Petitioner’s Response to Patent Owner’s Discretionary Denial Brief
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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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`GOOGLE LLC,
`Petitioner,
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`v.
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`CELLULAR SOUTH, INC.,
`Patent Owner.
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`Case IPR2025-00877
`Patent 11,126,853 B2
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`PETITIONER’S RESPONSE TO PATENT OWNER’S REQUEST
`FOR DISCRETIONARY DENIAL OF INSTITUTION
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`Petitioner’s Response to Patent Owner’s Discretionary Denial Brief
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`Table of Contents
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`I. INTRODUCTION .......................................................................................... 1
`II. DISCRETIONARY DENIAL IS NOT WARRANTED ................................ 1
`A. Fintiv Weighs Against Discretionary Denial ....................................... 1
` The Court Has Indicated That It Will Likely Grant a Stay
`if IPR is Instituted ...................................................................... 1
` Trial, If Any, Would Take Place Months After a Final
`Written Decision ........................................................................ 4
` The District Court Case Is Still Early Stage, with
`Minimal Investment by the Court and the Parties ..................... 5
` Petitioner’s Stipulation Would Result in Minimal
`Overlap with the District Court Case ......................................... 9
` Parties in the District Court Case ............................................. 10
`B. Other Considerations Also Weigh Against Discretionary Denial ..... 11
` The Validity or Patentability of the Challenged Claims
`Has Not Been Adjudicated Before ........................................... 11
` Patent Owner’s “Settled Expectations” Should Be
`Rejected .................................................................................... 11
` The Merits of the Petition Are Strong, and Petitioner
`Relied Properly on Expert Testimony ..................................... 17
`III. CONCLUSION ............................................................................................. 20
`CERTIFICATE OF SERVICE ............................................................................... 23
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`Petitioner’s Response to Patent Owner’s Discretionary Denial Brief
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`Table of Authorities
` Page(s)
`Cases
`Advanced Micro Devices Inc. v. Realtek Semiconductor Corp.,
`Case No. IPR2023-00789, Paper 9 (P.T.A.B. Oct. 26, 2023) ............................ 18
`Apple Inc. v. Fintiv, Inc.,
`Case No. IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ..................passim
`BOE Tech. Grp. Co. v. Optronic Scis. LLC,
`Case No. IPR2024-01130, Paper 16 (P.T.A.B. Jan. 27, 2025) ..................... 10, 11
`Fluidigm Corp. v. IONpath, Inc.,
`No. C 19-05639 WHA, 2020 WL 408988 (N.D. Cal. Jan. 24, 2020) ................ 15
`Illumina, Inc. v. Ravgen, Inc.,
`Case No. IPR2021-01271, Paper 12 (P.T.A.B. Jan. 26, 2022) ......................... 7, 8
`IRhythm Techs., Inc. v. Welch Allyn, Inc.,
`Case No. IPR2025-00363, Paper 10 (P.T.A.B. June 6, 2025) ........................ 5, 16
`Kahoot! AS v. Interstellar Inc.,
`Case No. IPR2025-00696, Paper 12 (P.T.A.B. July 31, 2025) ............................ 5
`Murata Mfg. Co. v. Georgia Tech Research Corp.,
`Case No. IPR2025-00383, Paper 14 (P.T.A.B. July 29, 2025) .......................... 14
`ResMed Corp. v. Cleveland Med. Devices, Inc.,
`Case No. IPR2025-00160, Paper 11 (P.T.A.B. June 13, 2025) ............................ 9
`Samsung Bioepis Co., Ltd. v. Regeneron Pharms., Inc.,
`Case No. IPR2025-00176, Paper 12 (P.T.A.B. June 2, 2025) .......................... 4, 5
`Samsung Elecs. Co. v. Acorn Semi, LLC,
`Case No. IPR2020-01282, Paper 20 (P.T.A.B. Feb. 10, 2021) .......................... 18
`SAP Am., Inc. v. Cyandia, Inc.,
`Case No. IPR2024-01433, Paper 13 (P.T.A.B. Apr. 7, 2025) .............................. 8
`Shenzhen Root Tech. Co. v. Chiaro Tech. Ltd. d/b/a Elvie,
`Case No. IPR2024-01296, Paper 9 (P.T.A.B. Feb. 25, 2025) ............................ 10
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`Petitioner’s Response to Patent Owner’s Discretionary Denial Brief
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`Shenzhen Tuozhu Tech. Co. Ltd. v. Stratasys, Inc.,
`Case No. IPR2025-00438, Paper 10 (P.T.A.B. July 17, 2025) .......................... 12
`Shenzhen Tuozhu Tech. Co. v. Stratasys, Inc.,
`Case No. IPR2025-00321, Paper 10 (P.T.A.B. June 18, 2025) ............................ 8
`Smartsky Networks LLC v. Gogo Business Aviation LLC,
`Case No. IPR 2025-00672, Paper 10 (P.T.A.B. July 31, 2025) ....................... 4, 5
`Sotera Wireless, Inc. v. Masimo Corp.,
`Case No. IPR2020-01019, Paper 12 (P.T.A.B. Dec. 1, 2020) ............................. 9
`State Indus., Inc. v. AO Smith Corp.,
`751 F. 2d 1226 (Fed. Cir. 1985) ......................................................................... 15
`Yealink (USA) Network Tech. Co. v. Barco N.V.,
`Case No. IPR2025-00491, Paper 18 (P.T.A.B. June 25, 2025) .......................... 12
`Statutes
`35 U.S.C. § 314(a) ................................................................................................... 20
`Other Authorities
`37 CFR § 1.14(a) ...................................................................................................... 15
`Stephen Yelderman, Prior Art in Inter Partes Review, 104 Iowa L.
`Rev. 2705, 2719 (July 2019) ............................................................................... 18
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`Petitioner’s Response to Patent Owner’s Discretionary Denial Brief
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`I. INTRODUCTION
`The Petition presents an early, strong ch allenge to the ’853 patent based on
`new prior art that was not considered duri ng prosecution. The related district court
`litigation is still at an early stage, and the court has indicated to the parties that a stay
`is highly likely if IPR is instituted. Even putting aside a stay, any trial will not take
`place until, at the earliest , several months after a Fi nal Written Decision would be
`due. The ’853 patent issued recently in 2021, and Patent Owner’s purported “settled
`expectations” should be rejected. Accordingly, as explained in detail below, Patent
`Owner’s request for discretionary denial should be denied.
`II. DISCRETIONARY DENIAL IS NOT WARRANTED
`A. Fintiv Weighs Against Discretionary Denial
` The Court Has Indicated That It Will Likely Grant a Stay if
`IPR is Instituted
`Fintiv Factor 1 weighs in favor of institution and against discretionary denial.
`Shortly after filing the Petition, Petitione r discussed a stay of the parallel
`litigation in the Northern District of Calif ornia pending IPR at a case management
`conference. During that conference, the court indicated that it was inclined to grant
`a stay if IPR is instituted. The court explained, “So typically I would grant the
`request to stay if IPR is instituted, just so that you know. It doesn’t seem to make
`sense for a district judge to go through all that work where there are parallel
`proceedings that would take precedence u ltimately with respect to a decision. …
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`Those kinds of motions, I don’t ever even grant hearings. I just basically grant
`them.” (EX2011, 4:8-16.)
`In Fintiv, the Board stated that “such guidance from the district court, if made
`of record, suggests the district court may be willing to avoid duplicative efforts and
`await the PTAB’s final resolution of the patentability issues raised in the petition
`before proceeding with the parallel litig ation,” and weighs against exercising
`discretion to deny institution. Apple Inc. v. Fintiv, Inc. , Case No. IPR2020-00019,
`Paper 11 at 7 (P.T.A.B. Mar. 20, 2020). In fact, this fa ctor weighs even more
`strongly against discretionary denial here. In Fintiv, the court had merely “indicated
`to the parties that it will consider a renewed motion or reconsider a motion to stay if
`a PTAB trial is instituted.” Id. Here, however, the distri ct court has gone further
`and plainly stated to the parties its practice of staying cases if IPR is instituted. That
`practice is reflected in dozens of stays pending IPR granted by the court, with none
`denied for instituted IPRs. (See EX1020.)
`The district court provided only a single caveat to its general rule of staying
`proceedings upon IPR institution, and it does not alter the Fintiv analysis here.
`Specifically, the court said that “[t]he only reason why I wouldn’t [stay the entire
`case] is let’s say they grant one, but don ’t grant the other two and they’re entirely
`different, I might stay one, not the others.” (EX2011, 4:17-19.) The court in that
`caveat was explaining that should the Boar d institute IPR of only one of Patent
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`Owner’s asserted patents in the parallel litig ation, the court might elect to stay the
`parallel proceedings only as to the patent for which IPR was instituted. 1 In other
`words, if the Board institutes IPR on all of Patent Owner’s a sserted patents, the
`district court will stay the parallel litigation. And if the Board institutes IPR on only
`the ’853 patent addressed in this proceedi ng, the court would still stay the parallel
`litigation as to the ’853 patent. In either event, parallel proceedings on the ’853
`patent would be stayed.
`If IPR is instituted, Petitioner intends to follow the court’s guidance and
`promptly bring a motion to stay the district court proceedings. There is good reason
`to believe that such a post-institution stay would be granted, as the district court has
`already informed the parties that it routinely grants such motions without a hearing.
`(EX2011, 4:8-15.) Indeed, once institute d, the IPR will simplify matters in the
`district court one way or another. Th e challenged claims of the ’853 patent
`potentially will be (and indeed should be, for the reasons provided in the Petition)
`found unpatentable by the Board, th ereby simplifying and reducing—if not
`eliminating—the claims asserted in the dist rict court proceeding. And even if one
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`1 The ’853 patent is one of three patent s asserted in the parallel district court
`litigation. Petitioner has move d for IPR on all claims of all asserted patents. See
`IPR2025-00875, IPR2025-00876, IPR2025-00877.
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`or more asserted claims were to survive review (assumed arguendo), once instituted
`and in view of the prior art stipulatio n filed by Petitioner (and discussed further
`below), the estoppel provisions of § 315(e ) will apply and simplify the invalidity
`issues raised in the district court. Also , Patent Owner has not alleged that it is a
`competitor of Petitioner, making a stay more likely to be granted.
`Therefore, the high likelihood that the district court will stay the litigation, at
`least as to the ’853 patent, following in stitution of this IPR weighs against
`discretionary denial.
` Trial, If Any, Would Take Place Months After a Final
`Written Decision
`Fintiv Factor 2 also weighs against discretionary denial.
`As Patent Owner acknowledges, a district court trial is currently scheduled to
`take place three months after a Final Written Decision woul d be due. (D D Req. at
`9-10.) And as discussed above, because of the high likelihood of a stay if IPR is
`instituted, the current trial date is a non-is sue. Moreover, putti ng aside a stay, this
`later trial date combined with Petitioner’s prior art stipulation discussed below, helps
`ensure both minimal overlap with this IP R and minimal investment in the litigation
`by the court and parties. It also helps avoid any possible inconsistent results between
`the PTAB and district court.
`Patent Owner cites the Acting Director’s decisions in IRhythm Technologies
`and Smartsky Networks, and the institution decision in Samsung Bioepis (DD Req.
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`at 10-11), but those decisions actually support Petitioner on this factor—in all three,
`a later trial date “weigh[ed] ag ainst discretionary denial.” IRhythm Techs., Inc. v.
`Welch Allyn, Inc., Case No. IPR2025-00363, Paper 10 at 2 (P.T.A.B. June 6, 2025);
`Smartsky Networks LLC v. Gogo Business Aviation LLC, Case No. IPR 2025-00672,
`Paper 10 at 2 (P.T.A.B. July 31, 2025); Samsung Bioepis Co., Ltd. v. Regeneron
`Pharms., Inc., Case No. IPR2025-0017 6, Paper 12 at 13 (P.T .A.B. June 2, 2025).
`And Kahoot is irrelevant on this factor, because the parallel district court proceeding
`had been stayed. Kahoot! AS v. Interstellar Inc. , Case No. IPR2025-00696, Paper
`12 at 2 (P.T.A.B. July 31, 2025).
` The District Court Case Is Still Early Stage, with Minimal
`Investment by the Court and the Parties
`Fintiv Factor 3 likewise weighs against discretionary denial.
`As Patent Owner concedes, the parallel district court litigation (now in the
`Northern District of California) is ju st beginning. The bulk of the work and
`investment in the litigation (particularly as it relates to the validity of the ’853 patent)
`lies ahead. For example, the district court has not issued a claim construction order,
`and the claim construction hearing itself is not scheduled to occur in the district court
`until April 29, 2026—more than four months after the December 16, 2025 expected
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`date for an institution decision.2 (EX2010 at 3.)
`Further, close of fact discovery is still 9 months away and much of fact
`discovery remains left to complete. For example, no depositions have been noticed,
`much less taken (party or third-party, individual or 30(b)(6)); document production
`is not complete; Patent Owner still has 9 of its 25 interrogatories left, while Petitioner
`has all 25 of its interrogatories left; no requests for admission have been propounded
`by any party; Petitioner has ye t to serve invalidity conten tions. (EX2010 at 2-4.)
`Expert discovery, where much of the pre-trial effort by the parties in addressing the
`validity of the ’853 patent will lie, will not start until July 2026. (Id. at 4.) Briefing
`and the hearing on Daubert and dispositive motions lie even further in the future, in
`October and November 2026. (Id.)
`Because there is much work left to be done in the district court litigation, there
`is no claim construction order and other key milestones lay long after an institution
`decision, the current investment in the parallel proceeding thus is not likely to reduce
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`2 As noted above, if institute d, Petitioner anticipates that it will promptly move to
`stay the district court litigation pending resolution of the IPR.
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`the chances of a stay being granted or result in the duplication of efforts and costs.3
`See Fintiv, Paper 11 at 10 (“This investment factor is related to the trial date factor,
`in that more work completed by the par ties and court in the parallel proceedings
`tends to support the arguments that the parallel proceeding is more advanced, a stay
`may be less likely, and instituting would lead to duplicative costs.”). Indeed,
`notwithstanding the efforts made in the case thus far, as discussed above, the district
`court went on the record to state its inclin ation to stay the parallel district court
`litigation pending IPR, if instituted. (EX2011, 4:8-15; see also Sections II.A.1 and
`II.A.2 (Fintiv Factors 1 & 2 analysis), supra.)
`The events in the parallel litigation that Patent Owner identifies in its brief,
`including initial disclosures, its pre liminary infringement contentions, and
`Petitioner’s motion to dismiss pre-transfer in the Western District of Texas (see DD
`Req. at 11), only serve to demonstrate the early stage of the litigation. These are
`typical events and discovery that occur early in the lifecycle of any patent litigation,
`and “most of the investment from the court and the parties in the [parallel district
`court case] lies ahead.” Illumina, Inc. v. Ravgen, Inc. , Case No. IPR2021-01271,
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`3 This is particularly true in view of the district court’s stated inclination to grant a
`stay if IPR is instituted, and in view of Petitioner’s prior art stipulation. See Sections
`II.A.1, supra, and II.A.4, infra.
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`Paper 12 at 28-29 (P.T.A.B. Ja n. 26, 2022). Furthermor e, most of the events
`identified by Patent Owner have no bearing on the post-transfer proceedings in the
`Northern District of California, and thus bear no relevance to Factor 3. Petitioner
`has not renewed its motion to dismiss in th e Northern District of California, and
`Patent Owner has agreed to re-do its in fringement contentions under the Northern
`District of California Patent Local Rule s. Patent Owner’s amended infringement
`contentions under the Northern District of California Patent Local Rules are not due
`until October 23, 2025. (EX2010 at 2.)
`All told, the parallel litigation is at an earlier stage with far less investment
`than other cases in which the Board has d eclined requests for discretionary denial.
`See, e.g., SAP Am., Inc. v. Cyandia, Inc., Case No. IPR2024-01433, Paper 13 at 10-
`11 (P.T.A.B. Apr. 7, 2025) (factor favors institution where claim construction terms
`and contentions exchanged, no Markman hearing held, and expert discovery to close
`in approximately two months); Shenzhen Tuozhu Tech. Co. v. Stratasys, Inc. , Case
`No. IPR2025-00321, Paper 10 at 12 (P.T.A.B. June 18, 2025) (factor weighs against
`discretionary denial where “fact and expert discovery do not close until next year”).
`Patent Owner also suggests that Petitione r was less than diligent in filing the
`Petition and that the timing of th e filing supports its Request. ( See DD Req. at 11-
`12.) Patent Owner is mistaken. Petitioner diligently filed its well-supported Petition
`within the statutory deadline, only three months after the case was transferred to the
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`Northern District of California, without the benefit of Patent Owner’s amended
`infringement contentions under the operativ e local patent rule s, and many months
`before Petitioner’s invalidity contentio ns are due. (EX 1021; EX2010 at 2.) See,
`e.g., Sotera Wireless, Inc. v. Masimo Corp. , Case No. IPR2020- 01019, Paper 12 at
`17 (P.T.A.B. Dec. 1, 2020) (“ Sotera”) (finding the timing of the petition was
`reasonable where “Petitioner filed its Pe tition approximately two months after
`serving its initial invalidity contentions, and approximately two weeks before the
`statutory deadline.”).
` Petitioner’s Stipulation Would Result in Minimal Overlap
`with the District Court Case
`Fintiv Factor 4 also weighs against discretionary denial.
`To begin with, if the parallel district court litigation is stay ed, “there is no
`danger of overlap.” See ResMed Corp. v. Cle veland Med. Devices, Inc. , Case No.
`IPR2025-00160, Paper 11 at 16 (P.T.A.B. June 13, 2025). Putting aside the
`likelihood of a stay, even if any claims survive this IPR, Petitioner’s Sotera prior art
`stipulation minimizes the possibility of overlapping issues between this IPR and the
`district court litigation. ( See Pet. at 3.) Though Patent Owner tries to twist the
`language of Petitioner’s stipulation (DD Req. at 14-15), it is not limited to only the
`specific prior art references in the Pe tition’s grounds. Petitioner provided nothing
`less than a Sotera stipulation.
`Although each of Petitioner’s three IPR petitions against Patent Owner relies
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`on a different primary reference, Patent Owner also makes an undeveloped argument
`that overlapping secondary prior art in thos e IPRs weighs in favor of discretionary
`denial. (DD Req. at 14-15.) Again putting aside the likelihood of a stay if IPR is
`instituted, Patent Owner fails to identif y what alleged “same central issues” or
`“inconsistent results” are possible. In fact, Patent Owner acknowledges that the ’853
`patent is “not related” to the other two challenged patents. (DD Req. at 5.) And the
`claims of the other two challenged patent s have significant differences, as reflected
`in the respective IPRs relying on different primary references against them.
` Parties in the District Court Case
`With respect to Fintiv Factor 5, while this IPR and the parallel district court
`litigation involve the same parties, such a consideration should be found in favor of
`institution or at least neutral to the discretionary denial analysis. See, e.g. , BOE
`Tech. Grp. Co. v. Optronic Scis. LLC, Case No. IPR2024-01130, Paper 16 at 13-14
`(P.T.A.B. Jan. 27, 2025) (fact or neutral or in favor of institution where parties are
`the same in IPR and district court litigation); Shenzhen Root Tech. Co. v. Chiaro
`Tech. Ltd. d/b/a Elvie , Case No. IPR2024- 01296, Paper 9 at 19- 20 (P.T.A.B. Feb.
`25, 2025) (factor neutral where parties ar e the same in IPR and district court
`litigation). For example, in BOE Technology Group, the Board found that this factor
`was “neutral or weigh[ed] slightly in fa vor of not exercising discretionary denial”
`because, like here, “the district-court tria l—and hence any ruling on the validity of
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`the claims asserted in the district court— may not occur before the entry of a final
`written decision in this IPR.” BOE Tech. Grp. Co., Paper 16 at 13-14.
`B. Other Considerations Also Weigh Against Discretionary Denial
`In addition to the Fintiv factors above, several other considerations listed in
`the Acting Director’s March 26, 2025 Memorandum on Interim Processes for PTAB
`Workload Management (“Memo”) also do not favor discretionary denial. ( See
`Memo at 2.)
` The Validity or Patentability of the Challenged Claims Has
`Not Been Adjudicated Before
`For starters, neither the PTAB nor anot her forum has previously adjudicated
`the validity or patentability of the challenged patent claims. This IPR is the first and
`only post-grant challenge to the ’853 patent at the Patent Office. Moreover, as noted
`in the Petition, none of the primary prior art refere nces relied on in Grounds 1 or 2
`(Zhao [EX1003], Kritt [EX1004], Steinberg [EX1005], Kouzani [EX1006], Yang
`[EX1007], and Romdhani [EX 1008]) were identified during prosecution. (Pet. at
`4.) The failure to identify and appreciate several material prior art references should
`not only weigh against discretionary de nial generally, it should also weigh
`specifically against any alleged “settled e xpectations” of Patent Owner, as further
`explained next.
` Patent Owner’s “Settled Expectations” Should Be Rejected
`With respect to “settled expectations ,” the ’853 patent issued recently,
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`September 2021. This Petition’s early cha llenge to the patent therefore weighs
`against discretionary denial. Yealink (USA) Network Tech. Co. v. Barco N.V., Case
`No. IPR2025-00491, Paper 18 at 3 (P.T.A.B . June 25, 2025) (“ [T]he challenged
`patent issued recently, in 2020….[which] we igh[s] against discretionary denial.”).
`Moreover, Patent Owner offers zero evidence—and Petitioner could find
`none—that any of the challenge d claims have ever been “commercialized, asserted,
`marked, licensed or otherwise applied” in Petitioner’s technology space. Shenzhen
`Tuozhu Tech. Co. Ltd. v. Stratasys, Inc. , Case No. IPR2025-00438, Paper 10
`(P.T.A.B. July 17, 2025). Patent Owner o ffers only empty self-serving statements
`about an apparently de funct 2015 “Video-to-Data” product and presenting its
`technology at a conference that same year. (DD Req. at 18-19.) But these activities
`are irrelevant, and should be rejected, because Patent Owner concedes that its “2015
`V2D product does not embody the claims of the ’853 patent.”4 (DD Req. at 19.) In
`any event, Patent Owner’s suggestion that Petitioner’s role as a corporate partner at
`the 2015 conference somehow im plicates “settled expectations” is meritless. (DD
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`4 In fact, both the May 2015 product launch and June 18, 2015 presentation pre-date
`the earliest application to which the ’853 pa tent could claim priority (i.e., June 29,
`2016) by over a year. These activities would therefore raise additional serious patent
`invalidity and unenforceability issues if they were relevant.
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`Req. at 19.) Petitioner sponsors or ot herwise participates in many technology
`conferences and conventions every year, with countless participants and
`presenters—including at least the followi ng large conventions in 2015 according to
`public data:
`Google I/O 2015 Goo gle Cloud Next 2015
`Mobile World Congress (MWC)
`2015
`Consumer Electronics Show
`(CES) 2015
`South by Southwest (SXSW)
`Interactive 2015
`SPROCKIT 2015
`ANA Media Leadership
`Conference
`FIRST Conference 2015
`NeurIPS (NIPS) 2015 Interna tional Conference on
`Machine Learning (ICML) 2015
`ACM SIGMOD 2015 USENIX LISA15
`Game Developers Conference
`(GDC)
`SIGGRAPH
`Web Summit TechCrunch Disrup t
`Google Developer Days O’Reilly Open Source
`Convention (OSCON) 2015
`PyCon US 2015 Strata + Hadoop World 2015
`Google Summer of Code Summit @Scale 2015
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`This list does not include the many other meetups, hackathons, and local developer
`events Petitioner has supported through its Google Developer Groups and Google
`for Entrepreneurs (now known as Google for Startups) programs, which would be a
`much longer list. Patent Owner’s one-off presentation at one event where Petitioner
`provided some sponsorship, years before the patent issued, does not support its
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`“settled expectations.” Patent Owner cites Murata Manufacturing, but unlike that
`case, there is no evidence here that Patent Owner and Petitioner even communicated,
`let alone discussed Pa tent Owner’s work. 5 Murata Mfg. Co. v. Georgia Tech
`Research Corp., Case No. IPR2025-00383, Paper 14 at 2-3 (P.T.A.B. July 29, 2025)
`(see also cited DD Opp. (Paper 11) at 21-26). Here, Patent Owner has shown, at
`most, that Petitioner provided a space (Google Tech Corners) for the conference to
`take place—over a year before the earliest possible priority date for the ’853 patent.
`Patent Owner points to an examiner’s citation in 2019 to the parent patent of
`the ’853 patent (i.e., U.S. Patent No. 10,204,274) during pr osecution of one of
`Petitioner’s patent applications. (DD Req. at 18 (citing EX2006).) That argument
`should also be rejected. For one thing, the citation was part of a post-allowance
`examiner notice. (EX1022.) The noti ce therefore confirms that Petitioner’s
`application was meaningfully different than the cited patent, and that there would
`therefore be little reason to review it, let alone search for, re view, and/or monitor
`any related pending applications . Moreover, the claims of that cited patent would
`have given no notice as to what the clai ms of the ’853 patent—which would issue
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`5 Indeed, despite the existence of accused products at the time the ’853 patent issued
`in 2021, Patent Owner waited three years— until 2024—to file su it. If any party
`should have settled expectations, it should be Petitioner.
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`nearly two years later—might ultimately be. As the Federal Circ uit has explained,
`“[f]iling an application is no guarantee any patent will issue” and “[w]hat the scope
`of claims in patents that do issue will be is something totally unforeseeable.” State
`Indus., Inc. v. AO Smith Corp. , 751 F. 2d 1226, 1236 (Fed. Cir. 1985) (“A ‘patent
`pending’ notice gives one no knowledge whatsoever.”); see also Fluidigm Corp. v.
`IONpath, Inc., No. C 19-05639 WHA, 2020 WL 408988, at *3 (N.D. Cal. Jan. 24,
`2020) (quoting State Indus.). That common unforeseeable change in scope is true
`here. Claim 1 of the ’853 patent adds two key claim elements not recited in any of
`the claims of the parent patent: (1) “the image detector is adjustable to increase
`detection of non-primary images in the video”; and (2) “the fractal includes a
`representation of the object based on landm arks associated with the object.”
`(Compare EX1023 (U.S. Patent No. 10,204,274), claims 1-23 with ’853, claim 1.)
`It also removes a claim requirement that “the coordinator is configured to embed
`metadata about the object into the video.” (Id.)
`Patent Owner also mentions the ’853 application publication. (DD Req. at
`17.) But the ’853 application had not published, and therefore would not have been
`publicly discoverable, at the time of the examiner’s notice identifying the parent
`patent; and in any event, it too recites different claim language. See 37 CFR § 1.14(a)
`(unpublished patent applications “gener ally preserved in confidence”); EX1024
`(U.S. 2019/0340437 A1) (face page, claims). As explained above, the examiner’s
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`post-allowance citation to the ’853 patent’s parent would have given little reason to
`review it, let alone search for, revi ew, and/or monitor any related pending
`applications.
`For similar reasons, Patent Owner’s cite to IRhythm Technologies is easily
`distinguishable. (See DD Req. at 19.) Unlike here, IRhythm Technologies involved
`allegations and evidence that the petitioner “ha[d] an established and public track-
`record of monitoring existing patents.” See IRhythm Techs., Inc. v. Welch Allyn,
`Inc., Case No. IPR2025-00363, Pa per 7 at 30 (Patent Owner’s discretionary denial
`brief); see also IRhythm Techs., Inc. v. Welch Allyn, Inc., Case No. IPR2025-00363,
`Paper 10 at 3 (P.T.A.B. June 6, 2025). Patent Owner does not allege that Petitioner
`was drafting its own patent claims or developing products using the claims of Patent
`Owner’s patents; and as noted, Patent Owner has not alleged that it is, or ever was,
`a competitor of Petitioner.
`Patent Owner’s assertion that Petitioner should have petitioned for IPR when
`the ’853 patent first issued should be rejected. ( See DD Req. at 17-18.) It simply
`ignores reality. For example, Petitioner ma intains an extensive and active patent
`prosecution docket, including roughly 26,800 issued U.S. utility patents and 6,200
`pending U.S. utility applications. It is unt enable to expect Petitioner to investigate
`all references cited during its prosecution matters, analyze their claims (and potential
`claims), and the claims in any related fam ily members that may not even be cited,
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`and file pre-emptive challenges at the PTAB to preserve a right to the IPR process.
`It would be an enormous e xpenditure of resources to ch allenge even a fraction of
`patents based on trying to predict possible future infringement allegations related to
`patents or applications cite d during prosecution, let alone all patents that generally
`could relate to an area of technology in which Petitioner is involved. That expense
`would extend to patent owners and the PTAB. The timing of Petitioner’s challenge
`to the ’853 patent does not support settled expectations for Patent Owner.
`Moreover, the examination itself of th e ’853 patent should undercut Patent
`Owner’s expectations. As noted above , material errors were made during
`prosecution—including failing to identify a ny of the highly material prior art
`references cited in Grounds 1 and 2 of the Petition. The ’853 patent therefore issued
`as a result of a clearly flawed prosecuti on, which should we igh against Patent
`Owner’s “settled expectations.”
` The Merits of the Petition Ar e Strong, and Petitioner Relied
`Properly on Expert Testimony
`The merits of the Petition are str ong, presenting a compelling case of
`unpatentability. For example, Ground 1 of the Petition presents a straightforward
`combination primarily based on the teachings of Zhao [EX1003], with Kritt
`[EX1004], Steinberg [EX1005], and Kouzan i [EX1006] cited to provide express
`confirmation of well-known features either already suggested in Zhao or that would
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`have been apparent and obvious.6 (Pet. at 9-10.