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`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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`UNIFIED PATENTS, LLC
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`Petitioner
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`- vs. -
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`FALL LINE PATENTS, LLC
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`Patent Owner
`———————
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`IPR2018-00043
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`U.S. Patent 9,454,748
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`PETITIONER’S REPLY IN SUPPORT OF ITS RENEWED
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`MOTION TO EXPUNGE
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`Petitioner’s Reply ISO Renewed Motion to Expunge
`IPR2018-00043 (U.S. Patent 9,454,748)
`None of the arguments in Patent Owner’s Opposition (“Opp.”, Paper 51) to
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`Petitioner’s Renewed Motion to Expunge (“Motion”, Paper 50) suggest denial of
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`the Motion is appropriate, and the Board should grant Petitioner’s Motion.
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`First, with respect to the information made public in filings before the
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`Federal Circuit, Petitioner submits herewith the portions of the Joint Appendix that
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`correspond to Paper No. 30 (as Exhibit 1031), Paper No. 31 (as Exhibit 1032), and
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`Exhibit 2009 (as Exhibit 1033). This submission moots Patent Owner’s first
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`argument, and addresses the Board’s instruction regarding expunging “Papers 30
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`and 31 and Exhibit 2009 in light of the appellate record” — the Board may (at its
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`preference) expunge the redacted Papers 30–31 and Exhibit 2009 (i.e., Papers 37–
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`38 and Exhibit 1029) and replace those documents with the documents submitted
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`herewith.
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`Second, Petitioner has met its burden to show expungement is appropriate.
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`Patent Owner’s cited cases (Opp., p. 2) both address motions to seal, not motions
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`to expunge. The Board has already granted motions to seal Petitioner’s
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`confidential information, and those motions are no longer at issue. Patent Owner
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`points to no authority suggesting that a motion to expunge must re-argue the
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`requirements of a motion to seal, and Patent Owner’s argument is, in effect, a
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`belated opposition to the motions to seal, which it did not oppose at the outset, nor
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`did it file a request for reconsideration.
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`1
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`Petitioner’s Reply ISO Renewed Motion to Expunge
`IPR2018-00043 (U.S. Patent 9,454,748)
`Third, while Patent Owner allegedly “has not waived its objections to
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`expungement,” its new characterization that it “did not oppose the initial motions”
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`and “never agreed that the documents were in fact confidential and properly
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`sealed” contradicts the record. Opp., pp. 2–3. Patent Owner ignores that Patent
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`Owner itself moved to seal Paper 30 and Exhibit 2009 (see Paper 29, p. 1: “Patent
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`Owner’s Motion to Seal”), and Patent Owner did not oppose Petitioner’s motion to
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`seal Paper 31. See Paper 43, p. 2 (“Patent Owner did not timely file an opposition
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`to [Petitioner’s Motion to Seal].”) It did not make any objections known when
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`relevant, nor did it ever assert that sealing was only “temporarily” proper; its four-
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`year belated attempt to object to sealing cannot be condoned. See 37 C.F.R. §
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`42.25(b) (“A party should seek relief promptly after the need for relief is
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`identified.”). Indeed, as the Board found in granting the Motions to Seal the
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`Confidential Documents,
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`the Board acknowledged
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`that “the parties had
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`represented that the papers and exhibits they sought to seal contain confidential,
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`sensitive business information that has not been published or made public.” Paper
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`43, pp. 1–2 (emphasis added). If that characterization was incorrect, it was
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`incumbent on Patent Owner to timely request rehearing or reconsideration of that
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`decision, which it did not. See 37 C.F.R. § 42.71(d) (“A party dissatisfied with a
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`decision may file a single request for rehearing….Any request must be filed: (1)
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`Within 14 days of the entry of a non-final decision….”).
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`2
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`Petitioner’s Reply ISO Renewed Motion to Expunge
`IPR2018-00043 (U.S. Patent 9,454,748)
`Fourth, contrary to Patent Owner’s argument, the public indeed has access
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`to the record that led to the ultimate decision in this proceeding, and Patent
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`Owner’s argument is nonsensical. Commissioner Hirshfeld’s decision denying
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`Patent Owner’s Request for Director Review ordered “that the Patent Trial and
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`Appeal Board’s Final Written Decision in this case is the final decision of the
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`agency.” Paper 49, p. 2. That Final Written Decision, as Petitioner argued in its
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`Renewed Motion to Seal, did not rely upon or cite any confidential information—it
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`had no need to. Patent Owner’s argument which relied upon the confidential
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`information was not considered, as the Board found it was a “belated challenge”
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`that Patent Owner “made no effort to timely raise.” Paper 34, pp. 17–18; see also
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`Unified Patents, LLC v. Electronics and Telecommunications Research Institute, et
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`al., IPR2020-01048, Paper 60 (PTAB Feb. 14, 2023) (granting motion to expunge
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`similar confidential documents, in part, because “the confidential material has
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`nothing to do with the scope and content of the prior art, differences between the
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`claimed subject matter and the prior art, ordinary skill in the art, any objective
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`evidence of nonobviousness, or the priority date” of the subject patent” “or any
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`prior art reference,” and because “none of the confidential material is cited or
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`relied on in the Final Written Decision.”)
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`Fifth, and finally, Patent Owner argues that Petitioner’s request is
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`premature, because “Patent Owner intends to file a petition” seeking Supreme
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`3
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`Petitioner’s Reply ISO Renewed Motion to Expunge
`IPR2018-00043 (U.S. Patent 9,454,748)
`Court review. Opp., pp. 3–4. The Board’s order set a deadline for Petitioner’s
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`renewed Motion, and Petitioner timely filed according to that instruction. See
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`Paper 44, p. 3. If Patent Owner files a petition for certiorari, the Board may hold
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`Petitioner’s Renewed Motion in abeyance until the resolution of Patent Owner’s
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`petition, and decide the Renewed Motion at that time. See 37 C.F.R. § 42.71(a)
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`(“The Board may take up petitions or motions for decision in any order, may grant,
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`deny, or dismiss any petition or motion, and may enter any appropriate order.”).
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`Such a resolution would “secure the just, speedy, and inexpensive resolution” of
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`the proceeding, consistent with the regulatory framework of these proceedings (see
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`37 C.F.R. § 42.1); by contrast, denying the Renewed Motion (as Patent Owner
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`urges) would require an additional round of duplicative briefing, unnecessarily
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`burdening the Board and the parties.
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`Accordingly, for the reasons set forth above and in Petitioner’s Renewed
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`Motion to Expunge, the Board should grant Petitioner’s Renewed Motion and
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`expunge Papers 30 and 31 and Exhibit 2009. In the alternative, the Board should
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`hold Petitioner’s Renewed Motion in abeyance pending Supreme Court review, if
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`Patent Owner seeks such review.
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`4
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`March 7, 2023
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`Petitioner’s Reply ISO Renewed Motion to Expunge
`IPR2018-00043 (U.S. Patent 9,454,748)
`Respectfully submitted,
`
`
`/Raghav Bajaj/
`Raghav Bajaj
`Counsel for Petitioner
`Registration No. 66,630
`HAYNES AND BOONE, LLP
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`5
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`Petitioner’s Reply ISO Renewed Motion to Expunge
`IPR2018-00043 (U.S. Patent 9,454,748)
`PETITIONER’S EXHIBIT LIST
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`EX1001
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`U.S. Patent 9,454,748 to J. David Payne
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`EX1002
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`Prosecution File History of U.S. Patent 9,454,748 (“’748 PH”)
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`EX1003
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`Prosecution File History of U.S. Patent 7,822,816 (“’816 PH”)
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`EX1004
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`U.S. Patent 7,822,816 to J. David Payne
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`EX1005
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`Declaration of A.L. Narasimha Reddy
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`EX1006
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`U.S. Patent 6,154,745 to Kari et al. (“Kari”)
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`EX1007
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`HTML 4 Unleashed by Darnell et al. (“Darnell”)
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`EX1008
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`Declaration of David Bader
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`EX1009
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`U.S. Patent 6,380,928 to Todd (“Todd”)
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`EX1010
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`U.S. Patent 6,381,603 to Chan et al. (“Chan”)
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`EX1011 Memorandum Opinion and Order, Macrosolve, Inc. v. Antenna
`Software, Inc. et al., 6:11-cv-287 MHS-KNM (E.D. Tex. Jan. 21,
`2014) (“’816 Markman Order”)
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`EX1012
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`Institution Decision, IPR2014-00140 (“’816 Institution”)
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`EX1013 Microsoft Computer Dictionary, 5th ed. (excerpt)
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`EX1014
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`U.S. Patent 6,222,483 to Twitchell et al. (“Twitchell”)
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`EX1015
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`U.S. Patent 5,043,736 to Darnell et al. (“Darnell ’736”)
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`EX1016
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`Dictionary of Computer Science (excerpt)
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`EX1017
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`Dictionary of Scientific and Technical Terms, 4th ed. (excerpt)
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`EX1018
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`Goran M. Djuknic & Robert E. Richton, Geolocation and Assisted
`GPS, IEEE Computer, Vol. 34 no. 2, 123-125 (Feb. 2001)
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`6
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`
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`EX1019
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`EX1020
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`Petitioner’s Reply ISO Renewed Motion to Expunge
`IPR2018-00043 (U.S. Patent 9,454,748)
`Robert S. Anthony, The Ultimate Personal Peripheral, PC Magazine,
`Vol. 17 no. 5, 100-124 (Mar. 10, 1998)
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`Johan Hjelm, Creating Location Services for the Wireless Web:
`Professional Developer’s Guide (2002).
`
`EX1021
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`Reply Declaration of A.L. Narasimha Reddy (“Reddy Reply Decl.”)
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`EX1022
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`EX1023
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`Ira Kalb, Wireless in Europe, May 2001, available at
`https://web.archive.org/web/20011215142247/http://www-
`106.ibm.com/developerworks/library/wi-eur/index.html, last retrieved
`August 16, 2018 (“Kalb”).
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`HTML 4.0 Guidelines for Mobile Access, W3C Note – 15 March
`1999, https://web.archive.org/web/20000823062148/
`http://www.w3.org:80/TR/1999/NOTE-html40-mobile-19990315/,
`last retrieved September 6, 2018 (“HTML 4.0 Note”).
`
`EX1024
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`Timothy Berners-Lee, Hypertext Markup Language – 2.0, RFC 1866,
`https://tools.ietf.org/pdf/rfc1866.pdf, last retrieved September 6, 2018
`(“RFC 1866”).
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`EX1025
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`Reddy Declaration in IPR2014-00140.
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`EX1026
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`Declaration of Kevin Jakel
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`EX1027
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`Unified Patents Voluntary Interrogatories
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`EX1028
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`Jakel Deposition Transcript Errata Sheet
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`EX1029
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`Redacted Version of Exhibit 2009 (Jakel Deposition Transcript)
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`EX1030
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`Fall Line Patents, LLC v. Unified Patents, LLC, Appeal No. 19-1956,
`slip op. (Fed. Cir. Dec. 19, 2022)
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`EX1031
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`Second Redacted Version of Paper 30
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`EX1032
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`Second Redacted Version of Paper 31
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`EX1033
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`Second Redacted Version of Exhibit 2009
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`7
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`Petitioner’s Reply ISO Renewed Motion to Expunge
`IPR2018-00043 (U.S. Patent 9,454,748)
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Unified Patents, LLC
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`Petitioner
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`§
`§
`§
`§
`§
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`Petition for Inter Partes Review
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`IPR2018-00043
`U.S. Patent No. 9,454,748
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`
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.6, that service
`was made on the Patent Owner as detailed below.
`Date of service March 7, 2023
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`Manner of service Electronic Service by E-Mail
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`Documents served Petitioner’s Reply in Support of Renewed Motion to
`Expunge
`Exhibits 1031–1033
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`Persons served Terry L. Watt (terry.watt@crowedunlevy.com)
`Matthew J. Antonelli (matt@ahtlawfirm)
`Michael E. Ellis (michael@ahtlawfirm.com)
`Larry D. Thompson, Jr. (larry@ahtlawfirm.com)
`Zachariah Harrington (zac@ahtlawfirm.com)
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`/Raghav Bajaj/
`Raghav Bajaj
`Counsel for Petitioner
`Registration No. 66,630
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`
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`8
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