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`Paper 8
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UBER TECHNOLOGIES, INC. and
`CHOICE HOTELS INTERNATIONAL, INC.
`Petitioners,
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`v.
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`FALL LINE PATENTS, LLC.
`Patent Owner
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`Case: IPR2018-00535
`Patent 9,454,748 B2
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`Before MICHELLE N. WORMMEESTER, SHEILA F. McSHANE, and JOHN R.
`KENNY, Administrative Patent Judges.
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`PETITIONERS’ RESPONSE TO
`MAY 21, 2018 ORDER BY THE BOARD
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`EXHIBIT LIST
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`Description
`U.S. Patent No. 9,454,748 to Payne (“the ’748 patent”)
`U.S. Patent No. 6,961,586 to Barbosa et al. (“Barbosa”)
`U.S. Patent No. 6,202,023 to Hancock et al. (“Hancock”)
`U.S. Patent No. 6,332,127 to Bandera et al. (“Bandera”)
`Declaration of Kendyl Roman
`Curriculum Vitae of Kendyl Roman
`Excerpted portions of the ’748 patent file history
`Patent Owner’s Infringement Contentions Cover Document
`against Uber Technologies, Inc. and Choice Hotels International,
`Inc.
`Patent Owner’s Infringement Contentions Chart against Uber
`Technologies, Inc.
`Patent Owner’s Infringement Contentions Chart against Choice
`Hotels International, Inc.
`U.S. Patent 7,822,816 (“the ’816 patent”)
`The ’816 patent Institution Decision
`The ’816 patent Claim Construction Order
`U.S. Patent No. 6,381,535 to Durocher (“Durocher”)
`International Patent Application Publication No.
`WO 00/49530 to Parasnis (“Parasnis”)
`Declaration of Jonathan I. Detrixhe
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`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
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`1009
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`1010
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`1011
`1012
`1013
`1014
`1015
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`1016
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`- ii -
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`I.
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`Petitioners Relied Upon the Word Count Provided By Word
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`Petitioners used Word’s word-count feature to count the words in the
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`Petition. When all of the words in Sections I and III-VIII are selected,1 including
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`annotated words to figures in textboxes, Word provides a count of 86 words for
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`Section I and 13,913 words for Sections III-VIII. Ex. 1016 ¶¶ 2-6. Adding 86 to
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`13,913 provides a total count of 13,999—exactly the number Petitioners certified.
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`Petitioners provided Patent Owner a Word version of the Petition to allow it
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`to verify the accuracy of Petitioners’ word count. Patent Owner used a different
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`method to count the words. In particular, Patent Owner based its count on a new
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`Word document formed by deleting everything apart from Sections I and III-VIII.
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`Id. ¶¶ 7-8. Then, Patent Owner invoked Word’s word-count feature without
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`selecting any words. Using this method, Word provides a count of 14,123. Id.
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`After investigating, Petitioners learned that Word did not count 124 words
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`present in textbox annotations to figures, even though these textboxes were
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`selected and Word’s count “[i]nclude[d] textboxes.” Id. ¶¶ 9-10. However, at the
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`time of filing the Petition, Petitioners had no knowledge nor reason to suspect that
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`the count provided by Word omitted these words. Id ¶ 11. 37 C.F.R. § 42.24(d) (“A
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`party may rely on the word count of the word-processing system used to prepare
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`the paper.”); Facebook, Inc. v. Sound View Innov., LLC, IPR2017-01003, Paper 14
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`1 Section II, mandatory notices, is exempt under 37 CFR § 42.24(a).
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`-1-
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`at 6 (P.T.A.B. Sept. 1, 2017) (“When certifying word count, a party need not go
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`beyond the routine word count supplied by their word processing program.”).
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`II. The Only Images in the Petition Are Prior-Art Figures
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`Patent Owner also argues that text in prior-art figures should be included.
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`Paper 6 at 43. Although “excessive cutting and pasting of text as images” can
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`“circumvent[] the applicable word count rules,” Petitioners did not do that. Google
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`Inc. v. Makor Issues & Rights Ltd., IPR2016-01535, Paper 8 at 2 (P.T.A.B. Dec. 1,
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`2016) (emphasis added). Rather, each image in the Petition is a figure from the
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`asserted prior art. Akamai Techs., Inc. v. Limelight Networks, Inc., IPR2016-01001,
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`Paper 6 at 3 (P.T.A.B. Aug. 10, 2016) (“[W]e are not persuaded that the Petition's
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`cutting-and-pasting of drawing figures directly from exhibits of record evidences
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`an effort to circumvent the word count limit.”) (emphasis added).
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`III. Petitioners’ Proposed Remedies
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`The most common remedy is to increase the word count limit for Patent
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`Owner’s Response by an equal number of words. St. Jude Med., LLC v. Snyders
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`Heart Valve LLC, IPR2018-00105, Paper 12 at 5 (P.T.A.B. Apr. 3, 2018) (“[T]he
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`appropriate remedy in our view is to increase the word count limit for Patent
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`Owner’s Responses should trial be instituted in any of these proceedings.”; Apotex
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`Inc. v. Novartis AG, IPR2017-00854, Paper 21 at 4 (P.T.A.B. Aug. 30, 2017)
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`(same); EMC Corp. v. Intellectual Ventures I LLC, IPR2017-00429, Paper 11 at
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`- 2 -
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`28-29 (P.T.A.B. July 5, 2017) (same). In other instances, the Board has warned the
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`violating party and ordered strict compliance with the word-count limit in the
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`future. Panduit Corp. v. Corning Optical Commc’ns LLC, IPR2017-00528, Paper 7
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`at 20 n.3 (P.T.A.B. May 30, 2017); IPR2017-01003, Paper 14 at 6-8. Lastly, in a
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`decision involving a repeat violator of word count limits, the Board has ordered a
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`correction to bring the Petition into compliance. Arctic Cat, Inc. v. Polaris Indus.,
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`Inc., IPR2017-00433, Paper 11 at 3 (P.T.A.B. May 31, 2017).
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`Patent Owner cites no decision providing the unprecedented relief of
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`denying a Petition. To the contrary, in response to another word-count allegation
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`brought by Patent-Owner’s same counsel,2 the Board recently observed that “[w]e
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`are not aware of any Board case dismissing a petition because it exceeded the word
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`count limit.” IPR2018-00105, Paper 12 at 4, 7.
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`For the above reasons, Petitioners request that the Board accept the Petition
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`and order a remedy similar to one it has imposed in the cases discussed above.
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`2 Petitioners apologize for the “waste [of] judicial resources on this minor matter.”
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`IPR2017-00854, Paper 21 at 4 (allowing Patent Owner an additional 154 words for
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`its Response). If Patent Owner had raised the issue with Petitioners, Petitioners
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`would have attempted to work out an agreed remedy. Id. (“The parties are strongly
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`encouraged to work these type of minor issues out among themselves ….”).
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`- 3 -
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`Dated: May 28, 2018
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`Respectfully submitted,
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`/s/ Jonathan I. Detrixhe
`Jonathan I. Detrixhe
`Registration No. 68,556
`Reed Smith LLP
`101 Second Street #1800
`San Francisco, CA 94105
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`Counsel for Petitioners
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`- 4 -
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`CERTIFICATION OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned hereby
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`certifies that the foregoing Petitioner’s Response to May 21, 2018 Order By The
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`Board was served on May 28, 2018 upon the counsel of record for the Patent
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`Owner.
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`Date: May 28, 2018
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`Respectfully submitted,
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`/s/ Jonathan I. Detrixhe
`Jonathan I. Detrixhe
`Registration No. 68,556
`Attorney for Petitioners
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`- 5 -
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