Trials@uspto.gov
`571 272 7822
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`Paper 9
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________
`UBER TECHNOLOGIES, INC. and
`CHOICE HOTELS INTERNATIONAL, INC.
`Petitioners
`v.
`FALL LINE PATENTS, LLC
`Patent Owner
`__________________________
`CASE IPR2018-00535
`PATENT 9,454,748
`________________________
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`PATENT OWNER’S RESPONSE TO MAY 21, 2018 ORDER BY THE
`COURT and DECLARATION OF JONATHAN DETRIXHE
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`571 272 7822
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`Paper 9
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________
`UBER TECHNOLOGIES, INC. and
`CHOICE HOTELS INTERNATIONAL, INC.
`Petitioners
`v.
`FALL LINE PATENTS, LLC
`Patent Owner
`__________________________
`CASE IPR2018-00535
`PATENT 9,454,748
`________________________
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`PATENT OWNER’S RESPONSE TO MAY 21, 2018 ORDER BY THE
`COURT and DECLARATION OF JONATHAN DETRIXHE
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`I.
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`PETITIONERS DO NOT DENY THAT THE PETITION IS OVER
`THE WORD LIMIT NOR EXPLAIN WHY THE CERTIFICATION
`WAS “APPROXIMATE”
`Petitioners’ Brief1 and accompanying declaration do not dispute that: (1)
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`Petitioners exceeded the word limit; (2) the certification is carefully worded so as
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`to not amount to an actual certification of compliance with the word limit; and (3)
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`a count of 13,999 was obtained by selecting only certain portions of the document.
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`Petitioners also fail to acknowledge the full extent of the problem.
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`Petitioners do not acknowledge they excluded not only certain annotations they
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`added to the figures, but also (1) the cover page, (2) the signature block, and (3) the
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`words in the pasted images. By excluding these portions, Petitioners undercounted
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`by at least 786 words, not merely the 124 words that appear in the annotations.
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`Petitioners do not attempt to explain (or even mention) the use of
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`“approximately” when certifying the word count of the Petition. The use of
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`“approximately” in the certification—along with a certified number that was only
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`one below the limit—is what called Patent Owner’s attention to this issue. It
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`remains unclear why Petitioners certified the “approximate” word count, rather
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`than the actual word count, as required by C.F.R. § 42.24(d) (“Any paper whose
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`length is specified by type-volume limits must include a certification stating the
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`number of words in the paper.”) (emphasis added).
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`1 Petitioners’ Response to May 21, 2018 Order by the Board, Paper 8.
`1
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`Notably, other petitions filed by Petitioners’ counsel of record include
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`certifications specifying an exact word count, in contrast with the “approximate”
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`certification included in this petition. See, e.g., General Electric Co. v. Univ. of
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`Virginia Patent Found., IPR2017-00109, Paper 1 at 60 (Oct. 19, 2016) (“[T]he
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`undersigned hereby certifies that the word count … totals no more than 13,997”);
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`Uber Technologies, Inc. v. X One, Inc., IPR2017-01264, Paper 1 at 72 (April 11,
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`2017) (“I certify that this PETITION … comprises 13,955 words.”).
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`II. THE PROPOSED “REMEDY” IS NO PENALTY
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`Petitioners’ proposed remedies, if adopted, would mean that failing to
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`adhere to the Board’s rules is of no significant consequence. Petitioners’ proposals
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`are, at worst, a minor inconvenience to Petitioners and would not deter future
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`violations of the word-count or other rules because there is essentially no
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`downside. Adopting one of the proposals would signal that failing to adhere to the
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`rules risks only a proverbial “slap on the wrist” and only if caught.2
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`Petitioners argue there is no precedent for denying their Petition because of
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`the word-count violation, but the language of 37 C.F.R. § 42.24(a)(2) is
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`mandatory, not permissive: “Petitions to institute a trial must comply with the
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`2 Patent Owner does not agree that following the Board-mandated rules is a “minor
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`matter” that is a “waste [of] judicial resources,” and Petitioners’ reference as such
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`further suggests that meaningful enforcement is necessary to compel adherence.
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`2
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`stated word counts” (emphasis added). This Board has made clear that “strict
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`attention should be given to the mandated word count certification as it requires an
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`attorney certification, and we will consider appropriate sanctions for violations of
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`our formatting rules. See 37 C.F.R. §§ 42.11, 42.24(a), (d).” Nvidia Corp. v.
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`Polaris Innovations Ltd., IPR2017-01781, Paper 9 at 7 (P.T.A.B. Jan. 9, 2018).
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`In Facebook, Inc. v. Sound View Innovations, LLC, IPR2017-01003, Paper
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`14 at 6-7 (P.T.A.B. Sept. 1, 2017), the Board noted that a party’s failure to adhere
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`to the word-count limitations, including “[e]xcessive words in figures, drawings, or
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`images, deleting spacing between words, or using excessive acronyms or
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`abbreviations for word phrases, in order to circumvent the rules on word counts,
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`may lead to dismissal of a party’s brief.”) (emphasis added). Indeed, the Board has
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`expunged filings that failed to adhere to the formatting rules. Google Inc. v. Ji-Soo
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`Lee, IPR2016-00022 and IPR2016-00045, Paper 25 (P.T.A.B. Nov. 23, 2016)
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`(expunging two reply briefs because of incorrect certifications and failure to
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`comply with the word limit); Unified Patents, Inc. v. Rothschild Connected
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`Devices Innovations, LLC, IPR2016-00535, Paper 8 at 2 (P.T.A.B. June 28, 2016)
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`(expunging patent owner’s preliminary response for failure to adhere to the word
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`limit, among other violations). The Board should follow this precedent and dismiss
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`the Petition for failure to follow the mandatory formatting rules.
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`3
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`06/04/2018
`(Date)
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`3343429.1
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`Respectfully submitted,
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`/terry l. watt/
`Terry L. Watt
`Registration No. 42214
`CROWE & DUNLEVY
`321 South Boston, Suite 500
`Tulsa, OK 74103
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`Counsel for Patent Owner
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`4
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, and
`pursuant to Petitioners’ consent to electronic service, that service was made via
`email on June 4, 2018, on the Petitioners as follows:
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`Lead Counsel
`Manner of service: Email: jdextroxje@reedsmith.com
`Documents served: PATENT OWNER’S RESPONSE TO MAY 21, 2018
`ORDER BY THE COURT and DECLARATION OF JONATHAN
`DETRIXHE
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`Persons served:
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`Back-up Counsel (via email)
`Gerard M. Donovan
`REED SMITH, LLP
`1301 K Street, NW
`Suite 100 - East Tower
`Washington, DC 20005
`John P. Bovich
`REED SMITH, LLP
`101 Second Street, Suite 1800
`San Francisco, CA 94105
`
`Jonathan I. Detrixhe
`
`REED SMITH, LLP
`101 Second Street, Ste. 1800
`San Francisco, CA 94105
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`jdetrixhe@reedsmith.com
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`Phone: 415-543-8700
`Fax: 415-391-8269
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`gdonovan@reedsmith.com
`Phone: 202-414-9224
`Fax: 202-414-9299
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`jbovich@reedsmith.com
`Phone: 415-543-8700
`Fax: 415-391-8269
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`5
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