L O W E N S T E I N & W E A T H E R W A X L L P
`A Registered Limited Liability Law Partnership
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`1 8 8 0 C e n t u r y P a r k E a s t , S u i t e 8 1 5
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`l o w e n s t e i n @ l o w e n s t e i n w e a t h e r w a x . c o m
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`September 28, 2018
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`VIA EMAIL & U.S. MAIL
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`Ms. Erika Arner, Esq.
`erika.arner@finnegan.com
`Finnegan, Henderson, Farabow,
`Garrett, & Dunner LLP
`Two Freedom Square
`11955 Freedom Dr.
`Reston, VA 20190-5675
`Tel.: 571-203-2700
`
`Mr. Naveen Modi, Esq.
`naveenmodi@paulhastings.com
`Paul Hastings LLP
`875 15th St. N.W.
`Washington, D.C., 20005
`Tel.: 202.551.1700
`
`Subject:
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`IPR2018-01047, 01048, 01049, 01050, 01051, 01052, 01094, 01095, 01101,
`01102, 01103, 01104, 01115, 01116, 01117, 01118.
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`Dear Ms. Arner and Mr. Modi:
`
`I write to you in your capacity as counsel for Google LLC (“Google”) in the above-
`referenced IPRs, in my capacity as counsel for my client SEVEN Networks, LLC
`(“SEVEN”). As you know, the Board held a sua sponte teleconference with the parties on
`September 24 concerning the IPR petitions’ real parties-in-interest identification. In that
`conference, as reflected in an ensuing Order issued September 25, after Google stated its
`position during the call that its petitions correctly identified the real parties-in-interest, the
`Board announced sua sponte that it would permit Google to file notices changing the
`petitions’ identification of real parties-in-interest to identify additional real parties-in-
`interest, without change to the petitions’ filing dates, if such notices are filed by October 5.
`As you know, SEVEN had no prior notice of this announcement, and during the call
`objected, provided from memory several reasons why this was improper, and expressed its
`wish to clearly set forth its opposition for purposes of future review.
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`Although we trust SEVEN’s position that the Order is impermissible is clear, out of an
`abundance of caution, and in light of the fact that the Order provides that Google must elect
`whether to identify additional real parties-in-interest, if any, pursuant to the Order by
`October 5, SEVEN hereby provides Google with further notice and explanation of SEVEN’s
`position such that Google is fully aware of SEVEN’s position when it decides upon its
`course of action.
`
`GOOGLE EXHIBIT 1050
`GOOGLE v. SEVEN NETWORKS
`IPR2018-01052
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`September 28, 2018
`Page 2
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`In SEVEN’s view, 35 U.S.C. § 312(a)(2) provides unambiguously that “a petition filed
`under section 311 may be considered only if … (2) the petition identifies all real parties in
`interest.” In accord with this language, and with our previously voiced opposition to the
`Order, it is SEVEN’s position that Google’s petitions fail to satisfy § 312(a)(2) requirements
`in these cases as filed because they failed to identify the real parties-in-interest in the
`proceeding, and accordingly may not be considered under the facts of these cases. Nothing
`in the statute provides that amending mandatory notices, or anything else for that matter, can
`cure this deficiency, or otherwise allow the Board to consider the petitions other than as
`filed.
`
`Even if one were to assume, arguendo and contrary to the statute’s plain language, that
`updating mandatory notices could somehow cure this deficiency, it is equally clear that the
`rules also do not permit Google to amend its mandatory notices to name additional real
`parties-in-interest in these cases. For example, the relevant regulation provides that each
`notice must be filed “within 21 days of a change of the information listed in paragraph (b) of
`this section stated in an earlier paper.” 37 C.F.R. §42.8(a)(3). This rule has no application
`here, since, according to Google itself, and as the record reflects, there has been no change
`in the identities of Google’s real parties-in-interest since the petitions were filed. There is
`no demonstrable basis in either the rules or the statute for allowing Google to change its
`identification of real parties-in-interest in the mandatory notices, much less in the petitions.
`
`We are also of the view that, contrary to the Order, the rules further dictate that any
`identification of additional real parties-in-interest of Google would at a minimum, and
`among other things, result in a change of the filing date. Rule 37 C.F.R. § 42.106(a) states
`that “a petition to institute inter partes review will not be accorded a filing date until the
`petition satisfies all of the following requirements: (1) complies with § 42.104 …” Rule
`42.104, in turn, dictates that a petition must satisfy the requirements of rule 42.8 which
`requires that in the petition (see §42.8(a)(1)) the petitioner must “identify each real party-in-
`interest for the party” (see §42.8(b)(1)). Clearly, the Google petitions did not and have not
`identified all real parties-in-interest and, therefore, cannot be accorded a filing date.
`Furthermore, this brings this case within the scope of 35 U.S.C. § 315(b) because it has been
`over a year since Google was served with a complaint and no petition has been filed that
`satisfies these threshold requirements.
`
`As we also explained during the teleconference, the precedential decision from the PTAB
`bearing on the issue, Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739,
`Paper 38 (PTAB March 4, 2016), is readily distinguishable on multiple grounds, including
`that the petitioner in Lumentum—in contrast to Google in the cases-at-hand—did comply
`with §312(a)(2) at the time the petition was filed and then, of its own accord, without being
`prompted by the board or the patent owner, sought to update its mandatory notices to change
`its designation of real parties-in-interest in response to a corporate reorganization (i.e., in
`response to an actual change in accord with 37 C.F.R. §42.8(a)(3)). With respect to the
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`September 28, 2018
`Page 3
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`Lumentum petitioner’s compliance with §312(a)(2), the panel in that case could not have
`been more clear:
`
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`There is no dispute that the Petition, when filed, identified all real parties in
`interest, and, therefore, the Petition was complete, was properly accorded a
`filing date, and was available to be ‘considered’ under § 312(a). Accordingly,
`Patent Owner’s argument that the Petition cannot be “corrected” under 37
`C.F.R. § 42.106(b) is misplaced, as there was no need to “correct” the Petition
`(as opposed to updating the Petition with additional information concerning
`circumstances that arose after the Petition was filed). Thus, Patent Owner has
`not shown a need to assign a new filing date to the Petition.
`
`
`Lumentum, at 6. Thus, under Lumentum’s reasoning, here, unlike in Lumentum, Google’s
`petitions did not comply with 35 U.S.C. §312(a) and, therefore, could not be “considered” in
`accordance with the that section.
`
`If Google does not act upon the Order’s offer to identify additional real parties-in-interest
`while purportedly keeping its statutory filing date, that aspect of the Order will be rendered
`moot and no reconsideration of it will be called for. If Google does act upon the Order’s
`offer to identify additional real parties-in-interest, it is SEVEN’s position that the update
`will constitute a binding and fatal admission that the petitions failed to name all real parties-
`in-interest, and SEVEN intends to ask the Board and/or the Director to reconsider the Order
`and determine, in light of, inter alia, that admission, that the petitions may not be
`considered.
`
`SEVEN provides this notice to ensure that Google is aware of SEVEN’s position regarding
`the propriety of these aspects of the Board’s Order. SEVEN reserves all of its rights.
`
`
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`Regards,
`
`
`
`Nathan Lowenstein
`
`
`
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`cc. by email only
`
`Kenneth Weatherwax, Esq.
`weatherwax@lowensteinweatherwax.com
`
`Sangeeta Shah, Esq.
`sshah@brookskushman.com
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`September 28, 2018
`Page 4
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`Stephen E. Kabakoff, Esq.
`stephen.kabakoff@finnegan.com
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`Kara A. Specht, Esq.
`kara.specht@finnegan.com
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`Rachel L. Emsley, Esq.
`rachel.emsley@finnegan.com
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`Google-SevenNetworks-IPRs@finnegan.com
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`Joseph E. Palys, Esq.
`josephpalys@paulhastings.com
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`Daniel Zeilberger, Esq.
`danielzeilberger@paulhastings.com
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`Howard Herr, Esq.
`howardherr@paulhastings.com
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`Arvind Jairam, Esq.
`arvindjairam@paulhastings.com
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`PH-Google-Seven-IPR@paulhastings.com
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