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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NETAPP INC.,
`Petitioner
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`v.
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`REALTIME DATA LLC
`Patent Owner
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`___________________
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`Case IPR2017-01660
`Patent 7,161,506
`____________________
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`PATENT OWNER’S RESPONSE TO
`PETITIONER’S SUPPLEMENTAL BRIEF REGARDING
`GENERAL PLASTIC FACTORS
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`I.
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`Case IPR2017-01660
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`RESPONSE ON GENERAL PLASTIC
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`The first General Plastic factor is not dispositive, and the Board should
`consider all relevant factors in its decision.
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`In General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357,
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`Paper 19 at 18 (Sept. 6, 2017) (precedential), the Board provided “a baseline of
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`[seven] factors to be considered” as to “follow-on petitions” against a given patent.
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`The premise of NetApp’s supplemental brief is that the seven General
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`Plastic factors should be reinterpreted as a two-part test: if the first factor is not
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`met, NetApp urges that alone “should be dispositive, and that the rest of the
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`General Plastic factors should not outweigh this factor. . . .”. Supp. Resp. 2
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`(emphasis added).
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`The Board has previously rejected that premise. In Samsung Electronics v.
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`ELM 3DS Innovations, IPR2017-01305, Paper 11 at 19 (Oct. 17, 2017), the Board
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`acknowledged that Samsung had not previously sought review of the patent, but
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`nonetheless concluded that “the high degree of similarity” between Samsung’s
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`petition and two prior petitions “reduce[d] the weight” of the first factor. The
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`Board then denied institution based on its analysis of all seven factors. Id.
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`Indeed, as the Board made clear in General Plastic, its “intent in formulating
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`the factors was to take undue inequities and prejudices to Patent Owner into
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`account.” Gen. Plastic at 17 (emphasis added). Thus the Board recognized that,
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`“all other factors aside,” the use of “[m]ultiple, staggered petitions challenging the
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`same patent and same claims” creates “the potential for abuse,” allows later
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`Case IPR2017-01660
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`RESPONSE ON GENERAL PLASTIC
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`petitioners to use the Board’s prior decisions “as a roadmap,” and is “unfair to
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`patent owners.” Id. at 17-18 (emphasis added). The Board thus noted that
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`considering factor 3—“all other factors aside”—allows it to take these issues into
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`account. Id. It also noted that factors 2, 4, and 5 remain similarly relevant. Id.
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`NetApp’s request that the Board treat General Plastic’s first factor as
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`dispositive is thus contrary to General Plastic’s express language and purpose. If
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`the Board were to accept NetApp’s argument, it would divest itself of the
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`discretion to deny follow-on petitions by a new petitioner that would create a
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`significant waste of the Board’s resources and significant prejudice to patent
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`owners, as here. The Board should not so limit its discretion, or General Plastic.
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`II. The General Plastic factors support denial of NetApp’s delayed follow-
`on petitions, as the Board has already found in three other cases.
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`Patent Owner’s Preliminary Response presented a detailed analysis of all
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`seven General Plastic factors, which explained when NetApp should have known
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`of the relevant art, how long it delayed filing its petition, and that institution would
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`waste the Board’s resources and prejudice Patent Owner. Prelim. Resp. 5-10.
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`In presenting that analysis, the Preliminary Response carefully tracked two
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`recent Board decisions that applied the General Plastic factors and declined to
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`institute similar NetApp follow-on petitions. Id. (discussing IPR2017-01195, Paper
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`9 (Oct. 12, 2017) (“’530 Decision”) and IPR2017-01196, Paper 10 (Oct. 13, 2017)
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`(“’908 Decision”)). Since then—and prior to NetApp’s supplemental response
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`- 2 -
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`Case IPR2017-01660
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`RESPONSE ON GENERAL PLASTIC
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`here—the Board subsequently denied a third NetApp follow-on petition against a
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`Realtime patent, applying a similar General Plastic analysis. See IPR2017-01354,
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`Paper 16 (Nov. 14, 2017) (“’728 Decision”).
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`NetApp’s follow-on petition here should be denied for the same reasons as
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`the Board’s decisions in the three prior cases. Indeed, NetApp’s supplemental
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`response does not attempt to distinguish the present case from the prior decisions,
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`but instead merely repeats arguments that the Board has already rejected.
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`For example, NetApp’s argument that Factor 1 should be dispositive—
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`discussed above—was rejected when NetApp previously presented it. ’728
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`Decision at 10 (“NetApp’s argument [that Factor 1 should be dispositive] is
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`contrary to the Board’s precedent holding that each of the seven non-exclusive
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`General Plastic factors is to be considered and weighed according the facts of the
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`particular case.”).
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`Similarly, NetApp proposes that Factor 2 “weighs in favor [of] considering
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`the Petition.” Supp. Resp. 3. But each of the three prior Board decisions has found
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`that “Factor 2 is directed to situations in which the same petitioner files two
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`separate petitions at different times” and is therefore “neutral” under the present
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`circumstances.’728 Decision at 11; ’530 Decision at 10; ’908 Decision at 10.
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`Factors 3 and 4 relate to the length of delay in Petitioner’s filing and
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`whether that delay allowed it to consider substantive developments in the earlier
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`- 3 -
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`Case IPR2017-01660
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`RESPONSE ON GENERAL PLASTIC
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`proceedings. Patent Owner’s Preliminary Response presented a detailed timeline of
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`when NetApp knew of the relevant art, the length of delay before filing, and the
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`numerous developments in related proceedings that occurred during that delay.
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`Prelim. Resp. 6-8. NetApp’s supplemental response does not contest that timeline,
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`but instead urges that “this factor should be neutral” because “the existing IPR did
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`not address all of the grounds of unpatentability that NetApp had identified” and
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`that it filed “before the statutory bar.” Supp. Resp. 3-4.
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`Contrary to NetApp’s argument, however, the Board’s prior institution
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`denials have repeatedly found that these factors weigh against institution. ’728
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`Decision at 11-12; ’530 Decision at 11; ’908 Decision at 10-11. Indeed, relative to
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`those prior denials, the facts of this case weigh even more heavily against
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`institution. That is because although NetApp knew or should have known of the
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`relevant prior art at approximately the same time here as in the three previous
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`cases, NetApp delayed even longer in this proceeding before filing its petition.
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`Compare Prelim. Resp. 6 (“NetApp filed this Petition on June 22, 2017”) with ’530
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`Decision at 12 (waiting until March 30, 2017); ’908 Decision at 12 (same); ’728
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`Decision at 12 (waiting until May 2, 2017). And during the longer delay here,
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`Realtime submitted additional substantive responses in related earlier-filed
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`proceedings. See, e.g., IPR2017-00806, Paper 11 (May 22, 2017) (Patent Owner’s
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`Preliminary Response in a proceeding against the ’506 patent challenged here).
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`Case IPR2017-01660
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`RESPONSE ON GENERAL PLASTIC
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`Accordingly, Factors 3 and 4 weigh even more strongly against institution here
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`than in the three prior cases where the Board denied NetApp’s petitions.
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`Factor 5 considers NetApp’s reasons for delay, but the only explanation
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`NetApp offers is that it filed its petitions in a “reasonable timeline” after “the
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`district court stated that NetApp must have its own IPRs for a stay[.]” Supp. Resp.
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`5. The Board’s three previous decisions, however, all considered that issue and
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`faulted NetApp for waiting on the district court’s stay order. ’728 Decision at 13
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`(“NetApp had ample opportunity to file a petition for inter partes review during
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`the fall of 2016 and spring of 2017. . . . But instead, NetApp waited until May 2,
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`2017, after its attempts to stay the litigation in the Eastern District of Texas were
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`twice denied.”); ’530 Decision at 12; ’908 Decision at 13-14.
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`Factors 6 and 7 consider prejudice to the Board. NetApp urges that “these
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`factors weigh in favor of institution,” but the Board has found three times under
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`similar circumstances that they do not. ’728 Decision at 13 (finding that institution
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`would “be a significant waste of the Board’s resources”); ’530 Decision at 12-13;
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`’908 Decision at 12-14.
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`Giving due consideration to all seven General Plastic factors, the Board
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`should deny this petition for the same reasons it denied the three prior petitions.
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`Moreover, the Board should also deny the petition for the substantive reasons put
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`forth in Patent Owner’s Preliminary Response.
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`Case IPR2017-01660
`RESPONSE ON GENERAL PLASTIC
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`Respectfully submitted,
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`/s/ Kayvan Noroozi
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`William P. Rothwell, Reg. No. 72,522
`NOROOZI PC
`2245 Texas Drive, Suite 300
`Sugar Land, TX 77479
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`Kayvan B. Noroozi, Admitted Pro Hac Vice
`NOROOZI PC
`1299 Ocean Ave., Suite 450
`Santa Monica, CA 90401
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`Attorneys for the Patent Owner
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`Date: December 1, 2017
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`CERTIFICATION OF SERVICE
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`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`RESPONSE TO PETITIONER’S SUPPLEMENTAL BRIEF REGARDING
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`GENERAL PLASTIC FACTORS was served electronically via e-mail on the
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`following counsel of record for Petitioner:
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`Diek O. Van Nort (Lead Counsel)
`Jonathan Bockman (Back-up Counsel)
`Service E-mail Address
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`dvannort@mofo.com
`JBockman@mofo.com
`35667-506-IPR@mofo.com
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`/s/ Kayvan Noroozi
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`Kayvan B. Noroozi, Admitted Pro Hac Vice
`Noroozi PC
`1299 Ocean Ave., Suite 450
`Santa Monica, CA 90401
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`Attorney for Patent Owner
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`Date: December 1, 2017
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