From:
`To:
`Cc:
`Subject:
`
`Date:
`Attachments:
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`Abelev, Gary
`Trials
`Ackerman, Paul; Ghiam, Armin; Gresalfi, Christopher; Jennifer Bush; Brian Hoffman; Daniel Brownstone
`ironSource Ltd. v. Digital Turbine, Inc. (PGR2021-00096) - Request by Petitioner for Leave to Reply to Patent
`Owner"s Preliminary Statement
`Friday, October 15, 2021 2:47:04 PM
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`The parties to the above-referenced Post Grant Review proceeding request a conference call with
`the board.
`
`Petitioner, ironSource, seeks leave to file a limited reply to the Patent Owner’s Preliminary
`Statement to address two discrete issues: Patent Owner’s assertion of the applicability of 35 U.S.C.
`325(d), and a newly asserted claim construction position asserted in the Preliminary Statement.
`
`The parties have conferred and Patent Owner, Digital Turbine, opposes this request.
`
`Petitioner’s Position
`There is good cause for Petitioner’s reply as the issues to be addressed in the reply could not have
`been reasonably anticipated by Petitioner or addressed in the petition.
`
`With respect to 35 U.S.C 325(d), Patent Owner asserts (1) that a newly identified reference relied on
`in the Petition, U.S. Patent No 10,353,686 to Pasha (“Pasha”), is the “same or substantially the
`same” as a wholly unrelated reference, U.S. Published Patent Application US-20170192764-A1 to
`Cayre (“Cayre”), and (2) that the limited consideration of Pasha during examination of a continuation
`application which occurred after the filing of the present petition, each warrant the board
`exercising its discretion not to institute post grant review under 35 U.S.C. 325(d). (See Preliminary
`Response pp 40-44) Petitioner could not reasonably anticipate that the patent owner would
`attempt to draw equivalence between Cayre, which was only cited as a secondary reference in an
`obviousness rejection during prosecution of the ‘951 patent, and the Pasha reference that petitioner
`now asserts as an anticipatory reference in Ground 2 and a primary reference for obviousness in
`Grounds 3-5. Further, it is beyond dispute that Petitioner could not address the prosecution history
`of the Patent Owner’s continuation application which took place after the petition was filed.
`
`With respect to claim construction, Petitioner asserts that the term “installation client” is a defined
`term in the ‘951 patent. (See paper 2, Petition at 22-23). In its Preliminary Response, Patent Owner
`purports to adopt the stated construction but proceeds with an argument that requires further
`limiting the “installation client” to a single functional block of software, e.g. “Pasha fails to show ‘an
`application running on the device and having the role of downloading and installing software
`applications on the device.’ Pasha instead shows two separate components, one component for
`downloading and another component for installing.” (Preliminary Response at pg. 29.) Such an
`argument implicitly requires a claim construction that further and improperly limits the “installation
`client” to a single software element. Petitioner could not reasonably anticipate that the patent
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`owner would unduly limit the construction of the term “installation client,” especially in this case
`where the patentee acted as its own lexicographer and defined this term in the specification.
`
`Accordingly, Petitioner asserts that it has demonstrated good cause under 37 C.F.R. § 42.208(c) for
`leave to file a reply to these issues.
`
`Patent Owner’s Position
`The parties have conferred and Patent Owner, Digital Turbine, opposes this request as an improper
`attempt to obtain additional briefing on foreseeable responsive issues not supported by good cause.
`Further, Patent Owner submits that Petitioner’s Position includes substantive argument that is
`prohibited in emails to the Board. Should the Board grant Petitioner’s request for a brief Reply
`without a conference call, Patent Owner requests a Sur-reply of equal length and scope.
`
`Conference Call Availability
`The parties are jointly available for a conference call at the following times:
`
`
`Monday, Oct. 18: 12-1pm and 2-5pm ET
`Tuesday, Oct. 19: 1-5pm ET
`
`
`Please let us know if you have any questions.
`
`Best regards, Gary Abelev (Attorney for Petitioner).
`
`
`Gary Abelev
`Partner
`GaryAbelev@HuntonAK.com
`phone 212.850.2881
`mobile 917.520.1045
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