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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.
`
`REALTIME DATA LLC,
`Patent Owner
`
`Patent No. 7,161,506
`
`_______________
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`Inter Partes Review No. IPR2017-01660
`____________________________________________________________
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`PETITIONER’S SUPPLEMENTAL BRIEF REGARDING
`GENERAL PLASTIC FACTORS
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`dn-196695
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`IPR2017-01660
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`Petitioner’s Exhibit List for Inter Partes Review of U.S. Patent No. 7,161,506
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`Exhibit Description
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`Exhibit #
`1001
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`U.S. Patent No. 7,161,506 (the “’506 patent”), including
`Reexamination Certificate No. 7,161,506 C1 and Reexamination
`Certificate No. 7,161,506 C2
`
`Hsu and Zwarico, “Automatic Synthesis of Compression Techniques
`for Heterogeneous Files,” Software-Practice and Experience, Vol.
`25(10), 1097-1116 (October 1995) (“Hsu”)
`
`U.S. Patent No. 5,870,036 (“Franaszek”)
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`U.S. Patent No. 6,195,024 (the “’491 application”)
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`Declaration of Dr. Daniel Hirschberg (“Hirschberg Decl.”)
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`July 5, 2006 Notice of Allowability, Application No. 10/668,768
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`December 15, 2009 Non-Final Office Action, Reexamination No.
`95/000,479
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`January 18, 2012 Decision on Appeal, Reexamination No.
`95/000,479
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`April 25, 2012 Inter Partes Reexamination Petition, Reexamination
`No. 95/001,926
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`August 16, 2013 Right of Appeal Notice, Reexamination No.
`95/001,928
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`Memorandum Opinion and Order (“Claim Construction Order”)
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`U.S. Patent No. 6,253,264 (“Sebastian”)
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`U.S. Patent No. 5,467,087 (“Chu”)
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`i
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`IPR2017-01660
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`Exhibit Description
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`Declaration of Dr. Scott Bennett (“Bennett Decl.”)
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`D.A. Lelewer and D.S. Hirschberg, “Data compression,” Computing
`Surveys 19:3 (1987) 261-297
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`International Patent Application Publication No. WO 2001/063772
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`International Patent Application Publication No. WO 2001/050325
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`Listing of Realtime’s cases asserting the ’506 patent
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`Order Denying Stay, Case 6:16-CV-00961, Docket No. 151 (E.D.
`Tex April 24, 2017)
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`
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`Exhibit #
`1014
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`1015
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`1016
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`1017
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`1018
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`1019
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`*Petitioner’s Exhibits 1001 - 1017 were previously filed and are listed again here
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`based on 37 C.F.R. § 42.63.
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`**Petitioner’s Exhibits 1018-1019 are newly filed.
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`Pursuant to the Board’s email of November 20, 2017, Petitioner NetApp
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`submits that the General Plastic factors should not apply to petitioners that have
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`not previously filed a petition. A first time petitioner should have an opportunity
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`to challenge a patent without being required to join an earlier, significantly
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`different petition.
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`Even if the General Plastic factors were applied to this case, they favor
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`institution. NetApp’s Petition’s timing is justified and there is no reason why the
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`Board could not issue a final written decision within the statutory time period.
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`I.
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`GENERAL PLASTIC FACTORS FAVOR INSTITUTION
`A.
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`Factor 1 – “whether the same petitioner previously filed a
`petition directed to the same claims of the same patent”
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`NetApp has not filed a previous petition against the ’506 patent and thus this
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`factor weighs in favor of instituting the Petition. Additionally, NetApp’s Petition
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`does not include the ground that was instituted in the earlier IPRs.1 Instead, the
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`Petition includes four unique grounds, each of which is different from the grounds
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`presented in the earlier petitions. While some of the prior art is overlapping, the
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`actual grounds rely on different portions of the prior art references, different
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`combinations of the prior art references, different motivations to combine the prior
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`art references, and different expert testimony. Realtime’s argument that NetApp’s
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`Petition is the same as the earlier petitions ignores all of these significant
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`1 IPR2017-00176 and IPR2017-00806.
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`differences. See Patent Owner Preliminary Response at 6-7. NetApp submits that
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`these facts should be dispositive, and that the rest of the General Plastic factors
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`should not outweigh this factor to deny institution of a first petition filed by a
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`party. To find otherwise would enable patent owners to file multiple serial actions,
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`as Realtime has done here, in an effort to limit later defendants from filing IPR
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`petitions.2
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`In another proceeding for a related patent, the Board noted that there is no
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`precedent for this factor to be dispositive. NetApp, Inc. v. Realtime Data LLC,
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`Case IPR2017-01354, slip op. 10-11 (PTAB November 14, 2017) (Paper 16).
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`NetApp submits, however, that (1) before the Board decided NetApp’s IPR
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`petitions the Board had never applied these factors to a petitioner’s first IPR
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`petition and (2) that the Board has previously recognized a party’s right to pursue
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`an IPR even when the prior art is the same or similar to art present in an earlier
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`petition. See, e.g., SAP America Inc. v. Clouding IP, LLC, Case IPR2014-00306,
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`slip op. 13 (PTAB May 19, 2014) (Paper 12) (“We consider each petition by a
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`different petitioner on its own merits, in part, because a second petitioner has no
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`control over the decision to see a review through a determination on the merits if
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`the second petitioner is not a party in that matter. Therefore, we decline to deny
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`2 Realtime has asserted the ’506 patent against over 60 defendants starting in 2008.
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`Exhibit 1018.
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`2
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`institution of review on the grounds that a review involving substantially the same
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`art and arguments is currently instituted in [an earlier petition], which involves a
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`different petitioner.”); see also Apple Inc. v. California Institute of Technology,
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`Case IPR2017-00210, slip op. 11 (PTAB June 30, 2017) (Paper 18) (declining to
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`exercise discretion to deny a different petitioner’s petition that presents different
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`arguments for similar prior art in an earlier petition).
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`B.
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`Factor 2 – “whether at the time of filing of the first petition the
`petitioner knew of the prior art asserted in the second petition or
`should have known of if”
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`At the time of the first petition for the ’506 patent was filed on
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`November 14, 2017, NetApp did not know what claims Realtime would assert
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`against NetApp or what prior art would be relevant.3 NetApp had no opportunity
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`to participate in drafting the first petition. This factor thus weighs in favor
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`considering the Petition.
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`C.
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`Factor 3 – “whether at the time of filing of the second petition
`the petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision on
`whether to institute review in the first petition”
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`While NetApp knew of the prior art relied on in the Petition earlier in 2017,
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`this is not a situation where a party filed a follow-on petition to address arguments
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`or issues highlighted in a patent owner preliminary response or the Board’s
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`3 Realtime served it infringement contentions identifying the asserted claims on
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`November 18, 2016.
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`institution decision. Rather, NetApp determined that the existing IPR did not
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`address all of the grounds of unpatentability that it had identified and relied on an
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`expert that did not address all of the grounds. Accordingly, at most, this factor
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`should be neutral.
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`D.
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`Factor 4 – “the length of time that elapsed between the time the
`petitioner learned of the prior art asserted in the second petition
`and the filing of the second petition”
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`While several months passed between when NetApp learned of the prior art
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`references and when NetApp filed the Petition, this was before the statutory bar
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`and a reasonable amount of time under the circumstances. I.M.L. SLU, v. WAG
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`Acquisition, LLC, Case IPR2016-01657, slip op. 8 (PTAB February 27, 2017)
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`(Paper 11) (“[W]e do not penalize Petitioner for filing within the time allotted
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`under 35 U.S.C. § 315(b).”). Thus, at most, this factor should be neutral.
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`E.
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`Factor 5 – “whether the petitioner provides adequate
`explanation for the time elapsed between the filings of multiple
`petitions directed to the same claims of the same patent”
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`Without citing any evidence or providing examples, Realtime argues
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`“NetApp sat back and tracked key events in the filed IPRs” and “NetApp
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`deliberately waited until June 2017 to file its Petition, picking and choosing art and
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`arguments from prior petitions.” Patent Owner Preliminary Response at 8.
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`Realtime, however, has failed to identify any ground of unpatentability, any
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`argument, or any evidence that NetApp included in its Petition in response to any
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`earlier patent owner preliminary response or institution decision.
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`In fact, NetApp did not draft its Petition in view of earlier proceedings.
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`Rather, NetApp waited to file additional petitions in an attempt to avoid wasting
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`additional resources on patents that were already being challenged. When the
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`district court stated that NetApp must have its own IPRs for a stay, NetApp filed
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`four IPR petitions in less than two months. Exhibit 1019. This is a reasonable
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`timeline, and NetApp did not delay its filings to respond to Realtime’s preliminary
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`responses or the Board’s institution decisions. Thus, this factor weighs in favor of
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`institution.
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`F.
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`Factors 6 and 7 – “the finite resources of the Board” and “the
`requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review”
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`NetApp’s Petition only challenges a single claim. Additionally, if the earlier
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`IPR determines that the challenged claim is invalid, NetApp would move to
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`terminate any proceeding based on the Petition. There is no reason why a final
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`determination would take more than one year. Thus, these factors weigh in favor
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`of institution.
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`II. THE FACTORS FAVOR CONSIDERATION OF THE PETITION
`At least five of the General Plastic factors (Factors 1, 2, and 5-7) weigh in
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`favor of considering NetApp’s Petition, and the factors as a whole strongly favor
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`institution. NetApp respectfully submits that trial should be instituted.
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`IPR2017-01660
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`Dated: November 28, 2017
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`By /Diek Van Nort/
`Diek Van Nort, Reg. No. 60,777
`dvannort@mofo.com
`MORRISON & FOERSTER LLP
`370 Seventeenth Street, Suite 4200
`Denver, CO 80202
`Tel: (650) 813-5696
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`IPR2017-01660
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`Certificate of Service (37 C.F.R. § 42.6(e)(4))
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`
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`I hereby certify that the attached Petitioner’s Supplemental Brief Regarding
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`General Plastics Factors was served on the below date on the Patent Owner via e-
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`mail (by consent) to the following counsel of record for the Patent Owner:
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`
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`William P. Rothwell, Reg. No. 72,522
`william@noroozipc.com
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`Kayvan B. Noroozi (Pro Hac Vice Pending)
`kayvan@noroozipc.com
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`Dated: November 28, 2017
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`By: /Diek Van Nort/
`Diek O. Van Nort
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`dn-196695
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