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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`__________________
`
`
`Case IPR2017-02085
`Patent No. 8,199,747
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`______________________
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`
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`PETITIONER’S REPLY
` TO PATENT OWNER’S PRELIMINARY RESPONSE
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`
`
`
`
`
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`__________________
`
`
`GOOGLE LLC,
`Petitioner,
`
`
`v.
`
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`
`
`__________________
`
`
`Case IPR2017-02085
`Patent No. 8,199,747
`
`______________________
`
`
`
`PETITIONER’S REPLY
` TO PATENT OWNER’S PRELIMINARY RESPONSE
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`
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`I.
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`Proceeding No. IPR2017-02085
`Attorney Docket No. 19473-0373IP1
`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 ’747 patent” (Petition, 7-8), but Google now addresses these decisions.
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`The General Plastic factors 1-7 do not weigh in favor of 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 ’747 patent. Google’s Petition also challenges a
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`different subset of claims than any previous petition. None of the earlier-filed
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`petitions challenged claims 4-11 and 14-15 of the ’747 patent, a fact that
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`“weight[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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`follow-on petition) do not tip the balance against institution because this Petition is
`1
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`Proceeding No. IPR2017-02085
`Attorney Docket No. 19473-0373IP1
`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 weights in favor of
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`institution because the IPR2017-01257 and IPR2017-01799 proceedings involved
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`different prior art combinations and different issues. Neither of those cases
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`involved the Gralla reference or the grounds relied upon in this petition. Indeed,
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`IPR2017-01257, which relied on Zydney, was denied based on Facebook’s
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`analysis of Zydney rather than any defect in Zydney itself. Regardless, that
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`decision issued after Google filed this Petition, meaning it never provided a
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`substantive “roadmap” for the instant Petition. Finally, factors 6 and 7 “do not
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`weight significantly for or against” exercising discretion to deny institution, as held
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`by the 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. 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, (2) the Board has not
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`previously considered how Zydney (or Gralla) applies to at least claims 4-11 and
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`14-15, and (3) the present Petition cites different/new prior art combinations. See
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`TCL Corp. at pp. 6-9. The Board has recognized when, as here, a “case presents a
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`2
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`Proceeding No. IPR2017-02085
`Attorney Docket No. 19473-0373IP1
`different Petitioner challenging claims that have not been challenged previously,”
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`that “those facts weigh overwhelmingly against a discretionary denial of [a]
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`proceeding.” Weatherford Int’l, IPR2017-01232, Paper No. 10 at pp. 9-10; 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 meaningful due process
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`interest to be heard on the merits, and the Board should not wrongly deprive
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`Google of such 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” lack any evidence and are 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. IPR2017-02085
`Attorney Docket No. 19473-0373IP1
`relationship. Intel Corp. v. Alacritech, Inc., IPR2017-01410, Pap. 8 at 15 (PTAB
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`Nov. 21, 2017). Finally, even if PO’s false assumptions were true, they would not
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`lead to 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 and (for the most part) a
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`different patent (US 7,535,890)—i.e., IPR2017-01257, -01799, -01523, -01524.
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`PO’s arguments regarding the cited decisions issued after Google filed this
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`Petition, and PO’s arguments based on these decisions introduce new issues that
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`Google 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., IPR2017-01257, Paper 8, 16-
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`19 (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.
`4
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`Proceeding No. IPR2017-02085
`Attorney Docket No. 19473-0373IP1
`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., 16 (“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., 16-18, n.1; GOOGLE1003, ¶¶46-
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`50 (testifying that “Zydney’s voice containers are instant voice messages”
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`provided in the form of “audio files”). Again, such testimony, evidence, and
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`explanation, all of which PO fails to even mention, is not of record in any of the
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`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, 28. 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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`5
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`Dated: February 2, 2018
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`Proceeding No. IPR2017-02085
`Attorney Docket No. 19473-0373IP1
`Respectfully submitted,
`
`
`
`
` /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. IPR2017-02085
`Attorney Docket No. 19473-0373IP1
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`CERTIFICATE OF SERVICE
`
`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:
`
`
`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
`
`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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