UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
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`GOOGLE LLC,
`Petitioner,
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`v.
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`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
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`__________________
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`Case IPR2017-02067
`Patent No. 8,995,433
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`______________________
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`PETITIONER’S REPLY
`TO PATENT OWNER’S PRELIMINARY RESPONSE
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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
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`GOOGLE LLC,
`Petitioner,
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`v.
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`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
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`
`__________________
`
`
`Case IPR2017-02067
`Patent No. 8,995,433
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`______________________
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`PETITIONER’S REPLY
`TO PATENT OWNER’S PRELIMINARY RESPONSE
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`I.
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`Proceeding No. IPR2017-02067
`Attorney Docket No. 19473-0371IP1
`THE PETITION IS NOT REDUNDANT UNDER 35 U.S.C. §§ 314(a)
`OR 325(d), AND PETITIONER HAS A DUE PROCESS INTEREST
`Patent Owner (“PO”) cites two Board decisions that gained significance only
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`after the instant Petition was filed. See General Plastic Indus. Co., Ltd. v. Canon
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`Kabushiki Kaisha, IPR2016-01357, Paper No. 19 (PTAB Sept. 6, 2017)
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`(designated “precedential” after the instant Petition was filed); TCL Corp. v.
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`Lexington Luminance LLC, IPR2017-01780, Paper No. 8 (PTAB Jan. 2, 2018)
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`(decided after the instant Petition was filed). Petitioner (“Google”) already
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`explained how it “is not duplicative or substantially similar to earlier IPR petitions
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`against the ’433 patent” (Petition, 8-9), but Google now addresses these decisions.
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`The General Plastic factors 1-7 do not weigh in favor of an exercise of
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`“discretion” that would deprive Google of its only opportunity to seek IPR.
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`General Plastic, pp. 9-10. Factor 1 weighs heavily in favor of Google because this
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`is the first and only petition that Google—the only Petitioner in this case (infra
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`Section II)—has filed against the ’433 patent. Previous petitions were all filed by
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`different parties. Google’s Petition also challenges a different subset of claims than
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`any previous petition. None of the earlier-filed petitions challenged at least claims
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`13, 18-24, and 27 of the ’433 patent, a fact that “weigh[s] overwhelmingly against
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`a discretionary denial.” Weatherford Int’l, LLC v. Packers Plus Energy Servs., Inc.,
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`IPR2017-01232, Paper No. 10 at 9-10 (PTAB Oct. 17, 2017). Factors 2, 4, and 5
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`(relating to the timing and substance of a follow-on petition) do not tip the balance
`1
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`Proceeding No. IPR2017-02067
`Attorney Docket No. 19473-0371IP1
`against institution because this Petition is not a follow-on petition (e.g., Google has
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`not previously been party to any earlier petition where it “could have raised” the
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`grounds cited here). In addition, with respect to Factor 5, Google expeditiously
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`filed its Petition less than 6-months after Patent Owner served its complaint on
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`Google. Factor 3 weighs in favor of institution because the earlier-filed petitions
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`involved different prior art combinations and different issues. None of those cases
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`involved references Stern, Enete, Trapani, Demsky, and Katseff or the grounds in
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`this petition based on those references and thus could not have been discussed in
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`any earlier patent owner preliminary responses or institution decisions. Finally,
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`factors 6 and 7 “do not weight significantly for or against” exercising discretion to
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`deny institution, as held by the Board under similar facts. Fisher & Paykel
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`Healthcare Ltd. v. ResMed Ltd., IPR2017-01789, Paper No. 7 at 15 (PTAB Jan. 25,
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`2018).
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`With respect to TCL, the facts here differ, rendering the case
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`inapposite. The PO’s preliminary response ignores the fact that (1) Zydney was
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`not previously before the Examiner in a reexamination, (2) the Board has not
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`previously considered how Zydney (or Katseff or Enete) applies to claims 13, 18-
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`24, and 27, and (3) the present Petition relies on prior art combinations never
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`previously considered in an earlier proceeding. See id; Fisher at pp. 10-15. The
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`Board has recognized when, as here, a “case presents a different Petitioner
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`2
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`Proceeding No. IPR2017-02067
`Attorney Docket No. 19473-0371IP1
`challenging claims that have not been challenged previously,” that “those facts
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`weigh overwhelmingly against a discretionary denial of [a] proceeding.”
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`Weatherford Int’l, Paper No. 10 at pp. 9-10 (PTAB Oct. 17, 2017); see also
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`Unified Patents Inc. v. Silver State Intellectual Tech., Inc., IPR2017-01198, Paper
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`No. 6 at pp. 20-21 (PTAB Sept. 28, 2017).
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`In sum, this Petition bears none of the hallmarks of a typical “follow-on
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`Petition” under General Plastic or TCL. Google has a due process interest to be
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`heard on the merits, and the Board should not wrongly deprive Google of such
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`interest based on 35 U.S.C. §§ 314(a) or 325(d).
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`II. LG ELECTRONICS IS NOT A REAL PARTY-IN-INTEREST (RPI)
`PO has raised false allegations that Google did not list all RPIs—new
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`contentions that Petitioner could not have previously addressed. Contrary to PO’s
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`incorrect assertions, Google is the sole “Petitioner” here. The Motorola and
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`Huawei entities were properly listed as RPIs, but they are not “co-petitioners.” All
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`of PO’s arguments based on “co-Petitioners” were made without any evidence and
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`are flatly wrong.
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`Also, PO’s allegation that “joint-defendant LG Electronics” should be
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`named as a RPI is wrong. LG Electronics provided neither funding nor control
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`over the Petition, had no opportunity to review/provide input during preparation of
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`the Petition, and is simply unrelated to this case. PO also ignores the Board’s
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`3
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`Proceeding No. IPR2017-02067
`Attorney Docket No. 19473-0371IP1
`holdings that litigation activities among co-defendants “are not suggestive of
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`control” or an RPI relationship. Intel Corp. v. Alacritech, Inc., IPR2017-01410,
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`Pap. 8 at 15 (PTAB Nov. 21, 2017).
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`Finally, even if PO’s false assumptions were true, they would not lead to
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`“dismissal” of the Petition because the RPI listing can be corrected. Proppant
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`Express v. Oren Tech., IPR2017-01917, Pap. 8 at 2-3 (PTAB Jan. 8, 2018) (“real
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`parties in interest can be corrected”); Lumentum Holdings, Inc. v. Capella
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`Photonics, Inc., Case IPR2015-00739, Pap. 38 at 4-5 (PTAB Mar. 4, 2016)
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`(Precedential) (§ 312(a) not jurisdictional).
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`Respectfully submitted,
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` /Michael T. Hawkins/
`Michael T. Hawkins, Reg. No. 57,867
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`Attorney for Petitioner
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`Dated: February 2, 2018
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`4
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`Proceeding No. IPR2017-02067
`Attorney Docket No. 19473-0371IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned
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`certifies that on February 2, 2018, a complete and entire copy of this Petitioner’s
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`Reply to Patent Owner’s Preliminary Response was provided via email to the
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`Patent Owner by serving the email correspondence addresses of record as follows:
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`Brett Mangrum
`Ryan Loveless
`James Etheridge
`Jeffrey Huang
`Etheridge Law Group
`2600 E. Southlake Blvd., Ste. 120-324
`Southlake, TX 76092
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`Sean D. Burdick
`Uniloc USA, Inc.
`7160 Dallas Parkway, Ste. 380
`Plano, TX 75024
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`Email: brett@etheridgelaw.com
` sean.burdick@unilocusa.com
` ryan@etheridgelaw.com
` jim@etheridgelaw.com
` jeff@etheridgelaw.com
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`/Diana Bradley/
`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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