UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOOGLE INC.,
`Petitioner
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`v.
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`SUMMIT 6 LLC,
`Patent Owner
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`Case IPR2015-00806
`Patent No. 7,765,482
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`STAY EX PARTE REEXAMINATION 90/012,987
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`US2008 7626265 2
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOOGLE INC.,
`Petitioner
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`v.
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`SUMMIT 6 LLC,
`Patent Owner
`
`
`
`
`Case IPR2015-00806
`Patent No. 7,765,482
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`STAY EX PARTE REEXAMINATION 90/012,987
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`US2008 7626265 2
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`IPR2015-00806
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`I.
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`Introduction
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`The Board should deny Summit 6’s Motion to Stay Ex Parte Reexamination
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`No. 90/012,987 (the “reexam”). Affirming the rejections of the claims at issue in
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`the reexam may substantially simplify the issues in this proceeding. Thus allowing
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`the reexam to proceed may conserve the resources of the Board and the parties.
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`The reexam was filed by a third party more than two years ago and long
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`before Petitioner filed its Petition for inter partes review (“IPR”). During that time
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`the Examiner has issued a final rejection, the Patent Owner has appealed, and the
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`Board has scheduled an oral argument in early November. The Board will hear
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`oral argument in the reexam before Patent Owner even files its Response in the
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`IPR, and, in all likelihood, the Board will issue a final decision in the reexam
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`before Petitioner files its Reply. If the Board confirms the Examiner’s finding that
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`the claims are invalid, the scope of this proceeding will be narrowed substantially.
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`Thus, allowing the reexam to continue may conserve resources of both the Board
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`and the parties by simplifying the issues in this IPR.
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`II. Statement of Undisputed Facts
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`The reexam was filed on September 10, 2013. The Examiner issued a Final
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`Office Action on May 21, 2014 articulating three grounds of rejection: (1) claims
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`38, 40, 44-46, and 49 rejected under 35 U.S.C. §102(e) as anticipated by U.S.
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`Patent No. 6,930,709 (“Creamer”), (2) claims 38, 40, 44-46, and 49 rejected under
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`IPR2015-00806
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`35 U.S.C. §102(e) as anticipated by U.S Patent No. 6,038,295 (“Mattes”), and (3)
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`claim 46 rejected under 35 U.S.C. § 103 as obvious over Mattes in view of
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`Creamer. (Ex. 2040) Patent Owner appealed the Examiner’s decision to the Board
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`on September 22, 2014. (Ex. 2041) The Board scheduled oral argument for
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`November 10, 2015. (Ex. 2043)
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`The petition for inter partes review was filed almost 18 months after the
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`reexam. (Paper 1) In this proceeding the Board instituted review of claims 12, 13,
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`16, 18, 19, 21-25, 35-37, 38, 40, 44-46, and 49 for two grounds of obviousness
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`under 35 U.S.C. § 103: (1) the combination of Creamer in view of U.S. Patent No.
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`6,223,190 (“Aihara”), and (2) the combination of U.S. Patent No. 6,018,774
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`(“Mayle”) in view of U.S. Patent No. 6,035,323 (“Narayen”). (Paper 19) Unless
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`the parties amend the schedule, Patent Owner’s Response and/or Amendment will
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`be due on November 25, 2015, more than two weeks after the oral argument in the
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`reexam. (Paper 20) Oral argument (if requested) in this proceeding is set for May
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`4, 2016, almost six months after the oral argument in the reexam. (Paper 20)
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`III. Summary of Argument
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`The Board generally “will not stay a reexamination proceeding because, in
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`the absence of good cause, the reexamination proceeding ‘will be conducted with
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`special dispatch.’” Chicago Mercantile Exch., Inc. v. 5th Mkt., Inc., CBM2014-
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`00114, Paper 20 at 3 (Jan. 9, 2015) (citing 35 U.S.C. § 305). The Board is not
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`IPR2015-00806
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`required to stay a reexamination simply because a concurrent proceeding involves
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`the “same patent, a number of the same claims, and some overlap in the prior art”
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`because 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a) use permissive, rather than
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`mandatory language, in authorizing the Board to enter any appropriate order to
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`manage multiple proceedings. Id.
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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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`whether the grounds of rejection are based on the same or similar prior art; (3)
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`whether the proceedings could lead to duplication of effort or inconsistent results;
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`and (4) whether the requesters in the proceedings are the same. CBS Interactive v.
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`Helferich Patent Licensing, IPR2013-00033, Paper 15 at 2 (Nov. 6, 2012).
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`Patent Owner improperly considered the facts at issue here and failed to give
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`proper weight to the advanced stage of the reexam. Indeed, Patent Owner simply
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`ignored the fourth factor of the analysis, relegating it to a footnote. As detailed
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`below, when properly considered each of these four factors is either neutral or
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`strongly favors denying Patent Owner’s Motion to Stay.
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`IV. Whether the Claims are the Same
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`The claims currently rejected in the reexam are a small subset of the claims
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`under review in this proceeding. However, due to the late stage of the reexam, this
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`factor militates against a stay. If the Board affirms the Examiner’s finding that
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`IPR2015-00806
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`claims 38, 40, 44-46, and 49 are anticipated, and Patent Owner does not appeal to
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`the Federal Circuit, the Board will not have to determine whether those claims are
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`also obvious in this proceeding. This will narrow this proceeding.
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`Further, given the usual speed of the reexam appeal process, it is likely that
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`the Board will issue a decision in the reexam before it issues a decision here. Of
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`the 51 pending ex parte reexamination appeals before the Board, none has been
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`pending before the Board for more than 14 months.1 Assuming the Board
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`maintains this trend, a final decision on the reexam can be expected later this year
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`or early next year, before the conclusion of briefing in this proceeding and well
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`before a final decision in this proceeding. Accordingly, this factor weights in favor
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`of allowing the reexam to continue.
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`V. Whether the Grounds of Rejection are Based on the Same or
`Similar Prior Art
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`This factor weighs against a stay. The prior art issues raised in the two
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`proceedings are different. The reexam raises anticipation rejections over Creamer
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`and Mattes, and an obviousness rejection of one claim in view of Creamer and
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`Mattes. In contrast, every claim in this proceeding is challenged under
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`obviousness in view of two different combinations: (1) Creamer and Aihara; and
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`1 See August 2015 P.T.A.B. Data (last visited Sept. 26, 2015)
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`http://www.uspto.gov/dashboards/patenttrialandappealboard/main.dashxml
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`(2) Mayle and Narayen. Thus, only one prior art reference is common between the
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`two proceedings. The Board has declined to stay where concurrent proceedings
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`have only one common prior art reference. See Chicago Mercantile, CBM2014-
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`00114, Paper 20 at 5. Further, Creamer is used differently in the two proceedings
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`– in an anticipation rejection in the reexam and in an obviousness rejection here –
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`this further distinguishes the prior art issues in the two proceedings.
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`Patent Owner incorrectly asserts that analyzing the challenged claims in
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`light of Creamer will simplify the issues in the reexam. First, the scope of review
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`in the reexam is different from that of the instant proceeding. See Kaiser
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`Aluminum v. Constellium Rolled Products Ravenswood, LLC, IPR2014-01002,
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`Paper 24 at 3. The instant proceeding includes information that is not involved in
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`the reexam, including the Declaration of Paul Clark (Ex. 1003) and additional
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`obviousness rejections. Second, the reexam addresses invalidity for anticipation
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`rather than obviousness. Patent Owner’s analysis of this factor ignores that a claim
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`that is anticipated by a reference is certainly obvious in view of that reference, but
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`the converse is not necessarily true.
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`For the foregoing reasons this factor weighs against a stay.
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`VI. Whether the Proceedings Could Lead to Duplication of Effort or
`Inconsistent Results
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`There is minimal risk of duplicative effort or inconsistent results should
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`Patent Owner’s Motion to Stay be denied. First, the reexam has been pending for
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`more than two years, while this proceeding was instituted just a few weeks ago.
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`The Board is likely to issue a final decision in the reexam before it issues a
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`decision in this proceeding. Allowing such a decision to issue may narrow the
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`issues to be addressed in this proceeding, thus reducing duplication of effort.
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`Second, as discussed above, the grounds of rejection in the reexam and the grounds
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`of unpatentability in this proceeding are different. Thus, there is little risk of an
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`inconsistent result by allowing the reexam to continue.
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`As the Board noted in its Institution Decision, many of the independent
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`claims of the ’482 Patent recite comparable limitations. (Paper 19 at 14) A
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`finding in the reexam that Creamer anticipates one or more of these elements
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`would inform the Board’s analysis as to whether Creamer, in combination with
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`Aihara, renders obvious comparable limitations. This is an efficient use of the
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`Board’s resources with little risk of duplication or inconsistency since a final
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`decision on the merits in this proceeding is almost a year away.
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`Patent Owner argues that the lack of a statutory deadline for a final decision
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`in ex parte reexamination favors a stay of the reexam. However, this ignores the
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`statutory requirement that reexamination proceedings be conducted with “special
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`dispatch” within the Office. 35 U.S.C. § 305. Indeed, based on past data, a final
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`decision in the reexam is likely to issue before the due date for Petitioner’s Reply
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`to Patent Owner’s Response. See Note 1 supra.
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`IPR2015-00806
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`Patent Owner also suggests that it may amend claims at issue in this
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`proceeding, which may produce inconsistent results in the reexam. The Board
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`should discount such arguments as both speculative and unlikely. In the past the
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`Board has afforded little weight, if any, to speculative statements about possible
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`amendments in light of a patent owner’s previous litigation posture. Motionpoint
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`Corp. v. Transperfect Glob., Inc., CBM2014-00060, Paper 16 at 3-4 (Aug. 19,
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`2014) (“We agree with Petitioner’s assessment that Patent Owner’s litigation
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`posture suggests that Patent Owner is unlikely to amend claims 1–28 in this
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`proceeding.”). Patent Owner has borne the expense of litigating the ’482 Patent,
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`securing a jury verdict, obtaining an award of damages, and defending the award
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`before the Federal Circuit. Patent Owner has gone through more than two years of
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`reexamination of the ’482 Patent without amending the original claims. Patent
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`Owner is unlikely to do so now.
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`VII. Whether the Requesters in the Proceedings are the Same
`This factor weighs against a stay, and Patent Owner did not substantively
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`address this factor. Petitioner is not a requester in the reexam. Petitioner (which
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`originally included HTC, a party to related litigation of the ’482 Patent) was
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`obligated to file its Petition when it did, prior to the statutory deadline imposed by
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`35 U.S.C. § 315(b).
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`VIII. Prejudice to the Petitioner
`Courts routinely weigh the prejudice suffered by a nonmoving party in
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`considering whether to deny a motion to stay a litigation. See, e.g., VirtualAgility
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`Inc. v. Salesforce.com, Inc., 759 F.3d 1307, 1309 (Fed. Cir. 2014); Destination
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`Maternity Corp. v. Target Corp., 12 F. Supp. 3d. 762, 766 (E.D. Pa. 2014). The
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`Board should consider this factor. As discussed above the reexam may resolve
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`issues under consideration in this proceeding, narrowing the issues Petitioner must
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`address in its Reply and at Oral Argument. Thus, if the reexam is stayed Petitioner
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`will be prejudiced by being forced to expend time and resources to continue
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`challenging claims that are already fully briefed and before the Board.
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`IX. Conclusion
`For the foregoing reasons Petitioner requests the Board deny the request to
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`stay the reexam.
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`Respectfully submitted,
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`By:
`John Alemanni
`Registration No. 47,384
`Lead Counsel for Petitioner
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of this PETITIONER’S
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`OPPOSITION TO PATENT OWNER’S MOTION TO STAY EX PARTE
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`REEXAMINATION 90/012,987 has been served via electronic mail on
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`September 30, 2015, upon the following:
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`Peter J. Ayers
`peter@leehayes.com
`John Shumaker
`jshumaker@leehayes.com
`Brian Mangum
`brianm@leehayes.com
`LEE & HAYES, PLLC
`11501 Alterra Parkway, Suite 450
`Austin, TX 78758
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`Date: September 30, 2015
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`By:
`John C. Alemanni (Reg. No. 47,384)
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`Lead Counsel
`John Alemanni
`Registration No. 47,384
`JAlemanni@kilpatricktownsend.com
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`Postal and Hand-Delivery Address:
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
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`Back-Up Counsel
`Michael Morlock
`Registration No. 62,245
`MMorlock@kilpatricktownsend.com
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`Postal and Hand-Delivery Address:
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
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`US2008 7626265 2
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`IPR2015-00806
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`Winston-Salem, NC 27101-2400
`Telephone: (336) 607-7311
`Fax: (336) 607-7500
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`Winston-Salem, NC 27101-2400
`Telephone: (336) 607-7391
`Fax: (336) 607-7500
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`US2008 7626265 2
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