UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`LG ELECTRONICS, INC. and
`LG ELECTRONICS U.S.A., INC.
`Petitioners,
`
`v.
`
`ROSETTA-WIRELESS CORPORATION,
`Patent Owner.
`
`Case IPR2016-01516
`Patent 7,149,511
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE UNDER 37
`C.F.R. § 42.107 TO PETITION FOR INTER PARTES REVIEW
`OF UNITED STATES PATENT NO. 7,149,511
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`
`
`
`EXHIBIT LIST
`
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Petitioners’ Exhibits
`Exhibit
`Description
`Ex. 1001
`U.S. Patent No. 7,149,511 (filed Aug. 31, 2000) (issued on Dec.
`12, 2006) (the “’511 patent”)
`“A New File System for Mobile Computing” by John Saldanha,
`Dissertation, Department of Computer Science and Engineering,
`University of Notre Dame (November, 1996) (“Saldanha”)
`“Mobile Computing Personae” by A. Banerji, D.L. Cohn, and
`D.C. Kulkarni, Proc. 4th Workshop on Workstation Operating
`Systems, Napa, CA, October 1993, pp. 21-29
`Presentation given at IBM Mobile Computing Workshop on
`January 24, 1994 by David Cohn.
`“Realizing Mobile Computing Personae,” by Michael Raymond
`Casey, Dissertation, Department of Computer Science and
`Engineering, University of Notre Dame (April, 1995)
`“A hybrid model for mobile file systems,” by Saldanha, John, and
`David L. Cohn, Mobile Computing Systems and Applications,
`1994 Proceedings, IEEE (1994)
`“A File System for Mobile Computing,” by John Saldanha, A
`Dissertation Proposal, Technical Report 93-17, University of
`Notre Dame, December 1993
`Cohn Expert declaration
`Patent Owner’s Preliminary Response, Paper 7, IPR2016-00616
`Patent Owner’s Preliminary Response, Paper 8, IPR2016-00622
`U.S. Patent No. 5,983,073 (filed Apr. 4, 1997) (issued Nov. 9,
`1999) (“Ditzik”)
`Microsoft Networks, SMB File Sharing Protocol, Document
`Version 6.0p (Jan. 1, 1996) (“Microsoft SMB” or “SMB”)
`WIPO Publication No. WO 91/003024 (filed Aug. 14, 1990)
`(published Mar. 17, 1991) (“Masden”)
`“A File System for Mobile Computing,” by Carl Downing Tait,
`Dissertation, 1993 Columbia University
`’511 Prosecution history
`’511 Reexamination history
`D.I. 109 (November 10, 2015 Opinion and Order) in Case No. 1-
`15- cv-00799
`Mangione-Smith Declaration, Exhibit Rosetta-2001 to Patent
`Owner’s Preliminary Response, Paper 7, IPR2016-00616
`Mangione-Smith Declaration, Exhibit Rosetta-2001 to Patent
`Owner’s Preliminary Response, Paper 8, IPR2016-00622
`U.S. Patent No. 5,737,523 (issued Apr. 7, 1998) (“Callaghan
`Patent”)
`
`Ex. 1007
`
`Ex. 1008
`Ex. 1009
`Ex. 1010
`Ex. 1011
`
`Ex. 1012
`
`Ex. 1013
`
`Ex. 1014
`
`Ex. 1015
`Ex. 1016
`Ex. 1017
`
`Ex. 1018
`
`Ex. 1019
`
`Ex. 1020
`
`ii
`
`

`
`
`
`Ex. 1021
`
`Ex. 1022
`
`Ex. 1023
`Ex. 1024
`Ex. 1025
`
`U.S. Patent No. 6,088,730 (filed Jan. 12, 1998) (issued Jul. 11,
`2000) (“Kato”)
`Disconnected Operation in the Coda File System, by James J.
`Kistler and M. Satyanarayanan, ACM Transactions on Computer
`Systems, Vol. 10, No. 1, February 1992, Pages 3-25 (“Coda”)
`Declaration of Crystal Daugherty
`Declaration of William Baer
`Stanski, Peter, Stephen Giles, and Arkady Zaslavsky. “Document
`archiving, replication and migration container for mobile Web
`users.” Proceedings of the 1998 ACM symposium on Applied
`Computing. ACM, 1998.
`PDF of Wayback archive page https://web.archive.org/web/http://
`www.cse.nd.edu/tech_reports/1993.html
`NFS Illustrated by Brent Callaghan (ISBN 0-201-32570-5)
`(“Callaghan Book”)
`D.I. 112 (November 30, 2015 Motion for Reconsideration of
`Court’s Order Regarding Motion to Sever) in Case No. 1-15-cv-
`00799
`D.I. 117(December 7, 2015 Minute Entry) in Case No. 1-15-cv-
`00799
`D.I. 118 (December 7, 2015 Minute Entry) in Case No. 1-15-cv-
`00799
`Patent Owner’s Exhibits
`Exhibit
`Description
`Declaration of Daniel Zaheer for Pro Hac Vice
`Ex. 2001
`Declaration of Michael Ng for Pro Hac Vice
`Ex. 2002
`Ex. 2003
`Complaint, No. 1:15-cv-00799 (Dkt. No. 1)
`Ex. 2004
`Summons and Proof of Service, No. 1:15-cv-00799 (Dkt. No. 12)
`Ex. 2005
`Motion for Extension of Time, No. 1:15-cv-00799 (Dkt. No. 24)
`Ex. 2006
`Memorandum in Support of Defendants’ Motion to Dismiss, No.
`1:15-cv-00799 (Dkt. No. 89)
`Memorandum in support of Motion to Stay Patent Rule Deadlines,
`No. 1:15-cv-00799 (Dkt. No. 91)
`Memorandum in support of Motion to Sever, No. 1:15-cv-00799
`(Dkt. No. 93)
`Rosetta’s Response to Motion to Sever, No. 1:15-cv-00799 (Dkt.
`No. 100)
`Docket Entry Granting Motion to Stay, No. 1:15-cv-00799 (Dkt.
`No. 99)
`Opinion and Order re Motion to Sever and Motions to Dismiss.
`No. 1:15-cv-00799 (Dkt. No. 109)
`Complaint in LG Action, No. 1:15-cv-10608 (Dkt. No. 1)
`LGUSA’s Answer, Defenses and Counterclaims, No. 1:15-cv-
`10608 (Dkt. No. 18)
`
`Ex. 1026
`
`Ex. 1027
`
`Ex. 1028
`
`Ex. 1029
`
`Ex. 1030
`
`Ex. 2007
`
`Ex. 2008
`
`Ex. 2009
`
`Ex. 2010
`
`Ex. 2011
`
`Ex. 2012
`Ex. 2013
`
`iii
`
`

`
`Motion to Consolidate, No. 1:15-cv-00799 (Dkt. No. 115)
`Excerpt of Transcript from December 8, 2015 hearing in Case No.
`1:15-cv-00799
`Docket Entry and Order Granting Motion to Consolidate, No.
`1:15-cv-00799 (Dkt. Nos. 129 & 132)
`Joint Status Report and Proposed Schedule, No. 1:15-cv-00799
`(Dkt. No. 136)
`Defendants’ Motion to Stay, No. 1:15-cv-00799 (Dkt. No. 148)
`“TECHNOLOGY; Verizon Plans Fast Internet for Cellphones,”
`New York Times, Jan. 9, 2004.
`“Data Over Cellular: A Look at GPRS,” Communication Systems
`Design, April 2000.
`
`
`
`
`
`Ex. 2014
`Ex. 2015
`
`Ex. 2016
`
`Ex. 2017
`
`Ex. 2018
`Ex. 2019
`
`Ex. 2020
`
`
`
`iv
`
`

`
`
`
`
`
`TABLE OF CONTENTS
`INTRODUCTION ..................................................................................................... 1 
`AUTHORIZATION FOR PAYMENT OF FEES ..................................................... 3 
`ARGUMENT ............................................................................................................. 4 
`I. 
`The Petition is Untimely ................................................................................... 4 
`A. 
`Procedural History Underlying Timeliness of Petition .............................. 4 
`B. 
`The Petition Is Barred by Section 315(b) ................................................... 7 
`II.  The Petition Fails to Demonstrate a Reasonable Likelihood of Success on the
`Merits ....................................................................................................................... 14 
`A. 
`State of the Art .......................................................................................... 14 
`B. 
`The ’511 Patent Invention ........................................................................ 15 
`C. 
`Legal Standards ........................................................................................ 18 
`D.  Claim Construction ................................................................................... 20 
`E. 
`The Petition Does Not Present a Reasonable Likelihood of
`Success with Regard to Ground 1 ............................................................ 20 
`1.  Overview of Saldanha .............................................................................. 20 
`2.  Saldanha does not disclose, and teaches away from, the
`claimed “radio frequency (RF) receiver for receiving
`downstream data
`transmitted over a
`first wireless
`communications channel” (Claims 1 and 58) ..................................... 23 
`The Petition Fails to Demonstrate a Reasonable Likelihood of
`Success on the Merits With Regard to Ground 2 ..................................... 29 
`1.  Overview of Kato ..................................................................................... 29 
`2.  Kato discloses a wholly different device than the WIPS ......................... 30 
`3.  Kato does not disclose “a
`radio
`frequency
`(RF)
`(transceiver/receiver)
`for receiving downstream data
`transmitted over a first wireless communications channel”
`(Claims 1 and 58) ................................................................................ 32 
`
`F. 
`
`v
`
`

`
`
`
`4.  Kato does not disclose “a first interface for allowing an
`application on an external display device to pick and open
`said at least one electronic file while said at least one
`electronic file remains resident on said personal network
`server” (Claims 1 and 58) ................................................................... 33 
`5.  Kato does not disclose that the IPA is “hand-portable”
`(Claims 1 and 58) ................................................................................ 34 
`CONCLUSION ........................................................................................................ 35 
`
`
`
`vi
`
`

`
`
`
`TABLE OF AUTHORITIES
`
`Cases 
`ActiveVideo Networks, Inc. v. Verizon Commc'ns, Inc.
`
`694 F.3d 1312 (Fed. Cir. 2012) .................................................................. 27, 33
`Apple, Inc. v. Rensselaer Polytechnic Inst. & Dynamic Advances, LLC
` Case IPR2014-00319, 2014 WL 2735066 (PTAB June 12, 2014)
`
`(Paper 12) .................................................................................................. 2, 9, 11
`Apple, Inc. v. Rosetta-Wireless Corp.
` Case IPR2016-00616, slip op. (PTAB Aug. 22, 2016) (Paper 11) ................... 20
`Barnhart v. Sigmon Coal Co.
`
`534 U.S. 438 (2002) ............................................................................................. 7
`CQG, Inc. & CQGT, LLC, Petitioner
` Case CBM2015-00057, 2015 WL 4467376 (PTAB July 10, 2015)
`
` (Paper 12) ..................................................................................................... 2, 11
`Cuozzo Speed Techs., LLC v. Lee
`
`136 S. Ct. 2131 (2016) ....................................................................................... 19
`eBay, Inc. v. Advanced Auctions LLC
` Case IPR2014-00806, 2014 WL 4854768 (PTAB Sept. 25, 2014)
`
`(Paper 14) .......................................................................................... 2, 11, 12, 13
`Ecolochem, Inc. v. S. Cal. Edison Co.
`
`227 F.3d 1361 (Fed. Cir. 2000) ......................................................................... 25
`Elmore v. Henderson
`
`227 F.3d 1009 (7th Cir. 2000) ........................................................................... 11
`Ericsson, Inc. v. D-Link Sys., Inc.
`
`773 F.3d 1201 (Fed. Cir. 2014) ......................................................................... 29
`Fantasy Sports Properties, Inc.. v. Sportsline.com, Inc.
`
`287 F.3d 1108 (Fed. Cir. 2002) ......................................................................... 29
`Finjan, Inc. v. Secure Computing Corp.
`
`626 F.3d 1197 (Fed. Cir. 2010) ......................................................................... 29
`Graves v. Principi
`
`294 F.3d 1350 (Fed. Cir. 2001) ......................................................................... 10
`
`vii
`
`

`
`
`
`Histologics, LLC v. CDX Diagnostics
` Case IPR2014-00779, 2014 WL 4629057 (PTAB Sept. 12, 2014)
`
`(Paper 6) ............................................................................................ 2, 10, 11, 12
`In re Abbott Diabetes Care, Inc.
`696 F.3d 1142 (Fed. Cir. 2012) ......................................................................... 20
`In re Ochiai
`71 F.3d 1565 (Fed. Cir. 1995) ........................................................................... 19
`In re Suitco Surface, Inc.
`603 F.3d 1255 (Fed. Cir. 2010) ......................................................................... 20
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.
`688 F.3d 1342 (Fed. Cir. 2012) ......................................................................... 19
`KSR Int'l Co. v. Teleflex Inc.
`
`550 U.S. 398 (2007) .............................................................................. 19, 24, 34
`LG Elecs., Inc. v. Mondis Tech. Ltd.
` Case IPR2015-00937, 2015 WL 9699396 (PTAB Sept. 17, 2015)
`
`(Paper 8) ...........................................................................................................2, 8
`Nike, Inc. v. Adidas AG
`812 F.3d 1326 (Fed. Cir. 2016) ......................................................................... 19
`Oracle Corp. v. Click-to-Call Techs. LP
` Case IPR2013-00312, 2013 WL 11311788 (PTAB Oct. 30, 2013)
`
`(Paper 26) ............................................................................................................. 9
`Samsung Elecs. Co. v. Fractus, S.A.
`
`IPR2014-00008, slip op. (P.T.A.B. Jan. 2, 2014) (Paper 19) ............................ 13
`Tec Air, Inc. v. Denso Mfg. Michigan Inc.
`
`192 F.3d 1353 (Fed. Cir. 1999) ......................................................................... 24
`TriVascular, Inc. v. Samuels
`812 F.3d 1056 (Fed. Cir. 2016) ......................................................................... 19
`
`Statutes 
`35 U.S.C. § 103 ........................................................................................................ 18
`35 U.S.C. § 313 .......................................................................................................... 1
`35 U.S.C. § 314 ............................................................................................... 2, 3, 18
`35 U.S.C. § 315(b) ........................................................................................... passim
`
`Other Authorities 
`
`viii
`
`

`
`
`
`157 CONG. REC. S5429 (daily ed. Sept. 8, 2011) ................................................. 13
`2011 U.S.C.C.A.N. 67 ............................................................................................. 13
`H.R. Rep. No. 112-98 (2011) ................................................................................... 13
`
`Rules 
`37 C.F.R. § 42.100(b) .............................................................................................. 19
`37 C.F.R. § 42.107 ..................................................................................................... 1
`F.R.C.P. 41(a) ........................................................................................................8, 9
`F.R.C.P. 42(a) ............................................................................................................ 5
`
`
`
`ix
`
`

`
`
`
`INTRODUCTION
`
`Patent Owner Rosetta-Wireless Corporation (“Rosetta”) hereby respectfully
`
`submits this Preliminary Response to LG Electronics, Inc.’s, and LG Electronics
`
`U.S.A., Inc.’s (collectively “LG” or “Petitioners”) Petition seeking inter partes
`
`review in this matter. This filing is timely under 35 U.S.C. § 313 and 37 C.F.R.
`
`§ 42.107, as it is being filed within three months of the August 15, 2016 mailing
`
`date of the Notice granting the Petition a filing date. Rosetta respectfully submits
`
`that the Petition should be denied because: (1) it is untimely; and (2) it fails to
`
`present any issue on which Petitioners are reasonably likely to succeed.
`
`LG barely addresses a fatal defect in its petition: the petition was filed more
`
`than one year after LG was served with Rosetta’s complaint alleging infringement
`
`of the patent-in-suit, U.S. Patent 7,149,511 (“the ’511 Patent”). It is therefore
`
`untimely under 35 U.S.C. § 315(b). LG tries to defend its belated petition by
`
`pointing to the service of a second complaint that Rosetta filed against LG. But
`
`that second complaint was virtually identical to the first one, and the need to file it
`
`only arose because the Northern District of Illinois granted an unopposed motion
`
`for severance and ordered that the complaint against LG (and others) be dismissed
`
`without prejudice and refiled under a different case number. Importantly, after the
`
`complaint was refiled it was consolidated with the other severed cases—under the
`
`original case number in which LG had been sued. The Patent Trial and Appeals
`
`Board (“the Board”) has repeatedly found that a dismissal without prejudice under
`
`1
`
`

`
`
`
`circumstances like these does not reset the clock for calculation of the petition
`deadline under section 315(b).1
`Notably, LG’s codefendant Samsung was in precisely the same position—its
`
`case was severed, refiled and then consolidated. But Samsung filed its own
`
`petition for inter partes review within one year of service of Rosetta’s first
`
`complaint. See IPR2016-00622. Plainly, LG made a tactical decision to wait to
`
`see Rosetta’s response to Samsung’s petition before filing its own. But section
`
`315(b) does not allow for that sort of strategy where (as here) the second petition
`
`comes after expiration of the one-year deadline period. In fact, this sort of tactical
`
`manipulation of the inter partes review procedures is exactly the sort of ill that
`
`section 315(b)’s one-year bar was intended to prevent.
`
`Nor does the Petition present any issue on which Petitioners hold a
`
`reasonable likelihood of success. See 31 U.S.C. § 314(a). LG focuses primarily on
`
`the Saldanha dissertation to support its arguments that one or more of the ’511
`
`patent claims are obvious. But LG misreads that reference. Contrary to LG’s
`
`characterizations, Saldanha does not teach or suggest a wireless device having the
`
`claimed “radio frequency (RF) receiver for receiving downstream data transmitted
`
`
`1 See LG Elecs., Inc. v. Mondis Tech. Ltd., Case IPR2015-00937, 2015 WL
`9699396, at *3 (PTAB Sept. 17, 2015) (Paper 8); CQG, Inc. & CQGT, LLC,
`Petitioner, Case CBM2015-00057, 2015 WL 4467376, at *5 (PTAB July 10, 2015)
`(Paper 13) (decided under analogous rule for CBMs, see 35 U.S.C. § 325);
`Histologics, LLC v. CDX Diagnostics, Case IPR2014-00779, 2014 WL 4629057
`(PTAB Sept. 12, 2014) (Paper 6); eBay, Inc. v. Advanced Auctions LLC, Case
`IPR2014-00806, 2014 WL 4854768 (PTAB Sept. 25, 2014) (Paper 14); Apple, Inc.
`v. Rensselaer Polytechnic Inst. & Dynamic Advances, LLC, Case IPR2014-00319,
`2014 WL 2735066, at *3-*5 (PTAB June 12, 2014) (Paper 12).
`
`2
`
`

`
`
`
`over a first wireless communications channel.” At best Saldanha relates to a
`
`portable wired and potentially infrared-capable data storage device with sync
`
`capabilities. Although the device disclosed in the ’511 Patent (a wireless
`
`intelligent personal network server, or “WIPS”) contains some of those
`
`capabilities, its fundamental quality as disclosed in the claims and specification is a
`
`“wireless intelligent personal server” (emphasis added). Saldanha is directed
`
`towards a different problem than is the ’511 patent and proposes a distinct solution.
`
`It does not render Rosetta’s invention obvious.
`
`LG’s secondary grounds based upon the Kato patent fails for similar
`
`reasons. Kato discloses the use of infrared communication as a means of quickly
`
`transferring pre-processed calendar and related data from a stationary computer to
`
`a PDA. Kato plainly does not disclose a wireless, handheld mobile device like the
`
`WIPS for downloading data and serving it to various types of display devices.
`
`Indeed, Kato teaches away from the approach disclosed in the ’511 patent.
`
`Accordingly, Rosetta respectfully submits that inter partes review cannot be
`
`instituted under 35 U.S.C. § 315(b), and even if it could the Board should decline
`
`institution under 35 U.S.C. § 314(a).
`
`AUTHORIZATION FOR PAYMENT OF FEES
`
`The Board is authorized to charge any fees incurred by the Patent Owner in
`
`this Case IPR2016-01516 to Deposit Account No. 504592.
`
`3
`
`

`
`
`
`ARGUMENT
`
`I. THE PETITION IS UNTIMELY
`A. Procedural History Underlying Timeliness of Petition
`On January 27, 2015, Rosetta filed a complaint in the United States District
`
`Court for the Northern District of Illinois alleging infringement of the ’511 patent
`
`by LG Electronics Co. (“LGE”), LG Electronics USA Inc. (“LG USA”) and
`
`several other defendants including Apple Inc. (“Apple”) and multiple Samsung
`
`entities (“Samsung”). Ex. 2003. The case was designated as Case No. 15-799
`
`(“the 799 action”). Id. Rosetta served LG USA with the complaint on February
`
`13, 2015. Ex. 2004. Thereafter, LGE agreed that it would accept service via its
`
`U.S. subsidiary effective March 2, 2015. Ex. 2005 ¶2. Both LG entities sought
`
`and obtained an agreement that the deadline for their responses to the complaint
`
`would be delayed until June 4, 2015. Id. ¶ 3.
`
`On June 18, 2015, Petitioners (along with several other defendants,
`
`including Apple and Samsung) responded to Rosetta’s complaint by filing a
`
`motion to dismiss based on Federal Rule of Civil Procedure 12(b)(6). Ex. 2006.
`
`The defendants also moved to stay all deadlines until the Rule 12 motion to
`
`dismiss was decided (Ex. 2007), and moved to sever the case into separate cases
`
`for each defendant group (Ex. 2008). In response to the motion to sever, Rosetta
`
`stated that it did not oppose severance but requested that the court consolidate any
`
`severed actions for pretrial matters. Ex. 2009.
`
`The district court granted the motion to stay (Ex. 2010) and then, on
`
`November 10, 2015 (about five months after they were filed) issued an order with
`
`4
`
`

`
`
`
`regard to the two other motions. Ex. 2011. The district court denied the Rule 12
`
`motion to dismiss (id. at 5-10) and granted the motion to sever pursuant to Federal
`
`Rule of Civil Procedure 21 (id. at 4-5). In particular, the court ordered that the 799
`
`action would continue against one of the defendants (Apple), but that the other
`
`defendants (including LG and Samsung) would be dismissed without prejudice
`
`pursuant to Rule 21 so that Rosetta could file separate cases against them under
`
`new case numbers.
`
` Id.
`
` In response to Rosetta’s suggestion regarding
`
`consolidation, the court deferred a formal ruling while stating that post-severance
`
`“consolidation . . . may serve the interest of judicial economy and allow the cases
`
`to be efficiently resolved.” Id. at 5 (citing Fed. R. Civ. Proc. 42(a)).
`
`Following the severance order, Rosetta filed its separate complaint against
`
`LG on November 24, 2015. Ex. 2012. The case was captioned as case number
`
`1:15-cv-10608 (“the 10608 action”). As the Court had denied the motion to
`
`dismiss, the second complaint was nearly identical to the Rosetta’s first complaint
`
`in the 799 action. Compare Ex. 2003 with Ex. 2012. The primary change was the
`
`removal of allegations concerning other defendants due to the Court’s severance
`
`order. In response to the complaint, LG did not file another motion to dismiss;
`
`instead it filed an answer. Ex. 2013.
`
`As suggested by the district court’s severance order, Rosetta moved to
`
`consolidate the 10608 action with the original 799 action for pretrial proceedings.
`
`Ex. 2014. Due to the district’s technical internal administrative procedures, the
`
`cases were initially reassigned to judges other than Judge Lefkow (the judge
`
`5
`
`

`
`
`
`presiding over the 799 action) before being reconsolidated before her. Regarding
`
`these procedural mechanics, Judge Lefkow commented that:
`
`This is all . . . complicated bureaucratic stuff. But what I think is
`going to happen is that the cases will be reassigned to different
`judges, and then I can grant the motion to consolidate after I
`consult with those judges that it is okay with them, which of
`course it will be.
`Ex. 2015 at 2:23-3:1. Thereafter, the district court granted the consolidation
`
`motion, consolidating all the pending ’511 patent matters (including the cases
`
`against LG, Apple and Samsung) for pretrial purposes pursuant to Federal Rule of
`
`Civil Procedure 42. Ex. 2016.
`
`After consolidation, the district court has managed all of the ’511 patent
`
`cases in unison. Filings by LG continue to be made in the 799 action and the
`
`district court continues to enter orders impacting LG in that case. For example,
`
`LG, Rosetta and other parties filed a joint discovery plan and schedule in the 799
`
`action. Ex. 2017. And, LG (along with all of its co-defendants) moved to stay the
`
`district court litigation pending this IPR and the district court granted that motion.
`
`Ex. 2018.
`
`On February 12, 2016, two of the defendants in the consolidated cases—
`
`Apple and Samsung—jointly filed two petitions for inter partes review with
`
`respect to the ’511 Patent. See IPR2016-00616 (Paper 1); IPR2016-00622 (Paper
`
`1). Both of those petitions were filed within one year of Rosetta’s service of its
`
`first complaint in the 799 action on Apple and Samsung. Notably, as with LG,
`
`Rosetta’s first complaint against Samsung had been dismissed without prejudice
`
`6
`
`

`
`
`
`pursuant to the district court’s severance order. And—as with LG—Rosetta refiled
`
`its complaint against Samsung in late 2015. But, unlike LG, Samsung did not wait
`
`longer than one year after service of the first complaint to file its IPR petitions.
`
`LG filed its petition for inter partes review on July 29, 2016, more than five
`
`months after Samsung filed its petition and more than one year after LG had been
`
`served with Rosetta’s first ’511 Patent complaint.
`B. The Petition Is Barred by Section 315(b)
`Section 315(b) of Title 35 of the United States Code provides in relevant
`
`part that:
`An inter partes review may not be instituted if the petition
`requesting the proceeding is filed more than 1 year after the date
`on which the petitioner . . . is served with a complaint alleging
`infringement of the patent.
`35 U.S.C. § 315(b). The plain text of this provision applies here. LG’s petition
`
`was filed on July 29, 2016, more than one year after LG was served “with a
`
`complaint alleging infringement of the [’511] Patent.” The statute provides only
`
`one exception (for joinder in an IPR petition, see 35 U.S.C. § 315(b)) to this rule,
`
`which indisputably does not apply here. Accordingly, at the outset LG’s attempt to
`
`escape the fatal impact of its strategic decision to delay filing its petition based
`
`upon the district court’s severance order can make no difference because LG is
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`seeking to create an exception not found in the plain text of the statute. See, e.g.,
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`Barnhart v. Sigmon Coal Co., 534 U.S. 438, 450 (2002) (holding that when “the
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`statutory language is unambiguous” the task of statutory construction begins and
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`ends with the text).
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`7
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`The Board, in a precedential decision, has previously rejected a similar
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`attempt by LG to distort the statute’s plain meaning. See LG Elecs., Inc. v. Mondis
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`Tech. Ltd., IPR2015-00937, slip op. at 5, 2015 WL 9699396, at *2 (PTAB Sept.
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`17, 2015) (precedential) (Paper 8). There, the Board denied institution of a petition
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`LG filed within one year of a second-filed complaint, stating that “[w]e decline
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`LG’s invitation to amend § 315(b) by inserting either ‘latest’ or ‘second’ into the
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`statute.” Instead, the particular words chosen by Congress are dispositive. The
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`“statute prohibits institution of an inter partes review if the petition is filed more
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`than one year after the date a petitioner is served with ‘a’ complaint.” Id. That is
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`precisely what has happened here and therefore “the express language of § 315(b)
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`bars [the Board] from instituting an inter partes review . . . .” Id.
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`LG claims that the plain text of the statute should be ignored because the
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`district court elected as a procedural matter to structure its severance order as a
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`“dismissal without prejudice” which (according to LG) “nullifies” the prior
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`complaint and the prior service. See Petition (“Pet.”) at 3. LG’s argument has
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`been repeatedly rejected by the Board in cases with facts similar to this one.
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`Although the Board has held that a voluntary dismissal without prejudice
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`pursuant to F.R.C.P. 41(a) may (depending upon the circumstances surrounding
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`the dismissal) nullify an earlier complaint for purposes of applying section
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`315(b)’s one-year bar, the Board has also held that a dismissal without prejudice in
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`order to consolidate actions under F.R.C.P. 42 does not have that nullifying effect.
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`Apple, Inc. v. Rensselaer Polytechnic Inst. & Dynamic Advances, LLC, Case
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`IPR2014-00319, slip op. at 4-5, 7, 2014 WL 2735066, at *3-*5 (PTAB June 12,
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`8
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`

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`
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`2014) (Paper 12) (denying institution pursuant to section 315(b) even though first
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`complaint had been dismissed without prejudice). Accordingly, when the
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`dismissal is not voluntary under Rule 41(a), the first-filed complaint triggers the
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`one-year deadline, which is not extended by the filing of a second complaint. Id.
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`That rule applies in this case. Here, the first complaint was not dismissed pursuant
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`to Rule 41(a), but instead was dismissed pursuant to Rule 21 followed by a
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`consolidation order under Rule 42. Ex. 2011. As in Apple, the Board here should
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`not “treat a dismissal without prejudice pursuant to a consolidation under Fed. R.
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`Civ. P. 42 in the same way as a dismissal without prejudice, without consolidation,
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`under Fed. R. Civ. P. 41(a).” Apple, slip op. at 7 (Paper 12). The severance in this
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`case was not a “voluntary dismissal.” Unlike in a case involving voluntary
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`dismissal without prejudice, in this case Rosetta, defendants and the district court
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`had already contemplated that the case would be refiled to correct the alleged
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`misjoinder of parties immediately following the severance order. And that is
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`exactly what occurred.
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`LG’s reliance on Oracle Corp. v. Click-to-Call Techs. LP, Case IPR2013-
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`00312, slip op. at 17, 2013 WL 11311788, at *7 (PTAB Oct. 30, 2013) (Paper 26)
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`is therefore misplaced. The decision in Oracle was premised specifically and
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`expressly on a dismissal under Rule 41(a) and does not govern the result in a case
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`like this one in which the dismissal is made pursuant to Rule 21 and Rule 42. See
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`id. Paper 26 at 17, 2013 WL 11311788, at *7 (explaining that “the effect of such
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`dismissals” “under [Rule] 41(a)” is to “leav[e] the parties as though the action had
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`never been brought” (emphasis added)); id. (holding that “a voluntary dismissal
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`9
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`

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`
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`without prejudice under Rule 41(a) leaves the situation as if the action had never
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`been filed”) (emphasis added, citation omitted). See also Graves v. Principi, 294
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`F.3d 1350, 1356 (Fed. Cir. 2001) (holding that a dismissal under Federal Rule of
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`Civil Procedure 41(a) and equivalent voluntary dismissal local rule of the
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`Veteran’s Court left case as if first complaint was never filed). By contrast, the
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`dismissal in this case was merely—as the district court put it—a “bureaucratic”
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`step towards consolidation of the cases for pretrial purposes, which does not nullify
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`the filing or service of the first complaint. See Apple, Paper 12 at 5, 7; Histologics,
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`LLC v. CDX Diagnostics, Case IPR2014-00779, slip op. at 5-6, 2014 WL
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`4629057, at *3 (PTAB Sept. 12, 2014) (Paper 6) (finding that dismissal as step
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`towards consolidation did not nullify first complaint and thus petition was barred
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`under section 315(b)).
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`Notably, in structuring its severance order the district court could just as
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`easily have ordered that the original 799 action continue against LG, while
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`severing Apple and Samsung into separate actions. LG is therefore arguing that it
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`should be given seven more months than Apple to file its petition based on
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`procedural happenstance. That plainly is not how section 315(b) should be
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`applied. In any event, the 799 action itself was not dismissed, and it continues to
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`be the lead case in which LG is participating via the consolidation order, as
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`everyone contemplated when the Court issued its severance order dismissing LG
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`from the 799 action. In other words, the substantive effect of the Court’s order was
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`not to nullify the original complaint but instead to clear the path so that the cases
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`could be formally divided under separate case numbers but still litigated as a single
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`10
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`
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`consolidated case under the 799 case number. Under governing Seventh Circuit
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`law, the district court could not have structured the severance to have prejudiced
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`Rosetta, see Elmore v. Henderson, 227 F.3d 1009, 1012 (7th Cir. 2000), and
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`therefore the court’s order cannot be deemed to have nullified the first complaint.
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`Contrary to LG’s assertion that all cases dismissed without prejudice reset
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`the section 315(b) IPR clock, “[t]reating a case dismissed without prejudice as if it
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`never existed . . . depends on the circumstances surrounding the dismissal.” CQG,
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`Inc., Case CBM2015-00057, slip op. at 7-8, 2015 WL 4467376, at *4 (PTAB July
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`10, 2015) (Paper 13) . In particular, in deciding whether a dismissal nullifies prior
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`service, the Board has held that the deadline for filing an IPR is not extended when
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`the