UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`GOOGLE INC.
`Petitioner
`
`v.
`
`SUMMIT 6 LLC
`Patent Owner
`____________________
`
`CASE: IPR2015-00806
`Patent No. 7,765,482
`
`Title: Web-Based Media Submission Tool
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`MOTION TO STAY EX PARTE REEXAMINATION
`90/012,987 UNDER 35 U.S.C. § 315(d)
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`____________________________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`GOOGLE INC.
`Petitioner
`
`v.
`
`SUMMIT 6 LLC
`Patent Owner
`____________________
`
`CASE: IPR2015-00806
`Patent No. 7,765,482
`
`Title: Web-Based Media Submission Tool
`
`
`MOTION TO STAY EX PARTE REEXAMINATION
`90/012,987 UNDER 35 U.S.C. § 315(d)
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
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`I.
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`Statement of Relief Requested
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`Patent Owner Summit 6 LLC (“Summit 6”) requests that the Board stay ex
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`parte Reexamination Control No. 90/012,987 of U.S. Patent No. 7,765,482 (“the
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`’482 Patent”) (“the ’482 Reexamination”) pending resolution of this inter partes
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`review of the ’482 Patent. The Board authorized this motion by email
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`correspondence on September 22, 2015.
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`All claims at issue in the ’482 Reexamination are under review in this
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`proceeding, and similar prior art references are being relied upon in the disposition
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`of both proceedings. Therefore, Summit 6 moves to stay the pending ’482
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`Reexamination to avoid duplicative effort and inconsistent findings.
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`II.
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`Procedural History
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`On February 23, 2011, Summit 6 filed a Complaint against Samsung, RIM,
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`Facebook, and others for infringing the ’482 Patent. Before trial, RIM and
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`Facebook executed a license agreement with Patent Owner covering U.S. Pat. No.
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`6,895,557 and the ʼ482 Patent. (Ex. 2001; Ex. 2002.) Samsung went to trial for
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`infringing the ’482 patent and lost.
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`After a week-long trial, the jury found claims 40, 44–46, and 49 of the ’482
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`Patent valid over Mattes, among other prior art, and further found that Samsung
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`infringed those claims. (Ex. 2003.) The jury awarded Summit 6 $15M as
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`1
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
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`compensation for Samsung’s infringement. (Id.) The Federal Circuit recently
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`affirmed the jury’s validity, infringement, and damage findings. See Summit 6,
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`LLC v. Samsung Electronics Co., Ltd., Nos. 2013-1648, 1651, 2015 WL 5515331
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`(Fed. Cir. Sept. 21, 2015).
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`After losing in the district court, Samsung collaterally attacked the ’482
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`Patent. On September 10, 2013, Samsung filed a request for ex parte
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`reexamination of claims 38, 40, 44–46 and 49 of the ’482 Patent. (Ex. 2036.) The
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`Office granted Samsung’s request1 (Ex. 2039, Decision Ordering Reexamination)
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`and rejected claims 38, 40, 44–46 and 49 of the ’482 patent in view of Creamer
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`and Mattes (Ex. 2040, Final Office Action.) Summit 6 has filed its Appeal Brief
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`(Ex. 2041) challenging the Examiner’s claim construction and each ground of
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`rejection, including Creamer, and the Examiner has filed its Answer to Summit 6’s
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`Appeal Brief, (Ex. 2042). A hearing before the Board addressing the ’482
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`Reexamination is scheduled for November 10, 2015. (Ex. 2043, Notice of
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`Hearing.)
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`Since the beginning of this year, Summit 6 has been defending the ’482
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`Patent in five different inter partes review proceedings brought by five different
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`1 Petitioner filed the Creamer reference as Exhibit No. 1004. Mattes is
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`concurrently filed herewith as Exhibit 2037.
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`2
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
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`parties. First, on February 4, 2015, Twitter, Inc. and Apple, Inc., filed four
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`Petitions for inter partes review of the’482 Patent. See IPR2015-00685, IPR2015-
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`00686, IPR2015-00687, IPR2015-00688. On February 25, 2015, Petitioners
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`Google Inc., HTC Corp, and HTC America, Inc. filed an additional Petition for
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`inter partes review of the ’482 Patent. See IPR2015-00806, Paper 1.2 The Board
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`instituted a trial in IPR2015-00806 on September 9, 2015, reviewing claims 12, 13,
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`16, 18, 19, 21–25, 35–38, 40–42, 44–46, and 49 of the ’482 Patent. (Paper 19.)
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`III. The ’482 Reexamination Must Be Stayed
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`Where the claims and prior art overlap between a reexamination proceeding
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`and an inter partes review, the Board has routinely stayed the reexamination
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`proceeding to avoid duplicative effort and inconsistent findings. “[I]f another
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`2 Summit 6 has since entered settlement agreements with Twitter, Inc., Apple, Inc.,
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`HTC Corp., HTC America, Inc. LG Electronics USA, Inc., LG Electronics
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`MobileComm USA, Inc., LG Electronics, Inc., and Motorola Mobility LLC,
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`terminating IPR2015-00685–88 and the underlying civil case. See IPR2015-
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`00685, Paper 17; IPR2015-00686, Paper 17; IPR2015-00687, Paper 17; IPR2015-
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`00688, Paper 17; IPR2015-00806, Paper 11 and Summit 6, LLC v. HTC Corp., No.
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`7:14-cv-00014-O (N.D. Tex. June 17, 2015) (Dkt. 289), attached hereto as Ex.
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`2038. Google, Inc. remains as Petitioner in IPR2015-00806.
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`3
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
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`proceeding or matter involving the patent is before the Office, the Director may
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`determine the manner in which the post grant review or other proceeding or matter
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`may proceed, including providing for the stay, transfer, consolidation, or
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`termination of any such matter or proceeding.” 35 U.S.C. § 325(d); see also 37
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`C.F.R. §§ 42.222(a), 42.3(a). See, e.g., Samsung Elecs. Co. Ltd. v. Fractus, S.A.,
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`IPR2014-00008, Paper 14 (Nov. 12, 2013) (staying pending reexaminations for
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`judicial economy).
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`The Board must issue its final written decision within a statutorily prescribed
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`period. 35 U.S.C. § 316(a)(11) (final determination must be made within one-year
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`from institution); see also 37 C.F.R. § 42.100(c). But because there is no time
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`limit for the Board to decide an appeal in an ex parte reexamination proceeding,
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`any final written decision with respect to the patentability of the challenged claims
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`will likely simplify the issues in the reexamination, regardless of the stage of the
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`proceedings. See Samsung, IPR2014-00008, Paper 14 at 4 (granting motion to stay
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`inter partes reexamination appeals set for hearing before the Board); Kyocera
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`Corp. v. Softview LLC, IPR2013-00004, Paper 11 at 2 (Dec. 21, 2012); The Scotts
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`Co. LLC v. Encap, LLC, IPR2013-00110, Paper 10 at 3 (May 13, 2013).
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`When determining whether to stay a pending reexamination, the Board
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`commonly weighs the following factors: (1) whether the claims are the same; (2)
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
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`whether the grounds of rejection are based on the same or similar prior art; and (3)
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`whether the proceedings could lead to duplication of effort or inconsistent results.3
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`See, e.g., Kyocera Corp., IPR2013-00004, Paper 11; CBS Interactive v. Helferich
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`Patent Licensing, IPR2013-00033, Paper 15 at 2 (Nov. 6, 2012). The totality of
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`these factors weighs heavily in favor of granting a stay of the pending ’482
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`Reexamination.
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`First, every claim reviewed in the ’482 Reexamination is also being
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`reviewed in the present inter partes review. The Board has consistently and
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`routinely granted motions to stay where the same claims are at issue in the
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`reexamination and the IPR. See, e.g., Samsung, IPR2014-00008, Paper 14 at 3, 4
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`(granting stay when same claims are being challenged); Gnosis S.P.A., et al. v.
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`Merck & CIE, IPR2013-00117, Paper 10 at 2 (April 3, 2013) (granting stay based
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`on an overlap between the claims and because two references were common to
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`3 The Board has also considered whether the requesters in the proceedings are the
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`same in conjunction with the remaining factors. See CBS Interactive, IPR2013-
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`00033, Paper 15 at 2. In this instance, Summit 6 is defending both the ’482
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`Reexamination and the current IPR in both forums. The requester in the ’482
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`Reexamination, Samsung, is no longer involved in the appeal, and its interests in
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`invalidating the ’482 Patent rest in the hands of the Examiner.
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`5
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
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`both proceedings). Here, every claim in the ’482 Reexamination is also being
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`challenged in this IPR. The duplication of all challenged claims 38, 40, 41, 44–46,
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`and 49 strongly supports granting the motion to stay the reexamination.
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`Second, the Board has routinely stayed pending reexaminations involving, as
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`here, overlapping prior art references between the proceedings. See, e.g., Kyocera,
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`IPR2013-00004, Paper 11 at 2; CBS Interactive, IPR2013-00033, Paper 15 at 2;
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`Samsung, IPR2014-00008, Paper 14 at 3; Gnosis, IPR2013-00117, Paper 10 at 2.
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`Complete overlap of prior art references is not a prerequisite to granting a motion
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`to stay. See Goertek, Inc. v. Knowles Elecs.,LLC, IPR2013-00614, Paper 11 at 3
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`(May 13, 2013) (“Further, even though some of the prior art at issue in the inter
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`partes review petition is not at issue in the ’616 Patent Reexamination, there are
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`issues common to both proceedings such that conducting them concurrently could
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`result in the inefficient use of Office resources and inconsistent results.”); compare
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`Gnosis, IPR2013-00117, Paper 10 at 2, with id., Paper 3 (granting stay where two
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`out of ten prior art references relied upon in the IPR were common to the
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`reexamination, but contained different prior art combinations). In the present inter
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`partes review, the Board instituted review of the ’482 Patent based in part on
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`Creamer. And the Examiner also relies upon Creamer in the ’482 Reexamination
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`as an independent ground for rejection. Analyzing the patentability of the
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`6
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
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`challenged claims in light of Creamer in the pending inter partes review will
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`simplify the issues in the ’482 Reexamination. The overlap in prior art references
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`strongly supports granting the motion to stay the reexamination proceeding.
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`Third, in the interest of judicial economy, the Board has stayed pending
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`proceedings to prevent duplicative effort within the Office that could result in
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`inconsistent findings between agency decisions. See Goertek, IPR2013-00614,
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`Paper 11 at 3 (where claims can be amended, allowing both proceedings to
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`continue results in inefficient use of Office resources and could lead to inconsistent
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`results); Lumondi Inc. v. Lennon Image Tech., LLC, IPR2013-00432, Paper 7 at 2,
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`3 (Aug. 6, 2013) (same reasoning as Goertek); The Scotts Co. LLC, IPR2013-
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`00110, Paper 10 at 3 (same reasoning as Goertek). In Samsung, the Board stayed
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`the reexamination appeals because “continuation of the inter partes reexaminations
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`would duplicate efforts with the Office, and more particularly, within the Board.”
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`IPR2014-00008, Paper 14 at 3. Avoiding duplicative effort extends to cases like
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`the instant one that are not premised on identical, overlapping prior art. See
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`Lumondi, IPR2013-00432, Paper 7 at 3 (“Further, while we recognize that the
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`challenge in the instant proceeding is based on different prior art than that
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`presented in the reexamination and was filed by a different party, these facts do not
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
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`weigh in favor of concurrent Office proceedings given the fact that claims 1–7, 14–
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`17, and 19 of the ’843 patent are being challenged in both proceedings.”).
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`Conducting the present inter partes review concurrent with the ’482
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`Reexamination appeal would duplicate efforts in the Office, and the Board in
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`particular. Consequently, the circumstances weigh heavily in favor of granting the
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`motion to stay the reexamination. Maintaining multiple proceedings based on the
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`same claims could also lead to inconsistent decisions. For example, should
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`Summit 6 amend all claims at issue in the inter partes review proceeding, such
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`change in scope of the challenged claims would substantially affect or render
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`superfluous any decision on appeal in the ’482 Reexamination. Further, claim
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`construction issues central to these proceedings may be decided differently in each
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`proceeding. Therefore, the Board should stay the pending ’482 Reexamination as
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`a matter of judicial economy because allowing separate panels to evaluate the same
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`claims creates duplicative effort that could result in inconsistencies between Board
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`proceedings.
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`IV. Conclusion
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`For the reasons set forth above, Summit 6 requests that the Board stay the
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`pending ’482 Reexamination until the Board makes its final determination.
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`
` /Peter J. Ayers/
`Peter J. Ayers, Reg. No. 38,374
`Email: peter@leehayes.com
`John Shumaker, No. 52,223
`Email: jshumaker@leehayes.com
`Brian Mangum, Reg. No. 64,224
`Email: brianm@leehayes.com
`LEE & HAYES, PLLC
`11501 Alterra Parkway, Suite 450
`Austin, TX 78758
`Phone: (512) 605-0252
`Facsimile: (512) 605-0252
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`Attorneys for Patent Owner
`Summit 6 LLC
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
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`Dated: September 25, 2015
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`IPR2015-00806
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`CERTIFICATE OF SERVICE
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`
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`I hereby certify that on this 25th day of September, 2015, the foregoing
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`MOTION TO STAY EX PARTE REEXAMINATION 90/012,987 UNDER 35
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`U.S.C. § 315(d) was served on lead and back-up counsel for Google Inc. by
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`sending the same by electronic means to the address provided by Petitioner:
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`John Alemanni, Reg. No. 47,384
`Lead Counsel
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
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`Winston-Salem, NC 27101-2400
`JAlemanni@kilpatricktownsend.com
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`Michael Morlock, Reg. No. 62,245
`Back-up Counsel
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`MMorlock@kilpatricktownsend.com
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`
`
` /Peter J. Ayers/
`Peter J. Ayers, Reg. No. 38,374
`Attorney for Patent Owner
`Summit 6 LLC
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