigate’ the issues it now seeks to assert.” Id.
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`DDC focuses its analysis using the factors discussed in RPX v. AIT,
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`IPR2015-01750, Paper 128, at 10 (precedential), a remand from a Federal Circuit
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`case issued before Uniloc. Those factors are more relevant to the unique facts of
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`that case, and indeed, the Uniloc court did not address them.
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`II. OPS is not an RPI or Privy of Google
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`DDC’s primary argument has already been heard and dismissed by the
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`Board: that Petitioner intentionally omitted identifying OPS as an RPI to gain a
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`Fintiv tactical advantage. See Order Denying Patent Owner’s Motion for
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`Additional Discovery (Order), paper 11, n. 7 (“we are not persuaded that the
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`[Fintiv] evidence would be useful.”); see also p. 9 (“Patent Owner argues that
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`Petitioner’s relationship with OPS affects the [Fintiv] analysis … These are two
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`different theories — both of which we are not persuaded by.”). Indeed, Fintiv is
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`2
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`not an issue here. The co-pending litigation involving Petitioner has been stayed,
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`and DDC’s case against OPS has settled. EX1016; Order, n. 7.
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`Similarly unavailing is DDC’s attempt to avoid the Board’s precedential
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`SharkNinja decision. Here, as in SharkNinja, there is no reason for the Board to
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`address RPI because there are no time-bar or estoppel issues: OPS was sued on the
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`same day as Petitioner. See EX1017, pp. 10-11; SharkNinja Operating LLC v.
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`iRobot Corp., IPR2020-00734, Paper No. 11 (precedential). DDC attempts to
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`avoid SharkNinja by accusing Petitioner—without any evidence—of intentionally
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`omitting OPS as an RPI in this proceeding “to prevent the Board from conducting
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`a proper analysis of the Fintiv factors….” POPR, at 15. DDC does not cite any
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`legal authority for support, just as it failed to do in its motion for additional
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`discovery. See Mot., paper 8, at 1. In Petitioner’s opposition to that motion (see
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`Opp., paper 9, at 7), Petitioner identified cases where this Board, citing
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`SharkNinja, has at least twice declined to perform an RPI/privity analysis when
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`there were no time-bar or estoppel issues even though there was a Fintiv issue
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`related to a third party. See Unified Patents, LLC v. JustService.Net LLC,
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`IPR2020-01258, Paper No. 18; Unified Patents, LLC v. Monarch Networking
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`Solutions LLC, IPR2020-01708, Paper No. 28, Appendix A. DDC does nothing in
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`its POPR to respond to these cases, thus conceding the point.
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`3
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`Regardless, OPS is not an RPI. Google designed and sold the Google
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`Cardboard product and contracted with OPS to manufacture the product on its
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`behalf.1 Although the Google/OPS agreements include
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` DDC presents no evidence that:
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` (2) OPS controlled Google’s defense;
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`(3) OPS funded Google’s defense; and (4) OPS was involved in any way with this
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`IPR or the related IPRs. OPS had no involvement in Google’s IPRs. Google and
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`OPS were merely co-defendants, using separate counsel, and while Google and
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`1 DDC again misrepresents the record to accuse Petitioner of misconduct:
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`specifically concealing or misrepresenting its relationship with OPS at the June 13,
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`2023 teleconference. POPR, at 3, 15; see EX1013. For support, DDC refers to
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`EX1013 at 25-26, but that portion of the transcript is DDC’s counsel, not
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`Petitioner’s, conversing with the Board. Petitioner only represented that “Google
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`has its own virtual reality viewer.” EX1013, 15:25-16:1; see also 19:19-20. This
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`is true; Google Cardboard was so named and was sold by Google. Petitioner’s
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`discussion of OPS was limited to advancing a SharkNinja argument. EX1013,
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`18:23-19:7. DDC’s misconduct allegations are newly fabricated and unfounded
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`because, at the June 13 teleconference, DDC chose not to even address the
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`Google/OPS relationship when prompted by the Board. EX1013, 26:22-27:4.
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`4
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`OPS were members of a joint defense group, that is insufficient to find an RPI
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`relationship. See Consolidated Trial Practice Guide, Nov. 2019, at 17 (joint-
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`defense-group participation alone does not create an RPI/privity relationship).
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`Moreover, the bulk of DDC’s so-called evidence, which itself is insufficient
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`to show RPI, is inadmissible and should be stricken because it violates a mediation
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`agreement.2 See EX1019.
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` This, of course, is exactly what DDC has done on pages 11-
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`2 Petitioner is precluded from responding substantively to DDC’s statements
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`and evidence from the mediation, since doing so would violate the mediation
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`agreement. Nevertheless, DDC’s statements are inaccurate.
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`5
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`14 of the POPR as well as in exhibits 2017 and 2020. Therefore, DDC’s
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`arguments and evidence about the mediation are inadmissible, violate the
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`mediation agreement, and should be given no weight. Petitioner further
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`respectfully requests that the Board strike this offending material or, alternatively,
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`provide authorization to file a motion to strike.
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`Lastly, should the Board find that OPS is an RPI, Petitioner requests
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`authorization to update its mandatory notices without losing the Petition’s filing
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`date, because there are no time-bar or estoppel issues, Petitioner has not engaged in
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`bad faith or gamesmanship, and DDC will not be prejudiced. See Proppant v.
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`Oren Tech. LLC, IPR2017-01917, paper 86 (precedential).
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`III. Unofficial Cardboard (UC) is not an RPI or Privy of Google
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`DDC alleges that UC is an RPI or privy of Google. UC was previously sued
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`by DDC and that case settled. UC is a member of the WWGC program.
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`Importantly, Google did not fund, control, or even have the authority to control
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`UC’s litigation, and DDC does not suggest otherwise. Also, Google had no
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`involvement in that litigation. Thus, Google did not have “a full and fair
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`opportunity to litigate” that case. Uniloc, 989 F.2d at 1019. And, UC had no
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`involvement in this or the related proceedings. Thus, UC is not an RPI or privy of
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`Google.
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`a. Works With Google Cardboard (WWGC)
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`6
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`WWGC was a program that allowed developers of their own VR viewers to
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`be compatible with Google Cardboard, permitting them to promote their product as
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`“WWGC compatible.” EX2004, ¶41. Compatibility meant that a member’s
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`product would be compatible with the Google Cardboard application ecosystem.
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`Id. ¶43. To be compatible, a VR viewer followed high-level design guidelines, one
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`of which required only a single input. Id. ¶58; EX2031, at 3. But the guidelines
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`did not specify what the input should be; the input could be of any type, such as
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`magnet,3 capacitive, Bluetooth, etc. Id. Each WWGC participant made its own
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`viewers, sold its own viewers, and had considerable design flexibility. And, most
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`importantly, these guidelines disclaim any indemnity relationship with WWGC
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`members: “Google … will not indemnify any manufacturers for these designs or
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`for third-party viewers generally.” EX2031, at 7.
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`b. DDC’s RPI/Privity Argument for UC Should be Rejected
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`As an initial matter, the Board should ignore DDC’s argument that UC’s VR
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`viewer was similar, although not identical, to Google’s viewer. DDC fails to
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`provide any explanation of the relevance of the similarities to an RPI/privity
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`analysis, because there is none. See, e.g., POPR, at 19.
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`3 Magnets are important because the ’001 patent basically disclaims them
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`from claim scope. EX1001, 2:6-30; 3:38-43.
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`7
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`UC was simply a WWGC member. All of DDC’s evidence only serves to
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`confirm this. The collaboration were all part of the WWGC program and have no
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`bearing on an RPI/privity analysis.
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`DDC nonetheless relies on the current Google standard Terms of Service to
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`suggest an indemnity relationship. POPR, at 20; EX2033. But DDC provides no
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`evidence that they were in effect during the WWGC program, and in any event,
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`they are irrelevant because they apply to end users of Google products, not
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`WWGC members. Id. at 1 (“these Terms of Service help define Google’s
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`relationship with you as you interact with our services.”). Moreover, as discussed
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`above, the WWGC guidelines themselves disclaimed any indemnity obligations.
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`Lastly, DDC relies on settlement discussions, which are covered under
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`F.R.E. 408, and are thus inadmissible. POPR, at 20-21.
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` UC is not an RPI or privy of Google.
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`IV. Conclusion
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`8
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`For the foregoing reasons, Petitioner respectfully requests the Board reject
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`DDC’s RPI/privity arguments.
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`Dated: September 1, 2023
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`Michael L. Kiklis______
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`Respectfully Submitted,
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`Michael L. Kiklis
`Reg. No. 38,939
`Attorney for Petitioner
`Google LLC
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`9
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`CERTIFICATE OF SERVICE
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`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e) of
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`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
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`and Exhibits 1019 and 1020 by filing these documents through the USPTO Patent
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`Trial and Appeal Case Tracking System and by emailing a copy to the following
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`email addresses:
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`mholohan@sheridanross.com
`rbrunelli@sheridanross.com
`DDC-Service Google-IPRs@sheridanross.com
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`Dated: September 1, 2023
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`Michael L. Kiklis______
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`Respectfully Submitted,
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`Michael L. Kiklis
`Reg. No. 38,939
`Attorney for Petitioner
`Google LLC
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