Paper No. 26
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––––––––––
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`BLACKBERRY LTD.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR 2017-01620
`U.S. Patent No. 8,489,868
`
`––––––––––––––––––
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`BLACKBERRY LTD.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR 2017-01620
`U.S. Patent No. 8,489,868
`
`––––––––––––––––––
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`IPR2017-01620 (U.S. Patent No. 8,489,868)
`
`Patent Owner’s Sur-Reply
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`TABLE OF CONTENTS
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`I.
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`II.
`
`Introduction ...................................................................................................... 1
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`Petitioner’s “Additional Evidence” Arguments Are Improper ....................... 1
`
`A.
`
`B.
`
`C.
`
`Petitioner’s “Additional Evidence” Arguments Are Not Responsive to
`Patent Owner’s Argument that the Petition’s Evidence Is Insufficient
`to Show the Public Accessibility of Gong ............................................ 1
`
`Petitioner’s Reply Violates the Board’s Supplemental Information
`Rules ...................................................................................................... 3
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`The Availability of a Sur-Reply Does Not Cure Patent Owner’s
`Prejudice ................................................................................................ 4
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`III. Conclusion ....................................................................................................... 5
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`i
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`IPR2017-01620 (U.S. Patent No. 8,489,868)
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`Patent Owner’s Sur-Reply
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc. v. VirnetX Inc.,
`IPR2015-00811, Paper 21 (Nov. 2, 2015) ............................................................ 4
`Google LLC v. Blackberry Ltd.,
`IPR2017-00913, Paper 22 (Apr. 24, 2018) ........................................................... 5
`Hughes Network Sys., LLC et al., v. Cal. Inst. of Tech.,
`IPR2015-00059, Paper 42 (Apr. 21, 2016) ........................................................... 3
`Seabery N. Am. Inc. v. Lincoln Glob., Inc.,
`IPR2016-00840, Paper 60 (Oct. 2, 2017) ............................................................. 3
`Valeo N. Am., Inc. v. MAGNA Elecs. Inc.,
`IPR2015-01410, Paper 23 (Dec. 22, 2016)........................................................... 3
`Other Authorities
`37 C.F.R. § 42.23(b) .................................................................................................. 2
`37 C.F.R. § 42.64(b)(2) .............................................................................................. 2
`37 C.F.R. § 42.123 ..................................................................................................... 3
`37 C.F.R. § 42.123(a) ................................................................................................. 4
`37 C.F.R. § 42.123(b) ............................................................................................ 4, 5
`77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) ........................................................... 2
`
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`
`
`ii
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`IPR2017-01620 (U.S. Patent No. 8,489,868)
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`Patent Owner’s Sur-Reply
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`EXHIBIT LIST
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`Exhibit Description
`No.
`2001 Declaration of Sharon Lee In Support of Patent Owner BlackBerry Ltd.’s
`Motion for Pro Hac Vice Admission
`2002 Declaration of Dr. George Ligler
`2003 CV of Dr. George Ligler
`2004 Deposition Transcript of Dr. Patrick D. McDaniel (Feb. 21, 2018)
`2005 Webster’s NewWorld Dictionary (1984)
`2006 PTAB Conference Call Transcript (Aug. 9, 2018)
`
`
`iii
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`
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`IPR2017-01620 (U.S. Patent No. 8,489,868)
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`Patent Owner’s Sur-Reply
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`I.
`
`Introduction
`
`Petitioner’s Reply (Paper 19, “Reply”) presents new arguments and eight
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`new exhibits (Ex. 1038-45) in an attempt to cure the Petition’s deficiency in
`
`showing that Gong was publicly available before the ’868 patent’s priority date.
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`Such new arguments and evidence are improper and should not be considered.
`
`II.
`
`Petitioner’s “Additional Evidence” Arguments Are Improper
`A.
`
`Petitioner’s “Additional Evidence” Arguments Are Not
`Responsive to Patent Owner’s Argument that the Petition’s
`Evidence Is Insufficient to Show the Public Accessibility of Gong
`
`In an attempt to show the public accessibility of Gong, the Petition relied on
`
`(i) Gong’s copyright date (Ex. 1016, iv), (ii) a MARC record from North Carolina
`
`State University (“NCSU”) (Ex. 1033) and exhibits that purportedly explain what
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`various MARC fields represent (Exs. 1034-36), and (iii) a copy of Gong with a
`
`Library of Congress (“LOC”) Copyright Office stamp (Ex. 1037, v). Paper 1
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`(“Pet.”), 4. Patent Owner’s Response explained that this showing is deficient
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`because (i) the Board has held copyright notices are insufficient to show public
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`accessibility, (ii) the MARC fields the Petition relied on do not establish when
`
`Gong was publicly accessible at NCSU, and (iii) there is no evidence that the
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`LOC’s date stamp indicates when Gong was publicly accessible. Paper 16
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`(“POR”), 58-63; see also Paper 9, 20-21 (Board noting Petitioner’s evidence “does
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`not include a specific date that Gong was indexed or cataloged at either library”).
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`1
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`IPR2017-01620 (U.S. Patent No. 8,489,868)
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`Patent Owner’s Sur-Reply
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`Petitioner then filed eight new exhibits with its Reply to argue that
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`“[a]dditional evidence” supports “the conclusion that Gong was publicly available
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`prior to the critical date.” Paper 19 (“Reply”), 24-25. This additional evidence and
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`argument is not responsive to the POR’s arguments that the Petitioner’s evidence
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`of record was insufficient to show Gong’s public accessibility. For example, none
`
`of the new evidence establishes that (i) Gong’s copyright date is sufficient to show
`
`when Gong was publicly available, (ii) that NCSU’s MARC records is sufficient to
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`show that Gong was cataloged and indexed before the priority date, or (iii) that the
`
`LOC date stamp is sufficient to show the date Gong was publicly available at the
`
`LOC. Rather, in an effort to cure the Petition’s deficiencies, Petitioner filed brand
`
`new evidence and arguments to bolster its public accessibility showing. Such new
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`evidence and arguments are an improper use of a Reply and should not be
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`considered. 37 C.F.R. § 42.23(b); 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012).
`
`Petitioner’s attempt to inject this “[a]dditional evidence” in its Reply confirms that
`
`the Petition’s evidence was in fact deficient.
`
`Although Petitioner served these eight new exhibits on Patent Owner in
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`January 2018, it was only as supplemental evidence in response to Patent Owner’s
`
`evidentiary objections. Paper 11, 4; 37 C.F.R. § 42.64(b)(2). Supplemental
`
`evidence can only be used to cure evidentiary objections, not bolster a petitioner’s
`
`unpatentability showing. It was only after receiving Patent Owner’s Response that
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`2
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`
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`IPR2017-01620 (U.S. Patent No. 8,489,868)
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`Patent Owner’s Sur-Reply
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`Petitioner decided to submit that evidence as substantive evidence along with its
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`Reply.
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`During the parties’ August 9, 2018 conference call with the Board, Petitioner
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`cited a number of IPR decisions that allegedly authorize its introduction of new
`
`arguments and evidence in reply. Ex. 2006 at 11:22-13:15. None of those
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`decisions, however, is binding, and include situations where the petitioner
`
`submitted the new evidence as supplemental information, the evidence-at-issue
`
`was submitted with the petition, or the patent owner did not further object to the
`
`new reply evidence. See, e.g., Seabery N. Am. Inc. v. Lincoln Glob., Inc.,
`
`IPR2016-00840, Paper 60 at 9 (Oct. 2, 2017); Hughes Network Sys., LLC et al., v.
`
`Cal. Inst. of Tech., IPR2015-00059, Paper 42 at 35 (Apr. 21, 2016); Valeo N. Am.,
`
`Inc. v. MAGNA Elecs. Inc., IPR2015-01410, Paper 23 at 45 n.18 (Dec. 22, 2016).
`
`None of these situations applies here nor supports ignoring the Board’s rules and
`
`guidance regarding proper reply evidence.
`
`B.
`
`Petitioner’s Reply Violates the Board’s Supplemental Information
`Rules
`
`The Board’s rules already codify a scheme available to petitioners that wish
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`to supplement the record post-institution in the form of motions to submit
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`supplemental information under 37 C.F.R. § 42.123. If a petitioner timely requests
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`authorization to file such a motion within one month of institution, such a motion
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`must only show that the supplemental information is “relevant to a claim for which
`3
`
`
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`IPR2017-01620 (U.S. Patent No. 8,489,868)
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`Patent Owner’s Sur-Reply
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`the trial has been instituted,” such as public accessibility information. 37 C.F.R.
`
`§ 42.123(a); e.g., Apple Inc. v. VirnetX Inc., IPR2015-00811, Paper 21 at 6-7 (Nov.
`
`2, 2015) (granting such a motion and noting “Patent Owner’s Response is not due
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`until” more than a month later).
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`The Board’s rules also contemplate late-submission of supplemental
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`information, but only if a party satisfies additional and substantial scrutiny.
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`Petitioner’s motion for late-submission of supplemental information must show (1)
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`“why the supplemental information reasonably could not have been obtained
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`earlier,” and (2) “that consideration of the supplemental information would be in
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`the interests-of-justice.” 37 C.F.R. § 42.123(b).
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`Petitioner’s failure to avail itself of either of these ways for submitting
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`supplemental information in favor of improperly submitting new exhibits with its
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`Reply flouts the Board’s rules. Moreover, given Petitioner was indisputably in
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`possession of its supplemental information within one month of institution, it
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`cannot possibly meet the supplemental information requirements now.
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`C. The Availability of a Sur-Reply Does Not Cure Patent Owner’s
`Prejudice
`
`This sur-reply does not cure the prejudice to Patent Owner. The Board’s
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`supplemental information scheme provides patent owners with notice well before
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`their patent owner’s responses are due to consider the new information and
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`determine where to focus their efforts. For example, in this proceeding, Patent
`4
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`IPR2017-01620 (U.S. Patent No. 8,489,868)
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`Patent Owner’s Sur-Reply
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`Owner utilized almost every word available to make its patentability arguments.
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`See POR at Cert. of Compliance. If Petitioner had timely and successfully
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`requested to submit its supplemental information pursuant to 37 C.F.R.
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`§ 42.123(b), Patent Owner may have decided to forgo further arguments on the
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`issue and could have reallocated the 7 pages it devoted to this issue to make
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`additional merits arguments or supplement the existing merits arguments. See
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`POR, 56-63.
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`Thus, granting Patent Owner a sur-reply to respond to Petitioners’ new reply
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`arguments and evidence does not cure the prejudice to Patent Owner and instead
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`encourages petitioners to submit new arguments and evidence in reply, contrary to
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`the Board’s rules. Petitioner’s pattern of submitting new reply arguments and
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`evidence should not be rewarded or further encouraged, see, e.g., Google LLC v.
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`Blackberry Ltd., IPR2017-00913, Paper 22 at 2-3 (Apr. 24, 2018), and its
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`“[a]dditional evidence” and arguments should be ignored.
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`III. Conclusion
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`For the foregoing reasons, Petitioner’s “Additional Evidence” arguments and
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`evidence are improper and should not be considered.
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`Dated: August 24, 2018
`
`Respectfully Submitted,
`
`/Ching-Lee Fukuda/
`Ching-Lee Fukuda
`Reg. No. 44,334
`SIDLEY AUSTIN LLP
`5
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`IPR2017-01620 (U.S. Patent No. 8,489,868)
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`Patent Owner’s Sur-Reply
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`787 Seventh Avenue
`New York, NY 10019
`P: (212) 839-7364
`F: (212) 839-5599
`Attorney for Patent Owner
`
`6
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`
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`IPR2017-01620 (U.S. Patent No. 8,489,868)
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`Patent Owner’s Sur-Reply
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 24th day of
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`August, 2018, I caused to be served a true and correct copy of the foregoing and
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`any accompanying exhibits by electronic mail on the following counsel:
`
`Naveen Modi
`Joseph E. Palys
`Phillip W. Citroen
`John S. Holley
`Paul Hastings LLP
`875 15th St. N.W.
`Washington, D.C. 20005
`Tel.: 202.551.1700
`Fax: 202.551.1705
`Email: PH-Google-BB-IPR@paulhastings.com
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`Dated: August 24, 2018
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`Respectfully Submitted,
`
`/Ching-Lee Fukuda/
`Ching-Lee Fukuda
`Reg. No. 44,334
`SIDLEY AUSTIN LLP
`787 Seventh Avenue
`New York, NY 10019
`P: (212) 839-7364
`F: (212) 839-5599
`Attorney for Patent Owner
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