`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 USA, INC.,
`Patent Owner.
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`__________________
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`
`Case IPR2017-02080
`Patent No. 8,724,622
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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. IPR2017-02080
`Attorney Docket No. 19473-0370IP1
`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 a pair of recent Board decisions that gained
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`significance only after the instant Petition was filed. See General Plastic Indus.
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`Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper No. 19 (PTAB Sept.
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`6, 2017) (designated “precedential” after the instant Petition was filed); TCL Corp.
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`v. 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 ’622 patent” (Petition, 7), 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
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`IPR. General Plastic, pp. 9-10. Factor 1 weighs heavily in favor of Google
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`because this is the first and only petition that Google—the only Petitioner in this
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`case (infra Section II)—has filed against claims 3-23 of the ’622 patent. Previous
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`petitions were all filed by different parties. Additionally, Google’s Petition
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`challenges a different subset of claims than any previous petition. None of the
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`earlier-filed petitions challenged at least claim 9 of the ’622 patent, a fact that
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`“weigh[s] overwhelmingly against a discretionary denial.” Weatherford Int’l, LLC
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`v. Packers Plus Energy Servs., Inc., IPR2017-01232, Paper No. 10 at 9-10 (PTAB
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`Oct. 17, 2017). Factors 2, 4, and 5 (relating to the timing and substance of a
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`1
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`Proceeding No. IPR2017-02080
`Attorney Docket No. 19473-0370IP1
`follow-on petition) do not tip the balance against institution because this Petition is
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`not a follow-on petition (e.g., Google has not previously been party to any earlier
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`petition where it “could have raised” the grounds cited here). In addition, with
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`respect to Factor 5, Google expeditiously filed its Petition less than 6-months after
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`Patent Owner served its complaint on Google. Factor 3 weighs in favor of
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`institution because the Board’s prior denials of institution in IPR2017-00223 and
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`IPR2017-00224 involved different prior art and different issues. Neither of those
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`cases involved Zydney nor the grounds relied upon in this petition, and in fact,
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`IPR2017-00224 was denied on a procedural issue that never provided a substantive
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`“roadmap” for the instant Petition. Finally, factors 6 and 7 “do not weigh
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`significantly for or against” exercising discretion to deny institution, as held by the
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`Board under similar facts. Fisher & Paykel Healthcare Ltd. v. ResMed Ltd.,
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`IPR2017-01789, Paper No. 7 at 15 (PTAB Jan. 25, 2018).
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`With respect to TCL, the facts here differ, rendering the case inapposite.
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`The PO’s preliminary response ignores the fact that (1) Zydney was not previously
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`before the Examiner in a reexamination, (2) the Board has not previously
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`considered how Zydney applies to at least claim 9, and (3) the present Petition cites
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`different prior art combinations never cited in the earlier IPRs. The Board has
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`recognized that when, as here, a “case presents a different Petitioner challenging
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`claims that have not been challenged previously,” that “those facts weigh
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`2
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`Proceeding No. IPR2017-02080
`Attorney Docket No. 19473-0370IP1
`overwhelmingly against a discretionary denial of [a] proceeding.” Weatherford
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`Int’l, IPR2017-01232, Paper No. 10 at pp. 9-10; see also Unified Patents Inc. v.
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`Silver State Intellectual Tech., Inc., IPR2017-01198, Paper No. 6 at pp. 20-21
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`(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 assumptions, 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 that litigation
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`activities among co-defendants “are not suggestive of control” or an RPI
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`3
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`Proceeding No. IPR2017-02080
`Attorney Docket No. 19473-0370IP1
`relationship. Intel Corp. v. Alacritech, Inc., IPR2017-01410, Pap. 8 at 15 (PTAB
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`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 because the RPI listing can be corrected. Proppant Express v. Oren
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`Tech., IPR2017-01917, Pap. 8 at 2-3 (PTAB Jan. 8, 2018) (“real parties in interest
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`can be corrected”); Lumentum Holdings, Inc. v. Capella Photonics, Inc., Case
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`IPR2015-00739, Pap. 38 at 4-5 (PTAB Mar. 4, 2016) (Precedential) (§ 312(a) not
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`jurisdictional).
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`III. OTHER BOARD DECISIONS BASED ON ZYDNEY DO NOT
`COMPEL DENIAL OF INSTITUTION HERE
`PO’s “substantive” arguments are premised on the denial of institution in
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`IPR2017-01257, which was a petition filed by a different party involving different
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`issues in different claims of a different patent. The cited decision was published
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`after Google filed this Petition, and PO’s arguments based on this decision
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`introduce new issues that Google could not have addressed earlier.
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`First, the issue that led to denial of institution in IPR2017-01257 is
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`substantively different from any issue in this petition. The issue in IPR2017-01257
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`was whether the petitioner there (Facebook) had adequately demonstrated that the
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`prior art teaches “recording [an] instant voice message in an audio file and
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`attaching one or more files to the audio file,” as recited in claim 1 of U.S. Pat.
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`8,199,747. Critically, none of the claims of the ’622 patent recite this language. In
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`4
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`Proceeding No. IPR2017-02080
`Attorney Docket No. 19473-0370IP1
`the instant Petition, Google consistently explained how Zydney’s “voice
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`messages”/“voice data” correspond to the claimed “digitized audio file” and
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`Zydney’s “voice container” corresponds to the claimed “instant voice message.”
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`Pet., 17-20, 23, 28-30, 47, 54. PO’s argument does not dispute Petitioner’s
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`mapping, and does not identify any specific inconsistencies with the Board’s
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`decision in IPR2017-01257. Regardless, this Petition and this record plainly
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`provides different analysis that consistently maps Zydney’s elements to the
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`claims—and is supported by different expert testimony and corroborating
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`evidence.
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`Lastly, PO ignores the law that the Board is not bound by a prior institution
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`decision—not even in the same proceeding, much less in a different proceeding.
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`TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016). The Panel
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`assigned to this proceeding is empowered—and, indeed, compelled by due
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`process—to independently evaluate the merits of Google’s Petition based on
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`Google’s arguments/evidence of record, not those of another party.
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`Respectfully submitted,
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`
` /Michael T. Hawkins/
`Michael T. Hawkins, Reg. No. 57,867
`
`Attorney for Petitioner
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`5
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`Dated: February 2, 2018
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`Proceeding No. IPR2017-02080
`Attorney Docket No. 19473-0370IP1
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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
`
`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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