Filed on behalf of: IPR LICENSING, INC.
`
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`Paper No. 17
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`
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`By:
`
`
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`Jonathan D. Link
`Latham & Watkins LLP
`555 11th Street, NW
`Washington, DC 20004-1304
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`E-mail: jonathan.link@lw.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE CORPORATION AND ZTE (USA) INC.
`Petitioner
`
`V.
`
`IPR LICENSING, INC.
`Patent Owner
`____________
`
`Case IPR2014-00525
`Patent 8,380,244
`_____________
`
`Filed: August 8, 2014
`
`
`Before Althea Wilburn, Trial Paralegal
`
`
`PATENT OWNER’S OPPOSITION TO MOTION TO CORRECT
`CLERICAL ERRORS AND RESUBMIT EXHIBITS IN THE PETITION
`FOR INTER PARTES REVIEW
`
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`Paper No. 17
`
`
`
`
`By:
`
`
`
`Jonathan D. Link
`Latham & Watkins LLP
`555 11th Street, NW
`Washington, DC 20004-1304
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`E-mail: jonathan.link@lw.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE CORPORATION AND ZTE (USA) INC.
`Petitioner
`
`V.
`
`IPR LICENSING, INC.
`Patent Owner
`____________
`
`Case IPR2014-00525
`Patent 8,380,244
`_____________
`
`Filed: August 8, 2014
`
`
`Before Althea Wilburn, Trial Paralegal
`
`
`PATENT OWNER’S OPPOSITION TO MOTION TO CORRECT
`CLERICAL ERRORS AND RESUBMIT EXHIBITS IN THE PETITION
`FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.23, Patent Owner IPR Licensing Inc. respectfully
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`submits its opposition to Motion to Correct Clerical Errors and Resubmit Exhibits
`
`in the Petition for Inter Partes Review (the “Motion”) filed on August 6, 2014, by
`
`Petitioners ZTE Corp. and ZTE (USA) Inc. (collectively, “ZTE”). The Patent
`
`Owner opposes this motion for the reasons set forth below. In the alternative, the
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`Patent Owner requests that it be granted leave to file an amended Preliminary
`
`Response to address the new information ZTE seeks to add to the record.
`
`I.
`
`ZTE’S MOTION SHOULD BE DENIED AS PREJUDICIAL.
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`After being alerted to errors by the Patent Trial and Appeal Board (the
`
`“Board”), ZTE filed a second motion requesting permission from the Board to
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`correct its Petition for Inter Partes Review of U.S. Patent No. 8,380,244. ZTE
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`should not be given another opportunity to correct its petition.
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`Further, ZTE’s request does in fact prejudice InterDigital. On July 2, 2014,
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`the Patent Owner filed its Preliminary Response. Paper No. 12. This Preliminary
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`Response was based on ZTE’s then currently pending petition and exhibits, which
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`included an incomplete copy of Exhibit 1011 (previously filed as Exhibit 1010).1
`
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`1 That the Patent Owner had received these documents previously does not matter.
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`The entirety of these documents were not part of the record in the instant petition.
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`The Patent Owner is not obligated to address evidence it is aware of but that is not
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`
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`1
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`
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`Case IPR2014-00525
`
`
`Patent 8,380,244
`
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`Moreover, the Preliminary Response specifically noted ZTE’s failure to submit
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`evidence in support of certain positions, in footnote 3. Contrary to ZTE’s motion,
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`by adding portions of a document that had not previously been part of the record, it
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`is in fact adding new evidence. To permit ZTE to add new evidence and change
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`the record at this late date (and after two previous opportunities to file all exhibits
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`correctly) does in fact prejudice InterDigital in this proceeding.
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`II.
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`IF ZTE’S MOTION IS GRANTED, THE PATENT OWNER SHOULD
`BE ALLOWED TO SUBMIT AN AMENDED PRELIMINARY
`RESPONSE.
`
`The Patent Owner’s Preliminary Response was based on petition, exhibits
`
`and record as of July 2, 2014. This record did not include portions of Exhibit
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`1011. The Preliminary Response noted this failure to provide evidence in support
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`of its position, in footnote 3. The Preliminary Response did not address evidence
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`that was not of record as of July 2, 2014.
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`If the PTAB grants ZTE’s Motion, the Patent Owner requests leave to file an
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`Amended Preliminary Response to address this new evidence submitted by ZTE.
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`InterDigital should not be prejudiced by ZTE’s failure to submit this evidence
`
`when it filed its first corrected petition and exhibits.
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`Dated: August 8, 2014
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`part of the record before the Board. ZTE does not cite, and the Patent Owner is not
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`aware of, any authority that imposes any such obligation.
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`2
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`Case IPR2014-00525
`Patent 8,380,244
`Respectfully submitted,
`
`
`
`/Jonathan D. Link/
`Jonathan D. Link
`LATHAM & WATKINS LLP
`555 Eleventh Street, N.W., Ste. 1000
`Washington, DC 20004-1304
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`
`Julie M. Holloway
`LATHAM & WATKINS LLP
`505 Montgomery Street
`Suite 2000
`San Francisco, CA 94111-6538
`Telephone: (415) 391-0600
`Facsimile: (415) 395-8095
`
`Counsel for Patent Holder
`IPR Licensing, Inc.
`
`
`3
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`CERTIFICATE OF SERVICE
`
`
`Case IPR2014-00525
`Patent 8,380,244
`
`I hereby certify that on this 8th day of August, 2014, true and correct copies
`
`of the foregoing PATENT OWNER’S OPPOSITION TO MOTION TO
`
`CORRECT CLERICAL ERRORS AND RESUBMIT EXHIBITS IN THE
`
`PETITION FOR INTER PARTES REVIEW and supporting exhibits were served
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`by electronic mail, upon the following counsel of record for Petitioners ZTE
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`Corporation and ZTE (USA) Inc.:
`
`Lead Counsel
`Charles M. McMahon
`Brinks Gilson & Lione
`NBC Tower, Suite 3600
`455 North Cityfront Plaza Drive
`Chicago, IL 60611-5599
`Telephone: (312) 321-4200
`Facsimile:
`(312) 321-4299
`E-mail: cmcmahon@brinksgilson.com
`
`
`Backup Counsel
`Brian A. Jones
`Brinks Gilson & Lione
`NBC Tower, Suite 3600
`455 North Cityfront Plaza Drive
`Chicago, IL 60611-5599
`Telephone: (312) 321-4200
`Facsimile:
`(312) 321-4299
`E-mail: bjones@brinksgilson.com
`
`
`/Jonathan D. Link/
`Jonathan D. Link
`
`
`
`
`
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