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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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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 IPR2017-02083
`Patent No. 7,535,890
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`PETITIONER’S REPLY
`TO PATENT OWNER’S PRELIMINARY RESPONSE
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`I.
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`Proceeding No. IPR2017-02083
`Attorney Docket No. 19473-0372IP2
`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 ’890 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 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 at least claims 15, 28-34, 37, 39, 62-65, 68, and 70 of
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`the ’890 patent. Previous petitions were all filed by different parties. Google’s
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`Petition also challenges a different subset of claims than any previous petition.
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`None of the earlier-filed petitions challenged claims 16, 24, 26, 30, 39, 58, 60, and
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`70 of the ’890 patent, a fact that “weigh[s] overwhelmingly against a discretionary
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`denial.” Weatherford Int’l, LLC v. Packers Plus Energy Servs., Inc., IPR2017-
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`01232, Paper No. 10 at 9-10 (PTAB Oct. 17, 2017). Factors 2, 4, and 5 (relating to
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`Proceeding No. IPR2017-02083
`Attorney Docket No. 19473-0372IP2
`the timing and substance of a follow-on petition) do not tip the balance against
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`institution because this Petition is not a follow-on petition (e.g., Google has not
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`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 proceedings
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`involved different art and/or issues. With respect to earlier petitions relying on
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`Zydney, where institution was denied, those denials were based on Facebook’s
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`analysis of Zydney rather than any defect in Zydney itself. Regardless, those
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`institution decisions issued after Google filed this Petition, meaning they never
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`provided a substantive “roadmap” for the instant Petition. Finally, factors 6 and 7
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`“do not weight significantly for or against” exercising discretion to deny
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`institution, as held by the Board under similar facts. Fisher & Paykel Healthcare
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`Ltd. v. ResMed Ltd., 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. The
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`PO’s preliminary response (“POPR”) ignores the fact that (1) Zydney was not
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`previously before the Examiner in a reexamination, and that (2) the Board has not
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`previously considered how Zydney applies to at least claims 16, 24, 26, 30, 39, 58,
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`60, and 70. See TCL Corp. at pp. 6-9. The Board has recognized when, as here, a
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`“case presents a different Petitioner challenging claims that have not been
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`Attorney Docket No. 19473-0372IP2
`challenged previously,” that “those facts weigh overwhelmingly against a
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`discretionary denial of [a] proceeding.” Weatherford Int’l, IPR2017-01232, Paper
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`No. 10 at pp. 9-10; see also Unified Patents Inc. v. Silver State Intellectual Tech.,
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`Inc., IPR2017-01198, Paper 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 the 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 that litigation
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`activities among co-defendants “are not suggestive of control” or an RPI
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`Proceeding No. IPR2017-02083
`Attorney Docket No. 19473-0372IP2
`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 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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`III. OTHER BOARD DECISIONS BASED ON ZYDNEY DO NOT
`COMPEL DENIAL OF INSTITUTION HERE
`PO’s “substantive” arguments are premised on institution denials addressing
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`different arguments/petitions filed by different parties—i.e., IPR2017-01523, -
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`01524, -01257. Each of the cited decisions issued after Google filed this Petition,
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`and PO’s arguments based on these decisions introduce new issues that Google
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`could not have addressed in the Petition.
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`First, the cited institution decisions do not point to fault in Zydney, but
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`rather to another petitioner’s (Facebook’s) allegedly inconsistent mapping of
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`Zydney’s elements to the claim elements. See, e.g., IPR2017-01524, Paper 7, 10-
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`14 (PTAB Dec. 4, 2017). This Petition and this record plainly provides different
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`analysis that consistently maps Zydney’s elements to the claims—and is supported
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`by different expert testimony and corroborating evidence.
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`Proceeding No. IPR2017-02083
`Attorney Docket No. 19473-0372IP2
`Second, contrary to PO’s assertions, this Petition does not copy unexplained
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`inconsistencies from other petitions with respect to the mapping of Zydney’s voice
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`container to the claimed “instant voice message.” In fact, this mapping is
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`established early on in the Petition’s analysis of the Challenged Claims and is
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`maintained throughout. See Pet., 23 (“Thus, Zydney’s ‘voice containers’ are the
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`claimed ‘instant voice messages.’”). Moreover, unlike in Facebook’s petitions, the
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`mapping here is reinforced by thorough explanation and evidence presented by the
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`Petition and Dr. Paul Min’s declaration. See Pet., 22-25; GOOGLE1003, ¶¶67-69
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`(testifying that “Zydney’s voice containers are instant voice messages”) ¶¶103-
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`104 (“A POSITA would have recognized that these voice containers are audio
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`files”). Again, such testimony, evidence, and explanation is not of record in any of
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`the earlier proceedings referenced in the POPR.
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`Third, PO incorrectly argues that a different result in this proceeding would
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`amount to “second-guess[ing]” by the Board. See POPR, 25. PO ignores the law
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`that the Board is not bound by a prior institution decision—not even in the same
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`proceeding, much less in an entirely different proceeding. See TriVascular, Inc. v.
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`Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016). The Panel assigned to this
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`proceeding is empowered—and, indeed, compelled by due process—to
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`independently evaluate the merits of Google’s Petition based on Google’s
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`arguments/evidence of record, not those of another party.
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`Dated: February 2, 2018
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`Proceeding No. IPR2017-02083
`Attorney Docket No. 19473-0372IP2
`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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`6
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`Proceeding No. IPR2017-02083
`Attorney Docket No. 19473-0372IP2
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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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