UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LG ELECTRONICS, INC. and
`LG ELECTRONICS U.S.A., INC.
`Petitioners,
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`v.
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`ROSETTA-WIRELESS CORPORATION,
`Patent Owner.
`
`Case IPR2016-01516
`Patent 7,149,511
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`PATENT OWNER’S SUR-REPLY TO PETITIONERS’ REPLY
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`EXHIBIT LIST
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`Ex. 1002
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`Ex. 1003
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`Ex. 1004
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`Ex. 1005
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`Petitioners’ Exhibits
`Exhibit
`Description
`U.S. Patent No. 7,149,511 (filed Aug. 31, 2000) (issued on Dec.
`Ex. 1001
`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”)
`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
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`Ex. 1006
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`Ex. 1007
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`Ex. 1008
`Ex. 1009
`Ex. 1010
`Ex. 1011
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`Ex. 1012
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`Ex. 1013
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`Ex. 1014
`Ex. 1015
`Ex. 1016
`Ex. 1017
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`Ex. 1018
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`Ex. 1019
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`i
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`Ex. 1020
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`Ex. 1021
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`Ex. 1022
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`Ex. 1023
`Ex. 1024
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`Ex. 1025
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`Ex. 1026
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`Ex. 1027
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`Ex. 1028
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`Ex. 1029
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`Ex. 1030
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`Ex. 1031
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`Ex. 1032
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`Ex. 1033
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`Ex. 1034
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`Ex. 1035
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`Ex. 1036
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`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 (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
`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)
`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
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`ii
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`Ex. 2007
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`Ex. 2008
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`Ex. 2009
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`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)
`Memorandum in Support of Defendants’ Motion to Dismiss, No.
`Ex. 2006
`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)
`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.
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`Ex. 2010
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`Ex. 2011
`Ex. 2012
`Ex. 2013
`Ex. 2014
`Ex. 2015
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`Ex. 2016
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`Ex. 2017
`Ex. 2018
`Ex. 2019
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`Ex. 2020
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`iii
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`Pursuant to the Board’s Order dated December 2, 2016, Patent Owner
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`Rosetta-Wireless Corporation (“Rosetta”) respectfully submits this sur-reply to the
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`Reply to Patent Owner’s Preliminary Response filed by Petitioners LG Electronics
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`USA, Inc. and LG Electronics, Inc. (collectively, “LG”).
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`Section 315(b) is clear: institution of an inter partes review is barred if the
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`petition “is filed more than 1 year after the date on which the petitioner . . . is
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`served with a complaint alleging infringement of the patent.” LG has previously
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`attempted to evade that requirement, and the Board has rejected those tactics. In
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`2015, LG filed a petition more than one year after being served with a complaint
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`that was voluntarily dismissed, but within a year of a second complaint. In a
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`precedential decision, the Board rejected LG’s petition as untimely, stating, “We
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`decline LG’s invitation to amend § 315(b) by inserting either ‘latest’ or ‘second’
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`[complaint] into the statute.” See LG Elecs., Inc. v. Mondis Tech. Ltd., IPR2015-
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`00937, slip op. at 5 (PTAB Sept. 17, 2015) (precedential) (Paper 8).
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`The same rule applies here. LG’s petition was indisputably filed more than
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`one year after service of Rosetta’s original complaint. LG and the other defendants
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`filed a motion to dismiss, which the Court denied. They also filed a motion to
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`sever, which Rosetta did not oppose (though Rosetta requested that the cases be
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`1
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`consolidated).1 Noting Rosetta’s non-opposition, the Court “exercise[d] its
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`discretion under Rule 21 to sever the claims against the five defendant groups.”
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`See Ex. 2011 at 5. It elected to do so by involuntarily dismissing the actions
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`without prejudice as to “all defendants but Apple … so that Rosetta can file
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`separate suits against each defendant[.]” Id. Apple’s selection was random—LG
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`could just as easily have not been dismissed. Judge Lefkow expressly invited
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`Rosetta to seek consolidation and acknowledged the dismissed actions would be
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`reassigned to her under the original case, calling the local requirement to reassign
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`the cases to different judges “bureaucratic stuff,” but noting that after consulting
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`with the new judges she could “grant the motion to consolidate.” Ex. 2015 at 2.
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`Rosetta promptly refiled,2 and sought consolidation for pretrial purposes
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`(which LG did not oppose). As expected, LG’s case was reassigned back to Judge
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`Lefkow. As a result, LG is once again a party to the original action, under the
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`1
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`The AIA’s requirement that a patent holder file separate suits against patent
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`infringement defendants is waivable. 35 U.S.C. § 299(c). Rosetta properly filed
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`against multiple defendants as an invitation to waive that right, and its good-faith
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`intent is evidenced by its non-opposition to the severance motion.
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`2
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`The short delay allowed Rosetta to update its accused products, which would
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`have been included in the original suit through the normal disclosure process.
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`2
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`same case number, for all pretrial purposes. Although technically the Court’s
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`ruling on the first motion to dismiss applied only to Apple, the other defendants,
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`including LG, did not reassert it, and the case has proceeded in a unified fashion.
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`Under these circumstances, there is no reason to allow LG to escape the
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`consequences of its conscious decision to delay filing of its petition. The only
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`precedential decision allowing the filing of a petition more than one year after
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`service of a first complaint involved a voluntary dismissal without prejudice under
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`Fed. R. Civ. P. 41(a), and expressly noted that courts have treated Rule 41(a)
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`dismissal as “leaving the parties as though the action had never been brought”.
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`Oracle Corp. v. Click-to-Call Techs. LP, IPR2013-00312, slip op. at 17
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`(precedential) (PTAB Oct. 30, 2013) (Paper 26). There is no precedential authority
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`that creates a similar exception to the statutory deadline for involuntary dismissals,
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`and no decision Rosetta is aware of construing dismissal under Rule 21, which
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`governs severance and was the basis for the district court’s dismissal at issue here.
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`Instead, the Board has taken a flexible approach that looks at the
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`“circumstances surrounding the dismissal” to determine whether it “[t]reat[s] a
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`case dismissed without prejudice as if it never existed.” CQG, Inc. & CQGT, LLC,
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`Petitioner, CBM2015-00057, slip op. at 8 (PTAB July 10, 2015) (Paper 13)
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`(decided under analogous rule for CBMs). For example, the Board has looked to
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`3
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`how the parties were affected by the first-filed action or whether the first action
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`was part of a contiguous litigation by the patent owner. See eBay, Inc. v. Advanced
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`Auctions LLC, IPR2014-00806, slip op. at 7 (PTAB Sept. 25, 2014) (Paper 14);
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`Histologics, LLC v. CDX Diagnostics, IPR2014-00779, slip op. at 5 (PTAB Sept.
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`12, 2014) (Paper 6); Apple, Inc. v. Rensselaer Polytechnic Inst. & Dynamic
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`Advances, LLC, IPR2014-00319, slip op. at 6–7 (PTAB June 12, 2014) (Paper 12).
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`Nowhere in those decisions did the Board focus hypertechnically on whether an
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`“interval” of time existed between a first- and second-filed action.
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`There is no reason to treat the district court’s decisions to sever and re-
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`consolidate as grounds for resetting the statutory clock. First, Rosetta’s original
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`case continued unabated—and LG is once again a party to that case. A short,
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`temporary, “bureaucratic” detour through refiling, reassignment, and consolidation
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`does not change the reality that LG remains a part of the case initiated by the
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`original complaint that named LG and triggered the IPR deadline. The Court and
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`the parties understood that LG would be consolidated back into the action after the
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`Court’s election to dismiss under Rule 21. Notably, the Court’s description of its
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`action as “dismissal” does not comport with the language of Rule 21, which
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`expressly states that misjoinder “is not a ground for dismissing an action,” though
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`it allows the court to “add or drop a party.” Though the Court effectuated
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`4
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`severance through “bureaucratic stuff,” the result was identical to straightforward
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`severance, with LG a party to the same original action for pretrial purposes and
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`assigned to a separate action for a future trial. Second, the positions of the parties
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`were impacted by the first action. For example, although Apple was technically the
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`only subject of the motion to dismiss (see Ex. 2011 at 5), LG understood that the
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`Court’s ruling would be applied to it and did not refile the motion. In sum, the
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`instances in which the Board deemed the original complaint to not trigger the
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`section 315(b) deadline were because the practical effect of the dismissal was the
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`same as if the complaint had never been brought—to the contrary here, the
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`practical effect is the same as if the complaint had never been dismissed.
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`Ultimately, LG offers no reason why it should be allowed an exemption. It
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`does not claim, for example, that the prior art on which it relies was not discovered
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`until recently. Its co-defendants, including Samsung, which was also dismissed
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`without prejudice, filed petitions many months ago. LG’s excuse that it wanted to
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`craft the best petition is illogical—if LG believed it had strong grounds to
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`invalidate Rosetta’s patent, it would have avoided the risk that its petition would be
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`deemed untimely. LG’s delay is tactical, meant to trail the petitions of Apple and
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`Samsung and to delay litigation in the district court. The Board would invite future
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`mischief by granting LG’s untimely petition, and should decline to do so.
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`5
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`Respectfully submitted,
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`By: /s/ Miranda Y. Jones
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`Miranda Y. Jones (Reg. No. 64,721)
`Michael Ng (pro hac vice)
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`Daniel A. Zaheer (pro hac vice)
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`Attorneys for Patent Owner
` Rosetta-Wireless Corp.
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`Dated: December 16, 2016
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`6
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that pursuant to 37 C.F.R. § 42.6(e), a copy of the
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`foregoing PATENT OWNER’S SUR-REPLY TO PETITIONERS’ REPLY was
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`served via email to lead and backup counsel of record for Petitioners as follows:
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`Brian A. Tollefson
`Steven Leiberman
`Rothwell, Figg, Ernst & Manbeck, P.C.
`btollefson@rothwellfigg.com
`slieberm@rothwellfigg.com
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`By: /s/ Miranda Y. Jones
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`Miranda Y. Jones (Reg. No. 64,721)
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`Dated: December 16, 2016
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`1