`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS INC.
`
`Petitioner
`
`V.
`
`SILVER STATE INTELLECTUAL TECHNOLOGIES, INC.
`
`Patent Owner
`
`Case N0.: IPR2017~01531
`
`Patent No. 7,650,234
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`PURSUANT TO 37 CFR §42.107
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`
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`TABLE OF CONTENTS
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`INTRODUC I ION ............................................................................................... 6
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`THE PETITION SHOULD BE SUMMARILY DISMISSED FOR
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`SEEEKING TO IMPROPERLY WASTE THE BOARD’S AND PATENT
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`OWNER’S RESOURCES ......................................................................................... 7
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`A. The Petition Seeks To Resolve A Controversy That Has Already Been
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`Resolved ................................................................................................................. 7
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`B. The Petition Is The First Of Multiple Petitions Copied From Previously—
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`terminated IPRs ...................................................................................................... 9
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`C. The Board Is Well Within Its Authority And Board Precedent In Refusing To
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`Waste Its Resources By Granting The Petition .................................................... 10
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`D. Denying Unified’s Petition Would Not Unfairly Burden Unified, And Would
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`Protect The Integrity Of The Office ..................................................................... 13
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`III.
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`PATENT OWNER DOES NOT CONSENT TO INTER PARTES REVIEW,
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`WHICH MAY BE UNCONSTITUTIONAL ......................................................... 15
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`IV. CONCLUSION .............................................................................................. 19
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Blue Coat Systems LLC v Finjan, Inc.
`IPR2016—01443 ................................................................... 11-12,14
`
`Google Inc. v. Silver State Intellectual Technologies, Inc.
`IPR2015—01737 .......................................................................... 7, 8
`
`Google Inc. v. Silver State Intellectual Technologies, Inc.
`IPR2015—01738 ................................................................... 7, 8, 9, 12
`
`Google Inc. v. Silver State Intellectual Technologies, Inc.
`IPR2015-01746 .......................................................................... 7, 8
`
`Google Inc. v. Silver State Intellectual Technologies, Inc.
`IPR2015~01747 ......................................................................... 7, 8
`
`Google Inc. v. Silver State Intellectual Technologies, Inc.
`IPR2015—01748 ......................................................................... 7, 8
`
`Oil States Energy Services, LLC v. Green’s Energy Group, LLC
`Case 16—712(U.S. June 12, 2017) ...................................................... 14
`
`Samsung Electronics Co., Ltd. v Nvidia Corporation
`IPR2015~01270&IPR2015-01314 .................................................... 11
`
`Unified Patents Inc. v. Silver State IntelleCtual Technologies, Inc.
`IPR2017—01531 ....................................................................... 9, 12
`
`Zetec, Inc. v Westinghouse Electric Company, LLC,
`IPR2014—00384 ........................................................................... 10
`
`
`
`TABLE OF AUTHORITIES - continued
`
`STATUTES
`
`35 U.S.C. §314 ............................................................................... 10
`
`35 U.S.C. §316 ............................................................................... 11
`
`OTHER AUTHORITIES
`
`37 CFR §42.23 ................................................................................. 5
`
`37 CFR §42.71 ............................................................................... 11
`
`37 C.F.R §42.107 ............................................................................. 6
`
`
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`STATEMENT OF MATERIAL FACTS IN DISPUTE
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`Petitioner Unified Patents Inc. (hereinafter “Unified”) did not submit a
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`statement of material facts in its Petition. Accordingly, no response is due pursuant
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`to 37 C.F.R §42.23(a), and no facts are admitted.
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`
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`Case No.: IPR2017-01531
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`Patent No.: 7,650,234
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`INTRODUCTION
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`Pursuant
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`to 37 C.F.R §42.107,
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`this paper presents the Patent Owner’s
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`Preliminary Response to the Petitioner’s Petition for Inter Partes Review of US.
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`Patent No. 7,650,234. For at least the reasons discussed herein, Patent Owner
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`submits that the requested Review should not be instituted, and in any event Patent
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`Owner does not consent to this proceeding.
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`The Inter Partes Review process was instituted to help resolve patent disputes
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`in a more efficient manner. Over the years, the Board has recognized instances in
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`which lPRs have been used inappropriately and in a manner that wastes both the
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`Board’s and Patent Owner’s resources without providing any real benefit.
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`In such
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`cases, the Board has refused to institute, and has even dismissed, unnecessary and
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`inappropriate IPRs.
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`The present Petition is an example of an inappropriate Petition that is destined
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`to cost both the Board and the Patent Owner substantial resources without providing
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`any benefit. As discussed in more detail below, Petitioner Unified appears to be
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`adopting a practice in which it copies Petitions from proceedings that were resolved
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`and terminated long ago. Thus, Petitioner seeks Inter Partes Review of patent issues
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`that have already been resolved, and regarding which there is no dispute in need of
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`Case No.: IPR2017—0153l
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`Patent No.: 7,650,234
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`resolution. This is a blatant waste of both the Board’s and Patent Owner’s resources,
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`which waste is an abuse of the IPR process that the Board should not countenance.
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`Unified’s inappropriate and wasteful Petition should be dismissed.
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`THE PETITION SHOULD BE SUMMARILY DISMISSED FOR
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`SEEEKING TO IMPROPERLY WASTE THE BOARD’S AND PATENT
`
`OWNER’S RESOURCES
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`A.
`
`The Petition Seeks To Resolve A Controversy That Has Already
`
`Been Resolved
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`As noted by Petitioner, in 2015, Patent Owner sued Google for infringement
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`of the ‘234 Patent and several other patents. As part of its response, Google filed
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`IPR Petitions for the ‘234 Patent (see IPR2015-01738) as well as four other patents
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`involved in the lawsuit, which patents and associated IPRs are listed below
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`(collectively, the “Google IPRs”):
`
`US Patent 6,525,768
`IPR 2015—01737
`
`
`IPR2015—01746
`
`
`US Patent 6,529,824
`
`US Patent 8,700,312
`
`US Patent 8,538,498
`lPR2015-Ol747
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`
`IPR2015—Ol 748
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`Case No.2 IPR2017—01531
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`Patent No.: 7,650,234
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`The Google lawsuit was settled, and as there were no longer any disputes in
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`connection with any of these patents, each of these IPRs was appropriately
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`terminated in the preliminary stages on joint motion of the parties. See IPRZOIS—
`
`01747 (Paper 9); IPR 2015—01737 (Paper 9); IPR2015—01746 (Paper 9); IPR2015—
`
`01738 (Paper 9); IPR2015~01748 (Paper 9).
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`Since the Google lawsuit was settled there have been no further actions in
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`connection with the ‘234 Patent or any of the other patents for which Google filed
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`Petitions. Patent Owner has taken no action to enforce any of these patents against
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`any party, and has had no communication at all to that effect with Petitioner Unified.
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`Further, Unified does not even appear to make any product that could possibly
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`infringe the ‘234 Patent or the other patents from the Google IPRs. There simply is
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`no dispute in connection with the ‘234 Patent.
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`Notwithstanding the lack of any dispute, Petitioner has now obtained and
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`copied Google’s Petition. Indeed, the outstanding Petition is nearly a word-for—word
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`copy of Google’s Petition in IPR2015—01738.
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`Since the only dispute concerning the ‘234 patent has long been resolved, and
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`since Unified does not infringe the ‘234 patent — and indeed could never infringe the
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`‘234 patent — the present Petition, if granted, would not resolve any valid patent
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`dispute, and will simply lead to a proceeding that will waste the Board’s and the
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`Case N0.: IPR2017—01531
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`Patent N0.: 7,650,234
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`Patent Owner’s resources. In addition, there would be no prejudice to Petitioner or
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`to the public if the Board declines to waste its time on the present Petition. For
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`example, if any such dispute ever arose in the future, Unified, or a third party, could
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`simply do as Unified has done here, and copy the Google petition (or add to it, for
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`example, by citing to art not already before the USPTO during examination of the
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`underlying application).
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`B.
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`The Petition Is The Second Of Multiple Petitions Copied From
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`Previously-terminated IPRs
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`The present Petition is the second step down a slippery slope of multiple
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`unnecessary IPRs. Shortly before filing this Petition, Unified filed a Petition in
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`IPR2017—Ol 198 challenging Patent Owner’s US Patent 8,538,498, which is another
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`of the 5 patents asserted against Google.
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`In the earlier Petition, Unified copied
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`substantially word—for—word the Petition filed by Google in IPR2015-Ol747. As in
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`the current proceeding, the patent dispute underlying lPR2015—01747 was resolved
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`long ago and no enforcement activity has taken place since the Google lawsuit was
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`settled. Also, Unified not only has never been accused of infringement, but makes
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`no products and is incapable of infringing.
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`If the Board countenances Unified’s Petition in this instance and in the prior
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`Petition, it seems likely that Unified will be emboldened to file recycled petitions
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`Case No.: IPR2017—0153l
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`Patent No.2 7,650,234
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`copying the rest of the Google IPRs, for a total of FIVE pointless IPRs that recycle
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`Petitions from long—resolved proceedings, leading to a colossal waste of the Board’s
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`and Patent Owner’s resources.
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`C.
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`The Board 15 Well Within Its Authority And Board Precedent
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`In Refusing To Waste Its Resources By Granting The Petition
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`The Board has considerable discretion in deciding whether to institute an Inter
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`Partes Review. The Board should exercise its considerable discretion to protect its
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`limited resources, and ensure its effort is applied to proceedings that will lead to
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`resolution of real disputes.
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`As noted by the Board in Zetec, Inc. v Westinghouse Electric Company, LLC,
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`IPRZOl4—00384, Paper 10, at p. 5, “The standard for institution is written in
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`permissive terms——identifying when the United States Patent and Trademark Office
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`(‘the Office’) is authorized to institute an inter partes review. Thus, Congress has
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`given the Office discretion whether to institute a review or not institute a review.”
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`(Citing 35 U.S.C. §3l4(a)).
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`In Zetec, the Board determined that the Petition “would place a significant
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`burden on the Board and contravene the efficient administration of the Office.” See
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`Zetec at p. 15. Thus, the Board “decline[d] to expend our resources”, and denied the
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`Petition. Zetec at p. 15.
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`Case N0.: lPRZOl7~OlS3l
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`Patent N0.: 7,650,234
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`There is much authority supporting the Board’s discretion to avoid instituting
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`wasteful, inappropriate, and even abusive lPRs. Congress intended IPRs to solve
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`real problems, and thus contemplated steps to prevent abuse of the process, “or any
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`other improper use ofthe proceeding, such as to harass or to cause unnecessary delay
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`or an unnecessary increase in the cost of the proceeding.” 35 U.S.C. §3l6(a)(6).
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`Congress also specifically directed the Office to consider the effects of such
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`proceedings on “the integrity of the patent system, [and] the efficient administration
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`ofthe Office .
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`.
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`.
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`35 use. §316(b).
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`Thus, when the Board detects that an IPR proceeding is being used in a way
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`that is improper or that compromises the efficient administration of the Office (e.g.,
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`wastefully expends the Office’s resources), the Board is well within its discretion to
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`decline to waste its precious resources on an improper proceeding.
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`The Board has previously used its discretion to avoid lPRs that would subject
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`the Board and the parties to unnecessary expense. Citing 37 C.F.R. §42.7l(a), the
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`panel in Samsung Electronics Co, Ltd. v sz‘dz‘a Corporation noted that “the rules
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`do provide us the discretion to ‘take up petitions or motions for decisions in any
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`order’ and to ‘grant, deny, or dismiss any petition or motion’ or enter any appropriate
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`order.” IPR2015~01270 & IPR2015—013l4, Paper ll, at p. 3. See also Id. at p. 2
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`
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`Case No.: IPR2017—0153l
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`Patent No.2 7,650,234
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`(Board terminated proceedings to “preserve both the Board’s and parties’
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`resources” .
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`Several panels of the Board have weighed the “finite resources of the Board”
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`in deciding to exercise discretion not to institute review. See Blue Coat Systems LLC
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`v Finjan, Inc. IPR2016—01443, Paper 10, at pp. 8—9 (Discussing factors and citing
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`several other cases considering similar factors).
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`Also, as discussed above, the present IPR represents the second step on a
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`slippery slope for the Board. In total, 5 Petitions for Inter Partes Review were filed
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`by Google in connection with 5 patents asserted in the now—settled lawsuit. All 5
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`Google IPRs were appropriately terminated after the lawsuit was settled. As
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`discussed above, Unified’s current Petition regarding the ‘234 Patent is the second
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`Petition that simply recycles, substantially word-for—word, Google’s previous
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`Petition. So far, then, Unified has recycled two of the five Google IPRs. It seems
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`that Unified is testing the Board to see whether it will countenance such pointless
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`IPRs, and will recycle the other 5 Google IPRs if it believes it can get away with it.
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`If the Board countenances Unified’s improper Petition in this case, the Board
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`likely can anticipate a total of 5 similarly improper recycled Inter Partes Reviews
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`inspired by the long~settled Google lawsuit.
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`In connection with each of these
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`potentially FIVE trials that Unified seems intent to pursue, the parties will incur
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`Case No.: IPR2017—0153l
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`Patent No.: 7,650,234
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`substantial expense in preparing and presenting expert declarants for deposition,
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`submitting substantive briefs and motions, and presenting at an oral hearing. The
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`Board will also have to expend substantial resources, likely being requested to
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`address various procedural disputes, address potential requests for additional
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`discovery, preside over an oral hearing, and draft a substantive decision on
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`institution and a final written decision on the merits.
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`If trial is instituted, a substantial portion of the Board’s and Patent Owner’s
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`resources will be dedicated to resolving a non—existent patent dispute that was, in
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`fact, resolved long ago.
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`This colossal waste of resources can be avoided if the Board exercises its
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`discretion to decline to institute trial in response to the present Petition.
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`Denying Unified’s Petition Would Not Unfairly Burden
`D.
`Unified, And Would Protect The Integrity Of The Office
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`Should the Board decide not to institute trial, Unified is not without recourse.
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`Unified can request a rehearing,
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`in which it can explain why instituting this
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`proceeding would not be a colossal waste of the Board’s (and Patent Owner’s) finite
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`resources, and why recycling Google’s petition from the long—resolved patent
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`dispute maintains the integrity of the Office. Given the facts currently before us, it
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`seems reasonable for the Board to deny the Petition and require Unified to explain
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`Case No.11PR2017—0153l
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`Patent No.: 7,650,234
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`itself. If Unified’s justification is sound, it may still obtain the relief it seeks.
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`If, as
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`suspected, Unified has no valid justification for filing the recycled Google lPRS, and
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`this Petition in particular, then the Board can save substantial resources to be applied
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`to resolving actual disputes, and Patent Owner will be relieved from incurring
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`hundreds of thousands of dollars of expenses defending against a nonexistent
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`controversy.
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`Unified also has other options. For example, there have been instances in
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`which a Petitioner has been permitted to file a Reply after a Preliminary Response
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`in order to explain itself. See Blue Coat Systems LLC v Finjan, Inc. IPR2016—01443,
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`Paper 13, at p. l. Patent Owner would be amenable to Unified being given such an
`
`opportunity. If Unified is unable or unwilling to explain why its suspicious recycling
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`of terminated IPR Petitions related to long-resolved patent disputes justifies tying up
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`substantial Board and Patent Owner resources, trial should not be instituted.
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`The resources at stake for both Patent Owner and the Board are substantial.
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`Petitioner Unified must not be allowed to misuse the IPR process to “resolve” issues
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`that were resolved long ago and are currently moot. At the very least, Unified must
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`explain its suspicious actions of recycling petitions from long—resolved proceedings
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`in which there is no current dispute.
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`
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`Case No.: IPR2017—01531
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`Patent No.: 7,650,234
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`III.
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`PATENT OWNER DOES NOT CONSENT TO INTER PARTES
`
`REVIEW, WHICH MAY BE UNCONSTITUTIONAL
`
`Patent Owner notes that the Supreme Court has granted a petition for writ of
`
`certiorari to address whether Inter Partes Review is unconstitutional. See Oil States
`
`Energy Services, LLC v. Green’s Energy Group, LLC, Case 16~712 (U.S. June 12,
`
`2017). Patent Owner wishes to clarify that it does not consent to its inclusion in the
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`current Inter Partes Review proceeding.
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`IV.
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`PETITIONER MISCHARACTERIZES CLAIM TERMS
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`Perhaps recognizing that its cited art does not teach or suggest the claimed
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`invention, Petitioner seeks to convince the Board that claim terms should be
`
`construed in a manner that completely changes the meaning of the terms.
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`Petitioner’s attempt to change the meaning of claim terms should be rejected by the
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`Board.
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`A.
`
`“Searching the database” means “searching the database”
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`All of the independent claims (Claims 1, 9, 17 and 24) recite the phrase
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`“searching the database.” Petitioner Unified seeks to construe this phrase as
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`“analyzing data from the database.” Clearly, “searching” and “analyzing data” have
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`different meanings. Thus, adopting Petitioner’s proposed construction would change
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`
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`Case No.: lPR2017—01531
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`Patent No.: 7,650,234
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`Patent Owner proposes that “searching the database” be given its normal and
`
`ordinary meaning. Searching a database is a well—known, well understood operation.
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`A person of ordinary skill in the art, if asked what was entailed in the step of
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`searching a database for some information, would surely understand that the step
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`entails looking for certain information in a computer database. This phrase needs
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`no re—definition.
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`The law is clear that a patentee may act as his own lexicographer, but if the
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`patentee wishes for a term to carry a meaning that differs from its normal and
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`ordinary meaning, the patentee must clearly demonstrate his intent to redefine the
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`term. There is no such redefinition of “searching the database” in the ‘234 patent.
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`Thus, the well—understood term “searching the database” must retain its normal and
`
`ordinary meaning. The specification, such as at least at col. 7, l. 19 — col. 8, l. 55,
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`discusses that servers 622 and 630, receive a request from a processor 103, and in
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`response obtain information from numerous databases.
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`It goes without saying that
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`in order to obtain such information, the servers must first look for and locate it, which
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`of necessity involves “searching the database” for that information. The ‘234
`
`specification clearly supports the plain meaning of the phrase “searching the
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`database.”
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`
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`Case N0.: IPR2017-01531
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`Patent No.: 7,650,234
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`If an IPR is instituted, the Board must not change the meaning of the well~
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`known, well—understood, clear, common, and fully—supported phrase “searching the
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`database,” but should instead allow this phrase to retain its normal and ordinary
`
`meaning.
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`THE CITED REFERENCES DO NOT TEACH OR SUGGEST ALL
`
`OF THE CITED LIMITATIONS
`
`Petitioner bases each and every one of Grounds 1—4 on US Patent No.
`
`6,401,027 to Xu (Exh. 1004). However, Xu does not teach or suggest the limitations
`
`that Petitioner claims it does, and is not likely to impact the validity of the ‘234
`
`claims.
`
`Xu teaches a system that builds a database of historic traffic patterns and
`
`develops predicted traffic based on historic averages (see col. 11, l. 61 — col 12, l.
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`25). Such predictions are broadcast, and such broadcasts are received and stored by
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`in-vehicle devices 21 (col. 13, 11. 22—50).
`
`Petitioner appears to admit that Xu does not teach “searching the database” in
`
`the manner recited in the claims. Indeed, Petitioner refers to Xu’s in—vehicle device
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`21 as “analyzing” information that it has received in a broadcast of information.
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`Petitioner does not even try to characterize such “analyzing” as “searching the
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`
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`Case No.: IPR2017-0153l
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`Patent No.: 7,650,234
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`does not teach at least this requirement. As such, Xu cannot anticipate any of Claims
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`1, 9, l7 and 24, or the claims that depend therefrom.
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`As Petitioner has implied, Patent Owner also has strong arguments that the
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`“flagged geographical block including the location of in—vehicle device 21 in Xu do
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`not correspond to a ‘coverage area,’ as claimed.” (Petition at 49). While Patent
`
`Owner does not here discuss such arguments in depth, this argument, and others,
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`further demonstrate that Xu cannot anticipate the claims.
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`Notably, Ground 2 combines US Patent No. 5,835,881 to Trovato with Xu in
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`a challenge of dependent Claims 8, 16, 22 and 29. However, Trovato does not cure
`
`the failings of Xu in connection with the base independent claims from which these
`
`claim depend, and thus the Xu/Trovato combination does not teach or suggest all of
`
`the limitations of Claims 8, 16, 22 and 29.
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`In Grounds 3 and 4, Petitioner further adds US. Patent No. 5,933,100 to
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`Golding to the combination in an effort to cure the failings of Xu. However, Patent
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`Owner submits that the devices in these references operate substantially differently
`
`from one another and are not properly combinable, and even if combined they would
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`not teach or suggest all the recited limitations of the ‘234 claims.
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`Case No.: IPR2017—0153l
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`Patent No.: 7,650,234
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`VI. CONCLUSION
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`For the foregoing reasons, Unified’s Petition amounts to an unacceptable and
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`improper use of the Inter Partes Review process which, if countenanced by the
`
`Board, will lead to the filing of at least five pointless IPR proceedings that will waste
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`substantial portions of the Board’s and the Patent Owner’s resources without
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`resolving any real patent—related dispute. At the very least, Unified should be
`
`required to explain why the Board should countenance its suspicious practice of
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`copying Petitions from long-terminated IPRs associated with controversies that have
`
`long been resolved to challenge patents that are not in dispute. Denying institution,
`
`while inviting Unified to explain why this suspicious Petition will help resolve a real
`
`dispute, will not unfairly burden Unified.
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`Further, Petitioner’s cited references, taken alone or in combination, do not
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`teach or suggest all of the limitations recited in the claims.
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`
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`Case No.: lPR2017—01531
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`Patent No.: 7,650,234
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`The Board should deny Unified’s Petition in its entirety and not institute
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`proceedings in this matter.
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`Respectfully submitted,
`
`Klein, O’Neill & Singh, LLP
`
`Dated:
`
`September 12, 2017
`
`By
`
`/Glen L Nuttall/
`Glen L. Nuttall
`
`Glen L. Nuttall (Reg. No. 46,188)
`Daniel M. Cavanagh (Reg. No. 41,661)
`KLEIN, O’NEILL & SINGH, LLP
`16755 Von Karman, Suite 275
`Irvine, CA 92606
`
`Main: (949) 955-1920
`Fax: (949) 955-1921
`gnuttall@koslaw.com
`dcavanagh@koslaw.com
`Counselfor Patent Owner Silver
`State Intellectual Technologies,
`Inc.
`
`
`
`Case No.: IPR2017—01531
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`Patent No.: 7,650,234
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`CERTIFICATE OF SERVICE IN COMPLIANCE WITH 37 CFR §42.6(e)(4)
`
`The undersigned certifies that a complete copy of this PATENT OWNER’S
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`PRELIMINARY RESPONSE UNDER 37 CFR §42.107 is being served by
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`electronic mail, by agreement of the parties, on September 12, 2017 to:
`
`Petitioner’s lead counsel Ashraf A. Fawzy by email to the following email
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`address: afawzy@unifiedpatents.com; and
`
`Petitioner’s back-up counsel Jonathan Stroud by email to the following email
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`address: jonathangQunifiedpatents.com.
`
`Lead and back—up counsel both have the following street address: 1875
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`Connecticut Ave. NW, Floor 10, Washington, DC, 20009.
`
`By
`
`/ Glen L Nuttall/
`Glen L Nuttall (Reg. No. 46,188)
`Daniel M. Cavanagh (Reg. No. 41,661)
`KLEIN, O’NEILL & SINGH, LLP
`
`16755 Von Karman, Suite 275
`
`Irvine, CA 92606
`
`