IPR2024-00200
`U.S. Pat. No. 11,117,056
`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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`PLR WORLDWIDE SALES LIMITED,
`Petitioner
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`v.
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`FLIP PHONE GAMES, INC.,
`Patent Owner
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`__________________
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`IPR No. IPR2024-00200
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`Patent No. 11,117,056
`
`_________________
`PATENT OWNER’S PRELIMINARY SUR-REPLY
`
`
`U.S. Pat. No. 11,117,056
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`
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`PLR WORLDWIDE SALES LIMITED,
`Petitioner
`
`v.
`
`FLIP PHONE GAMES, INC.,
`Patent Owner
`
`__________________
`
`IPR No. IPR2024-00200
`
`Patent No. 11,117,056
`
`_________________
`PATENT OWNER’S PRELIMINARY SUR-REPLY
`
`
`
`IPR2024-00200
`U.S. Pat. No. 11,117,056
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`EXHIBIT LIST
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`Ex.
`2001
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`2002
`
`Description
`Playrix’s Exchange of Proposed Terms and Claim Elements for
`Construction, served January 30, 2024
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`Prosecution History of U.S. Patent No. 9,731,202
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`i
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`IPR2024-00200
`U.S. Pat. No. 11,117,056
`Petitioner’s Reply ignores the Petition’s § 325(d) analysis and introduces new
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`arguments on discretionary denial. The parent of the ’056 Patent went through ten
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`years of prosecution, including a decision from the Board, finding the claims
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`patentable over similar art—a highly relevant fact with respect to § 325(d). On the
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`claim construction issue, Petitioner shifts its positions yet again, dropping
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`indefiniteness and raising a new construction of the term “pre-selected” which it now
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`says is “content selected in advance.” But the Petition fails to show that the cited art
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`meets this new construction and instead addresses, at most, only selecting content.
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`The Board should exercise discretion and deny institution.
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`I.
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`Discretionary Denial is Warranted Under § 325(d)
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`The Reply’s argument regarding § 325(d) is entirely new and should not be
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`considered. See Consolidated Trial Practice Guide (“TPG”) at 73 (“Petitioner may
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`not submit new evidence or argument in reply that it could have presented
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`earlier….”). The Petition included a section addressing § 325(d). See Petition at 61.
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`Therein, Petitioner urged against denial because none of the references addressed
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`during prosecution “contain a substantially similar disclosure of a mobile game with
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`dynamically updated hot spots represented in-game as non-promotional background
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`objects, as is disclosed in the combinations described in the Grounds presented
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`herein.” Id. Thus, the Petition failed to address the relevant prior art and claim
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`language. The Board should disregard new argument presented in Reply. TPG at 73.
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`1
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`IPR2024-00200
`U.S. Pat. No. 11,117,056
`Petitioner newly suggests that FPG’s § 325(d) arguments regarding Hays and
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`Levkovitz apply to only Grounds 1 and 4. This is wrong. There are only two
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`additional references (Choi and Chu), and the Petition uses these references only as
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`alternative grounds for certain claims. Grounds 1 and 4 address all claims, and
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`Grounds 2, 3, 5, and 6 introduce Choi and Chu as alternative grounds for only certain
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`elements. Such use of secondary references does not foreclose discretionary denial.
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`See Ziegmann v. Stephens, No. IPR2015-01860, Paper 11 at 9 (P.T.A.B. Feb. 24,
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`2016) (denying institution where a primary reference “was substantively presented
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`to and considered by the Office,” but was presented in the petition “in view of several
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`secondary references.”). Indeed, in Juniper Networks, Inc. v. Finjan, Inc, the
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`Petitioner argued that denial was not appropriate because “notwithstanding the use
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`of Hanson, the Petition asserts prior art … that has never been considered by the
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`Office.” No. IPR2019-00060, Paper 7 at 13 (P.T.A.B. Apr. 29, 2019). As the Board
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`explained, “the reliance on Hanson and previously presented arguments [is] a factor
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`that strongly weighs in favor of denial of this Petition”—regardless of the newly
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`added references. Id. at 15. The same is true here, where the primary references—
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`Hays and Levkovitz—are used in every ground and are substantially the same as the
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`art previously considered by the Examiner and the Board.
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`As explained, Hays and Levkovitz describe providing advertising to mobile
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`devices based on location, just like the Willis reference considered during
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`2
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`IPR2024-00200
`U.S. Pat. No. 11,117,056
`prosecution. See POPR at 18-19. Petitioner acknowledges these similarities but
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`urges—without authority—that they are somehow “irrelevant.” Reply at 2. These
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`similarities weigh in favor of denial. 35 U.S.C. § 325(d). The Reply goes on to argue
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`that § 325(d) denial is improper because it alleges that “Hays and Levkovitz provide
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`advertisements based “on a model type.” First, this is not the claim element, which
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`requires “wherein the message is pre-selected by the server based on….” Second, as
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`explained, the Petition failed to address “pre-selected” content. POPR at 33-42.
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`Finally, Petitioner attempts to distinguish the Board’s decision in Juniper,
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`suggesting that the length of prosecution is only a factor where the same reference
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`was submitted during prosecution. Reply at 3. This is wrong. Juniper stated that the
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`§ 325(d) factors are “non-exclusive,” and that “additional circumstances, not fitting
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`within any of the listed factors, may be relevant to our exercise of discretion under
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`§ 325(d) in the context of examination.” Juniper Networks, Inc. v. Mobile Telecoms.
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`Techs., LLC, IPR2017-00642, Paper 31 at 10 (P.T.A.B. Mar. 14, 2018). Juniper
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`further explained that “11 years of prosecution history, which included multiple
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`appeals to the Board,” would be one of those factors. Id. at n.5. In an informative
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`decision, the Board has also explained that while “length of prosecution and the
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`numbers of Office Actions and Board Decisions do not, by themselves, definitively
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`mandate for or against institution on a particular ground, on these facts, … they do
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`weigh heavily against institution of the prior art grounds proffered by Petitioner.”
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`3
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`IPR2024-00200
`U.S. Pat. No. 11,117,056
`Kayak Software Corp. v. IBM Corp., No. CBM2016-00075, Paper 16 at 12–13
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`(P.T.A.B. Dec. 15, 2016) (informative). The Board should decline to review this
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`patent, whose parent it has already considered and found patentable over similar art
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`during an appeal and ten years of prosecution. See POPR at 15-22.
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`II.
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`Inconsistent Claim Construction Positions Doom the Petition
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`The Reply implicitly concedes that Petitioner’s claim construction positions
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`were inconsistent, but brushes that off by saying “Petitioner does not currently
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`contend in the litigation that any claims of the ’056 patent are indefinite.” Reply at
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`4. Petitioner’s litigation position, however, was stated in a pleading (Ex. 2001)
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`signed months after Petitioner represented to the Board that it “does not believe any
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`terms require construction.” Petition at 12.
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`In an attempt to mask this inconsistency, the Reply now argues that “[t]hough
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`the outer boundaries of that term may be indefinite, it clearly includes content
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`selected in advance.” Reply at 4 (emphasis added). This argument is new. But more
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`critically, the Petition does not even attempt to establish that Hays and Levkovitz
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`disclose “content selected in advance,” as Petitioner’s new construction requires.
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`Rather than addressing this new construction, the Petition, at most, addresses
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`selecting content, without explaining how that content is “preselected.” The Petition
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`simply equates “selection” to “preselection.” See Petition at 18-21 (Hays) and 47-48
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`4
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`IPR2024-00200
`U.S. Pat. No. 11,117,056
`(Levkovitz). The Petition never addresses how content is “preselected,” much less
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`that it is “content selected in advance,” under Petitioner’s construction.
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`Petitioner’s cited authority does not support its inconsistent positions.
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`Petitioner cites to dicta in the Supreme Court’s Nautilus decision regarding
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`indefiniteness. But Nautilus addresses the standard for indefiniteness, not whether a
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`Petitioner may urge that a claim term is indefinite at the district court after having
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`told the Board that the claim term did not require construction. Likewise, in Western
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`Digital Corp. v. SPEX Techs., Inc., the petition was based on the claim constructions
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`put forth by the patent owner in related district court litigation. IPR2018-00082,
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`Paper 11 at 12 (Apr. 25, 2018). Similarly, in Philip Morris Products, S.A. v. Rai
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`Strategic Holdings, Inc., the petitioner relied on the patent owner’s constructions to
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`argue the claims were unpatentable. IPR2020-00921, Paper 13 at 42 (Aug. 5, 2021).
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`In contrast, here Petitioner first argued the claim was indefinite and then changed to
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`a new construction of pre-selected. But the Petition fails to establish that the cited
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`art meets this new construction. Thus, the Petition must fail.
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`III. Conclusion
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`Petitioner fails to carry its burden, and no proceeding should be instituted.
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`5
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`Dated: April 1, 2024
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`IPR2024-00200
`U.S. Pat. No. 11,117,056
`Respectfully submitted,
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`
`
`/Michael T. Morlock/
`Michael T. Morlock
`Reg. No. 62,245
`Lead Counsel for Patent Owner
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`6
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`IPR2024-00200
`U.S. Pat. No. 11,117,056
`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing PATENT
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`OWNER’S PRELIMINARY SUR-REPLY has been served electronically via
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`email upon the following:
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`jimglass@quinnemanuel.com
`quincylu@quinnemanuel.com
`ronhagiz@quinnemanuel.com
`nimahefazi@quinnemanuel.com
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`Dated: April 1, 2024
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`By: /Michael T. Morlock/
`Michael T. Morlock
`Reg. No. 62,245
`Lead Counsel for Patent Owner
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