Paper ____
`
` Date filed: December 9, 2016
`
`Filed on behalf of: LG Electronics, Inc. and
`LG Electronics U.S.A., Inc.
`
`
`
`
`
`By: Brian A. Tollefson, Lead Counsel
`Rothwell, Figg, Ernst & Manbeck, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Email: btollefson@rfem.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LG ELECTRONICS USA, INC. and LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`ROSETTA-WIRELESS CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2016-01516
`Patent 7,149,511 B1
`_______________
`
`
`
`REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`

`
`EXHIBIT LIST
`
`Case IPR2016-01516
`Patent 7,149,511 B1
`
`Ex.
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`1009
`1010
`1011
`
`Reference
`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 Saldahna,
`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”)
`1012 Microsoft Networks, SMB File Sharing Protocol, Document Version
`6.0p (Jan. 1, 1996) (“Microsoft SMB” or “SMB”)
`1013 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 (Opinion and Order) filed in Rosetta-Wireless Corp. v. Apple
`Inc. et al., Case No. 1:15-cv-00799 (N.D. Ill. Nov. 10, 2015)
`1018 Mangione-Smith Declaration, Exhibit Rosetta-2001 to Patent Owner’s
`Preliminary Response, Paper 7, IPR2016-00616
`
`1014
`
`1015
`1016
`1017
`
`
`
`i
`
`

`
`Case IPR2016-01516
`Patent 7,149,511 B1
`
`1020
`1021
`
`1022
`
`1023
`1024
`1025
`
`Reference
`Ex.
`1019 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”)
`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 (Motion for Reconsideration of Court’s Order Regarding
`Motion to Sever) filed in Rosetta-Wireless Corp. v. Apple Inc. et al.,
`Case No. 1:15-cv-00799 (N.D. Ill. Nov. 30, 2015)
`D.I. 117 (Minute Entry) filed in Rosetta-Wireless Corp. v. Apple Inc.
`et al., Case No. 1:15-cv-00799 (N.D. Ill. Dec. 7, 2015)
`D.I. 118 (Minute Entry) filed in Rosetta-Wireless Corp. v. Apple Inc.
`et al., Case No. 1:15-cv-00799 (N.D. Ill. Dec. 7, 2015)
`D.I. 134 (Transcript of Motion Hearing) filed in Rosetta-Wireless
`Corp. v. Apple, Inc. et al., Case No. 1:15-cv-00799 (N.D. Ill. Jan. 12,
`2016)
`D.I. 29 (Order of the Executive Committee) filed in Rosetta-Wireless
`Corp. v. LG Electronics Co. et al., Case No. 1:15-cv-10608 (N.D. Ill.
`Jan. 25, 2016)
`D.I. 31 (Order) filed in Rosetta-Wireless Corp. v. LG Electronics Co.
`et al., Case No. 1:15-cv-10608 (N.D. Ill. Jan. 27, 2016)
`D.I. 32 (Order of the Executive Committee) filed in Rosetta-Wireless
`Corp. v. LG Electronics Co. et al., Case No. 1:15-cv-10608 (N.D. Ill.
`Feb. 1, 2016)
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`
`
`ii
`
`

`
`Case IPR2016-01516
`Patent 7,149,511 B1
`
`Reference
`D.I. 42 (Minute Entry) filed in Rosetta-Wireless Corp. v. LG
`Electronics Co. et al., Case No. 1:15-cv-10608 (N.D. Ill. Sept. 7,
`2016)
`U.S. District Court for the Northern District of Illinois Internal
`Operating Procedure 13 – Reassignments and Transfers
`
`Ex.
`1035
`
`1036
`
`
`
`
`
`iii
`
`

`
`Case IPR2016-01516
`Patent 7,149,511 B1
`As authorized by the Board’s order dated December 2, 2016, Petitioners LG
`
`Electronics, Inc. and LG Electronics U.S.A., Inc. (collectively, “LG” or
`
`“Petitioners”) submit this reply to the Patent Owner’s Preliminary Response
`
`(“POPR”) filed by Patent Owner Rosetta Wireless Corp. (“Rosetta”).
`
`LG’s Petition is timely because Rosetta’s original complaint (which was
`
`served more than one year before the filing of LG’s Petition) was dismissed
`
`without prejudice. Under the Board’s precedent, dismissal without prejudice
`
`“nullifies the effect of the service of the complaint and, as a consequence does not
`
`bar [LG] from pursuing an inter partes review of the [’511] patent.” Oracle Corp.
`
`v. Click-to-Call Techs. LP, IPR2013-00312, Paper 26, at 17 (Oct. 30, 2013)
`
`(precedential as to Section III.A, so holding). This rule has been consistently
`
`applied by the Board. See Atlanta Gas Light Co. v. Bennett Regulator Guards,
`
`Inc., IPR2015-00826, Paper 12, at 12-13 (Sept. 1, 2015) (collecting cases) (“When
`
`considering the statutory bar under § 315(b), the Board has consistently held that
`
`dismissal without prejudice of a party from district-court litigation nullifies the
`
`effect of service on that party of the underlying complaint.”).
`
`The rule also applies to involuntary dismissal. See, e.g., Xilinx, Inc. v. Papst
`
`Licensing GmbH & Co., IPR2016-00104, Paper 8, at 13 (May 6, 2016) (declining
`
`to accept “attempts to distinguish the dismissal in this case on grounds that it was
`
`involuntary”); Nautique Boat Co., Inc. v. Malibu Boats, LLC, IPR2014-01045,
`
`
`
`1
`
`

`
`Case IPR2016-01516
`Patent 7,149,511 B1
`Paper 13, at 10 (Nov. 26, 2014) (“We are not persuaded that the voluntary or
`
`involuntary nature of the dismissal should have any bearing on this issue.”).
`
`The decisions that Rosetta cites do not help it. Rosetta cites only one
`
`precedential opinion, LG Elecs., Inc. v. Mondis Tech. Ltd., where the Board found a
`
`petition time-barred by an earlier dismissed action because the dismissal did not
`
`leave the parties in the same position as if the action had never been brought. That
`
`dismissal was partly prejudicial and it is this critical distinction which dictated the
`
`result in that case. IPR2015-00937, Paper 8 (Sept. 17, 2015) (precedential). Here,
`
`there is no dispute that the dismissal was entirely and completely without
`
`prejudice.
`
`Rosetta relies on a very narrow exception to the general rule, which applies
`
`only when a district court immediately continues the dismissed action into another
`
`pending action, such that there is no interval during which no action is pending
`
`against the petitioner. See Apple Inc. v. Rensselaer Polytechnic Inst., IPR2014-
`
`00319, Paper 14, at 4-5 (July 31, 2014) (“[T]he immediate continuation of the case
`
`is the relevant fact regarding the consolidation…. [T]here was no interval during
`
`which no action was pending.”); Histologics, LLC v. CDX Diagnostics, Inc.,
`
`IPR2014-00779, Paper 6, at 5-6 (Sept. 12, 2014) (“Here, the parties remain
`
`engaged in a dispute … that has been pending continuously since that complaint
`
`was filed.”); eBay, Inc. v. Advanced Auctions LLC, IPR2014-00806, Paper 14, at 7
`
`
`
`2
`
`

`
`Case IPR2016-01516
`Patent 7,149,511 B1
`(Sept. 25, 2014) (“From the day the Petitioner was served with the complaint in the
`
`First Action to the present, Petitioner has been involved in litigation regarding its
`
`alleged infringement of the ’000 patent.”).
`
`Other panels have recognized the narrowness of the exception relied on by
`
`Rosetta. For example, in Yamaha Corp. of Am. v. Black Hills Media, LLC, patent
`
`owner had filed a complaint that was defective due to standing. The district court
`
`dismissed the complaint without prejudice and invited patent owner to serve a new
`
`complaint by a date certain. See IPR2014-00766, Paper 16, at 2-3 (Feb. 23, 2015).
`
`Patent owner attempted to rely on Histologics, arguing (like Rosetta here) “that
`
`under Histologics, the dismissal of the [complaint] was not a nullity ‘because
`
`Petitioner remained answerable to the court for the allegations made’ in the
`
`[complaint].” Id. at 4. The Board disagreed: “Histologics, however, is readily
`
`distinguishable. The district court there simultaneously dismissed an earlier
`
`complaint and consolidated it with another case involving the same parties.” Id.
`
`There are no facts in the present case that support applying the narrow
`
`exception. There was a gap of two weeks during which no action was pending
`
`against LG. In other words, during those two weeks, Rosetta was in the same
`
`position as if the original action had not been brought. It could have re-filed, filed
`
`a different complaint, filed in another jurisdiction, or not filed at all. It chose to
`
`
`
`3
`
`

`
`Case IPR2016-01516
`Patent 7,149,511 B1
`file a different complaint (adding 36 new accused products and an allegation of
`
`willfulness). Under these facts, the rule announced in Oracle controls.
`
`Rosetta mischaracterizes the dismissal of the original action as merely a
`
`bureaucratic step towards consolidation. Not so. Rosetta twice asked the district
`
`court to rule the new action a continuation of the original. The Court twice
`
`declined: first, when denying Rosetta’s motion for reconsideration; and again,
`
`when granting Rosetta’s motion for alternative service, but not its requested
`
`alternate relief. See Ex-1030, Ex-1031.1 Moreover, when Rosetta filed the new
`
`action, Rosetta designated it as a refiling of the original. In response, the Court
`
`issued an order referring the cases for reassignment because they were new cases,
`
`not refilings. See Ex-1029. Consolidation for pretrial purposes did not occur until
`
`nine weeks after dismissal of the original action against LG and seven weeks after
`
`filing of the new action. Compare Ex-2016 with Ex-2011 and Ex-2012. Even
`
`then, consolidation for pretrial purposes was based on a stand-alone motion and
`
`was not connected to the motion to sever. Cf. Ex-2006. See also Ex-1032, Ex-
`
`1033, Ex-1034, Ex-1035, Ex-1036.
`
`1 In doing so, the Court reminded Rosetta that the reason the parties were in this
`
`position was that Rosetta had not done things the “right way” from the start:
`
`“Now, you should be doing this the right way. So I hope that the plaintiff will
`
`learn a lesson from this.” Ex-1031 at 10.
`
`
`
`4
`
`

`
`Case IPR2016-01516
`Patent 7,149,511 B1
`Rosetta also attempts to argue that this “procedural happenstance” unfairly
`
`benefits LG. See POPR at 10. LG disagrees. It has only sought to use the time
`
`allowed by statute to prepare the best possible petition to present to the Board.
`
`Moreover, the situation in which Rosetta finds itself is of Rosetta’s own making.
`
`Rosetta chose to file a single complaint against five unrelated defendant groups in
`
`violation of 35 U.S.C. § 299. Defendants notified Rosetta, but Rosetta refused to
`
`sever, instead insisting that severance be tied to pre-trial consolidation. So
`
`defendants had to move the Court, and the Court agreed, ruling that “Rosetta’s
`
`accompanying request for consolidation … is inappropriate at this time, as all
`
`defendants but Apple will be dismissed without prejudice so that Rosetta can file
`
`separate suits against each defendant group.” Ex-1017, at 5. LG should not be
`
`penalized for Rosetta’s own strategic decisions. See above, fn.1.
`
`In short, Rosetta’s procrustean approach cannot make this case lie on the
`
`same bed as Apple, Histologics, and eBay. In each of those cases, the Board relied
`
`on the immediate continuation of one action into another. Rosetta refers to the
`
`dismissed original action and the new action as being “contiguous.” But they are
`
`not. There was a two-week gap between when the original action was dismissed
`
`without prejudice as to LG and when the new action was brought against LG.
`
`During that period, Rosetta and LG were in the same position as if the original
`
`action had not been brought. Accordingly, LG’s petition is timely.
`
`
`
`
`
`5
`
`

`
`
`
`
`
`
`
`Date: December 9, 2016
`
`
`
`
`
`
`
`Respectfully submitted,
`
`Case IPR2016-01516
`Patent 7,149,511 B1
`
`By:
`
`
`
` /Brian A. Tollefson/
`Brian A. Tollefson, Reg. No. 46,338
`Steven Lieberman (pro hac vice pending)
`Mark T. Rawls (pro hac vice pending)
`ROTHWELL, FIGG, ERNST &
`MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040 | Fax: 202-783-6031
`
`Counsel for Petitioners LG Electronics, Inc.
`and LG Electronics U.S.A., Inc.
`
`
`
`
`6
`
`

`
`CERTIFICATE OF SERVICE
`I hereby certify that on this 9th day of December, 2016, a true and correct
`
`Case IPR2016-01516
`Patent 7,149,511 B1
`
`copy of the foregoing PETITIONER’S REPLY TO PATENT OWNER’S
`
`PRELIMINARY RESPONSE, along with supplemental EXHIBITS 1031-1036,
`
`were served, via electronic mail upon the following counsel of record for Patent
`
`Owner Rosetta Wireless Corp.:
`
`Miranda Y. Jones
`Michael F. Heim
`Heim, Payne & Chorush, L.L.P.
`600 Travis Street, Suite 6710
`Houston, TX 77002
`Phone: (713) 221-2000
`mjones@hpcllp.com
`mheim@hpcllp.com
`
`Michael Ng (pro hac vice pending)
`Daniel A. Zaheer (pro hac vice pending)
`Kobre & Kim LLP
`150 California, 19th Floor
`San Francisco, CA 94111
`Phone: (415) 582-4803
`michael.ng@kobrekim.com
`daniel.zaheer@kobrekim.com
`
`
`
`
`
`/ Erik van Leeuwen /
`Erik van Leeuwen
`Litigation Operations Coordinator
`Rothwell, Figg, Ernst & Manbeck, P.C.
`
`
`
`
`
`
`1