RESPONSE TO STATEMENT OF RELEVANT FACTS
`
`A. Litigation History
`
`1. The ’449 patent is one of five Tasler Patents in a patent family that has been
`
`the subject of two separate litigation campaigns, one of which has been going on
`
`for more than a decade. The Tasler Patents were acquired by Papst Licensing
`
`GmbH & Co. KG (Papst) in 2006. Immediately after acquiring the Tasler Patents,
`
`Papst began accusing the world’s leading digital camera manufacturers of
`
`infringement. See In re Papst Licensing Digital Camera Patent Litig., 778 F. 3d
`
`1255, 1260 (Fed. Cir. 2015) (Ex. 1011). Casio filed the first declaratory judgment
`
`action in October 2006 in Washington, D.C. See id. After the District Judge
`
`sanctioned Papst for violating her discovery orders, Papst embarked on a forum
`
`shopping campaign to manipulate the forums in which it enforced its patents and
`
`circumvent the venue where it was sanctioned for misconduct. See id.; see also In
`
`re Papst Licensing GmbH & Co. KG Litig., 967 F. Supp. 2d 48, 61-62 (D.D.C.
`
`2013) (“Through its experienced patent lawyers, Papst blatantly disregarded the
`
`Sixth PPO. The Court took Papst to task for obfuscating its infringement theories,
`
`finding that Papst had done so intentionally as part of its strategy to extend this
`
`litigation excessively, since Papst’s business is litigation.”). Papst commenced
`
`filing lawsuits across the country and then asked the Judicial Panel on Multidistrict
`
`Litigation (JPML) to geographically “centralize” all those cases. In re Papst
`Papst Licensing GmbH & Co., KG.
`Petitioner – Canon, Inc., et al.
`Patent Owner - Papst Licensing GmbH & Co., KG.
`IPR2018-00410
`EXH. 2002
`
`1
`
`
`
`A. Litigation History
`
`1. The ’449 patent is one of five Tasler Patents in a patent family that has been
`
`the subject of two separate litigation campaigns, one of which has been going on
`
`for more than a decade. The Tasler Patents were acquired by Papst Licensing
`
`GmbH & Co. KG (Papst) in 2006. Immediately after acquiring the Tasler Patents,
`
`Papst began accusing the world’s leading digital camera manufacturers of
`
`infringement. See In re Papst Licensing Digital Camera Patent Litig., 778 F. 3d
`
`1255, 1260 (Fed. Cir. 2015) (Ex. 1011). Casio filed the first declaratory judgment
`
`action in October 2006 in Washington, D.C. See id. After the District Judge
`
`sanctioned Papst for violating her discovery orders, Papst embarked on a forum
`
`shopping campaign to manipulate the forums in which it enforced its patents and
`
`circumvent the venue where it was sanctioned for misconduct. See id.; see also In
`
`re Papst Licensing GmbH & Co. KG Litig., 967 F. Supp. 2d 48, 61-62 (D.D.C.
`
`2013) (“Through its experienced patent lawyers, Papst blatantly disregarded the
`
`Sixth PPO. The Court took Papst to task for obfuscating its infringement theories,
`
`finding that Papst had done so intentionally as part of its strategy to extend this
`
`litigation excessively, since Papst’s business is litigation.”). Papst commenced
`
`filing lawsuits across the country and then asked the Judicial Panel on Multidistrict
`
`Litigation (JPML) to geographically “centralize” all those cases. In re Papst
`Papst Licensing GmbH & Co., KG.
`Petitioner – Canon, Inc., et al.
`Patent Owner - Papst Licensing GmbH & Co., KG.
`IPR2018-00410
`EXH. 2002
`
`1
`
`
`
`Licensing GmbH & Co. KG Patent Litig., MDL No. 1880, Dkt. No. 22, 528 F.
`
`Supp. 2d 1357 (J.P.M.L. Nov. , 2007). The JPML then instituted MDL No. 1880,
`
`ordered that it remain in Washington, D.C., and assigned it to District Judge
`
`Rosemary Collyer. Id. Later “tag-along” actions were eventually added to the
`
`MDL as a “second wave.”
`
`RESPONSE: Admitted that the ’449 patent is one of five Tasler Patents, the
`
`subject of two litigation campaigns, and was acquired by Papst Licensing GmbH &
`
`Co. KG (Papst) in 2006. Admitted that Casio filed the first declaratory judgment
`
`action in October 2006 in Washington, D.C. Remaining statements are denied as
`
`untrue or on the basis that they are not facts, but rather presented as argument.
`
`2. At that time, the MDL concerned only the ’449 patent and the earlier-issued
`
`U.S. Patent No. 6,470,399 (the ’399 patent). See In re Papst, 778 F. 3d at 1258.
`
`The MDL case proceeded through claim construction, with a Markman hearing
`
`held over three days, and Judge Collyer ultimately granted summary judgment of
`
`noninfringement on several grounds. Id. On appeal, the U.S. Court of Appeals for
`
`the Federal Circuit reversed Judge Collyer’s claim construction in several respects
`
`and vacated the judgment of noninfringement. Id. The MDL case is now on
`
`remand and has been re-assigned to the Hon. Randolph Moss. In re Papst
`
`Licensing GmbH & Co. KG Patent Litig., Case No. 1:07-mc-00493-RDM, Dkt.
`
`No. 632 (July 21, 2016).
`
`2
`
`
`
`RESPONSE: Admitted.
`
`3. Despite the MDL case pending in Washington, D.C., in July 2015, Papst
`
`filed seven new complaints in the U.S. District Court for the District of Delaware
`
`accusing several of the parties already in the MDL of infringing U.S. Patents Nos.
`
`8,504,746 and 8,966,144 (the ’746 and ’144 patents, respectively). In re: Papst
`
`Licensing Digital Camera Patent Litig., MDL No. 1880, Dkt. No 93 (JPML Oct.
`
`13, 2015). Over Papst’s objection, the JPML transferred six of those cases to the
`
`MDL case pending in Washington, D.C. Id.
`
`RESPONSE: Admitted that Papst filed seven new complaints in the U.S.
`
`District Court for the District of Delaware accusing several of the parties already in
`
`the MDL of infringing U.S. Patents Nos. 8,504,746 and 8,966,144. Admitted that
`
`the JPML transferred six of those cases to the MDL case pending in Washington,
`
`D.C. Remaining statements are denied as untrue or on the basis that they are not
`
`facts, but rather presented as argument.
`
`4. On November 30, 2015, Papst filed six new complaints in the Eastern
`
`District of Texas accusing manufacturers of mobile phones and tablets of
`
`infringing the Tasler Patents. See Papst Licensing GmbH & Co. KG v. Apple, No.
`
`6:15-cv-01095, 2017 WL 897172, at *1 (E.D. Tex. Mar. 7, 2017).
`
`RESPONSE: Admitted.
`
`B. Proceedings Before the Board
`
`
`
`3
`
`
`
`5. Papst’s assertion of the ’399 and ’449 patents against the digital camera
`
`manufacturers started long before the America Invents Act was enacted. Although
`
`they did not have the ability to file petitions for inter partes review challenging the
`
`claims of the ’399 and ’449 patents because of the 35 U.S.C. §315(b) bar, many of
`
`the camera manufacturers filed petitions for inter partes review challenging the
`
`more recently asserted ’746 and ’144 patents. The Board instituted trials, and on
`
`December 11, 2017, entered eight Final Written Decisions finding that all
`
`instituted claims were unpatentable. See IPR2016-01199, -01200, -01211, -01212,
`
`-01213, -01214, -01216, -01225.
`
`RESPONSE: Admitted that the Board instituted trials, and on December 11,
`
`2017, entered eight Final Written Decisions finding that all instituted claims were
`
`unpatentable. Remaining statements are denied as untrue or on the basis that they
`
`are not facts, but rather presented as argument.
`
`6. Commencing June 2016, the defendants in the Texas actions began filing
`
`petitions for inter partes review. In total, 45 petitions (nine of which were filed
`
`with joinder motions) for inter partes review have been filed challenging all five
`
`Tasler Patents. The Board instituted trials on all five patents. At present, there are
`
`ten pending IPRs that have not yet proceeded to Final Written Decision. Final
`
`Written Decisions are due in each of these proceedings between February and July
`
`of 2018.
`
`
`
`4
`
`
`
`RESPONSE: Admitted that commencing June 2016, the defendants in the
`
`Texas actions began filing petitions for inter partes review. Admitted that 45
`
`petitions for inter partes review were filed and that the board instituted trials on all
`
`five patents. Denied that there are ten pending IPR’s remaining and the dates in
`
`which final written decisions are expected. Remaining statements are denied as
`
`untrue or on the basis that they are not facts, but rather presented as argument.
`
`7. IPR2017-00415, concerning the ’449 patent, was instituted on May 17, 2017
`
`based on a petition filed by Huawei, LG, and ZTE. On June 16, 2017, Camera
`
`manufacturer Olympus, who had been litigating the ’449 patent since 2007 in the
`
`MDL action, filed a motion for joinder with IPR2017-00415. Olympus Corp. v.
`
`Papst Licensing GmbH & Co. KG, IPR2017-01617, Paper 3 (PTAB June 16,
`
`2017). On October 17, 2017, Olympus’ motion was granted. Olympus Corp. v.
`
`Papst Licensing GmbH & Co. KG, IPR2017-01617, Paper 7 (PTAB Oct. 17,
`
`2017).
`
`RESPONSE: Admitted.
`
`8. Recently, Papst apparently reached settlements with Huawei, LG, and ZTE.
`
`The civil actions against Huawei and LG were dismissed on August 11, 2017 and
`
`November 27, 2017, respectively, see Papst Licensing GmbH &Co. KG v. Apple,
`
`No. 6:15-cv-01905, Dkt. Nos. 584, 674 (E.D. Tex.), and those two parties have
`
`been terminated from IPR2017-00415. Papst and ZTE informed the District Court
`
`
`
`5
`
`
`
`that they reached a settlement in principle resulting in a stay of their litigation, but
`
`for several months, they have filed motions seeking a series of extensions of the
`
`stay to permit them to finalize a written settlement agreement. See Papst Licensing
`
`GmbH &Co. KG v. Apple, No. 6:15-cv-01905, Dkt. Nos. 658, 671, 675, 686 (E.D.
`
`Tex.). No Motion to Terminate has yet been filed in IPR2017-00415 as to ZTE.
`
`RESPONSE: Admitted that settlements were reached with Huawei and LG and
`
`that both entities were dismissed from the District Court and IPR matters. Denied
`
`that a Motion to Terminate ZTE has not yet been filed. In fact, on January 8, 2018,
`
`a Motion to Terminate ZTE was filed (IPR2017-00415, Paper 30). On January 18,
`
`2018, the PTAB dismissed ZTE and terminated IPR2017-00415 in its entirety
`
`(IPR2017-00415, Paper 32). Remaining statements are denied as untrue or on the
`
`basis that they are not facts, but rather presented as argument.
`
`9. With Papst having reached a settlement with all petitioners in IPR2017-
`
`00415 except Olympus, and the Board having found all of the challenged claims of
`
`the related ’144 and ’746 patents unpatentable, in an effort to derail IPR2017-
`
`00415 and salvage the ’449 patent, Papst persuaded Olympus to terminate
`
`IPR2017-00415. On December 19, 2017 and December 21, 2017, Papst filed
`
`notices with the District Courts in Texas and Washington, D.C. indicating that
`
`Papst had reached a settlement with Olympus. See In re Papst Licensing GmbH &
`
`Co. KG Patent Litig., MDL No. 1880, Dkt. No. 681 (D.D.C. Dec. 21, 2017); Papst
`
`
`
`6
`
`
`
`Licensing GmbH & Co. KG v. Apple, No. 6:15-cv-01905, Dkt. No. 679 (E.D. Tex.
`
`Dec. 19, 2017).
`
`RESPONSE: Admitted that on December 19, 2017 and December 21, 2017,
`
`Papst filed notices with the District Courts in Texas and Washington, D.C.
`
`indicating that Papst had reached a settlement with Olympus. Remaining
`
`statements are denied as untrue or on the basis that they are not facts, but rather
`
`presented as argument.
`
`10. Although Movants have not seen the settlement agreement between Papst
`
`and Olympus, Movants suspect that the settlement involves, at best, a small
`
`payment by Olympus to entice Olympus to accept and thereby terminate IPR2017-
`
`00415. Terminating IPR2017-00415 would allow Papst to continue its litigation
`
`campaign in the MDL case and the Eastern District of Texas against some of the
`
`largest camera, mobile phone, and table manufacturers in the world.
`
`RESPONSE: Statements are denied as untrue or on the basis that they are not
`
`facts, but rather presented as argument.
`
`
`
`7
`
`
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