`
`
`
`Filed on behalf of Google LLC
`By:
`Jonathan Tuminaro (Reg. No. 61,327)
`
`Robert E. Sokohl (Reg. No. 36,013)
`
`Karen Wong-Chan (Reg. No. 69,235)
`
`Sterne, Kessler, Goldstein & Fox PLLC
`
`1100 New York Avenue, NW
`
`
`Washington, D.C. 20005
`
`
`Tel: (202) 371-2600
`
`Fax: (202) 371-2540
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`GOOGLE LLC
`Petitioner
`
`v.
`
`
`
`
`
`
`
`
`
`AGIS SOFTWARE DEVELOPMENT LLC
`Patent Owner
`
`
`
`
`Case IPR2018-01079
`Patent 8,213,970
`
`
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`Exhibit No. Description
`
`EXHIBIT LIST
`
`Case IPR2018-01079
`U.S. Patent 8,213,970
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`U.S. Patent No. 8,213,970 B2 to Beyer (“ʼ970 patent”)
`
`Prosecution History of U.S. Patent No. 8,213,970 (Application No.
`12/324,122) (“’970 Pros. Hist.”)
`Declaration of David H. Williams
`
`Curriculum Vitae of David H. Williams
`
`U.S. Patent Application Publication No. 2006/0218232 to Kubala
`et al. (“Kubala”)
`U.S. Patent No. 6,854,007 to Hammond (“Hammond”).
`
`U.S. Patent No. 5,325,310 to Johnson et al. (“Johnson”)
`
`U.S. Patent No. 5,742,905 to Pepe et al. (“Pepe”)
`
`U.S. Publication No. 2003/0128195 to Banerjee et al. (“Banerjee”)
`
`Simon Says “Here’s How!” Simon™ Mobile Communications
`Made Simple, Simon Users Manual, IBM Corp., 1994. (“Simon”)
`Prosecution History of U.S. Patent Application No. 10/711,490
`(“’490 application”)
`Prosecution History of U.S. Application No. 11/308,648 (“’648
`application”)
`Prosecution History of U.S. Application No. 11/612,830 (“’830
`application”)
`McKinsey & Company, The McKinsey Report : FDNY 9/11
`Response (2002) (“The McKinsey Report”)
`History of Mobile Phones, Wikipedia.com,
`https://en.wikipedia.org/wiki/History_of_mobile_phones (last
`visited May 10, 2018) (“Hist. Mobile Phones”)
`Apple Newton, Wikipedia.com,
`https://en.wikipedia.org/wiki/Apple_Newton (last visited May 10,
`2018) (“Apple”)
`
`ii
`
`
`
`Case IPR2018-01079
`U.S. Patent 8,213,970
`
`Exhibit No. Description
`
`1017
`
`1018
`
`1019
`
`Email, Wikipedia.com, https://en.wikipedia.org/wiki/Email (last
`visited May 10, 2018) (“Email”)
`From touch displays to the Surface: A brief history of touchscreen
`technology, Arstechnica.com
`https://arstechnica.com/gadgets/2013/04/from-touch-displays-to-
`the-surface-a-brief-history-of-touchscreen-technology/ (last visited
`May 10, 2018) (“Arstechnica”)
`Palm VII,Wikipedia.com, https://en.wikipedia.org/wiki/Palm_VII
`(last visited May 10, 2018) (“Palm”)
`
`
`
`- iii -
`
`
`
`Case IPR2018-01079
`U.S. Patent 8,213,970
`
`AGIS accuses Google of a “lack of candor” while simultaneously omitting a
`
`dispositive fact and withholding highly relevant case law. Contrary to this baseless
`
`accusation, Google’s petition and the relevant case law demonstrate that—at all
`
`times—Google has been entirely candid with the Board.
`
`Google complied with the PTO’s rules by identifying (i) the related district-
`
`court matters and (ii) the claim constructions that form the basis of its petition.
`
`Caterpillar Inc. v. Wirtgen Am., Inc., IPR2017-02185, Paper no. 7 at 11 (May 3,
`
`2018) (“Caterpillar”); Western Digital Corp. v. Spex Techs., Inc., IPR2018-00082,
`
`Paper 11 at 10, 11 (Apr. 25, 2018). Google even noted that alternative claim
`
`constructions may be advanced in different fora.1 Pet. at 8 n.1. Yet AGIS accuses
`
`Google of a “lack of candor” for “withholding seemingly inconsistent claim
`
`constructions from the record . . . .” POPR at 24. That accusation has no merit.
`
`As an initial matter, AGIS omits the fact that the district-court parties
`
`(including AGIS) submitted claim constructions in district court a month after
`
`
`1 The Federal Circuit has consistently held that parties are entitled to take
`
`alternative—or even inconsistent—positions. See, e.g., Bancorp Services v. Sun
`
`Life Assur. Co. of Canada, 687 F.3d 1266, 1280 (Fed. Cir. 2012). And alternative,
`
`inconsistent positions are allowable at the PTAB. See, e.g., Nippon Suisan Kaisha
`
`Ltd. v. Pronova Biopharma Norge, AS, PGR2017-00033, Paper 7 (Jan. 17, 2018).
`
`
`
`- 1 -
`
`
`
`Case IPR2018-01079
`U.S. Patent 8,213,970
`
`Google filed its petitions here. Moreover, the PTO’s rules do not require a
`
`petitioner to take “positions consistent with related cases in different fora.”
`
`Caterpillar at 11. Instead, the PTO’s rules only “require that the parties identify
`
`[the] related matters.” Id. “Various reasons may justify inconsistencies among fora,
`
`including differing legal or evidentiary standards, a change in litigation strategy, or
`
`a change in position.” Id. Thus, Google’s claim constructions here are not required
`
`to be consistent with the defendants’ claim constructions in district court.
`
`And AGIS’s argument is nonsensical in an adversarial proceeding. If AGIS
`
`believed that the district-court defendants’ claim constructions were correct, it was
`
`free to argue such in its Preliminary Response. But, in district court, AGIS opposed
`
`the district-court defendants’ claim constructions and has not argued here that
`
`those claim constructions are correct. Nor has AGIS argued against applying the
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`presumption that § 112 ¶ 6 does not apply to claims that lack the word “means.”
`
`Instead of arguing the merits, AGIS asserts that any difference between Google’s
`
`position and the district-court party positions mandates denial, citing Facebook.
`
`See POPR at 18 (citing IPR2017-00998, Paper 13 at 18 (Sept. 5, 2017)).
`
`The facts here are like Caterpillar, not Facebook. Like AGIS, the patent
`
`owner in Caterpillar cited Facebook and asserted that “the Board has denied
`
`institution of an inter partes review when a petitioner fails to notify the Board that
`
`it has construed claim terms under § 112, ¶ 6 in a parallel proceeding.” Caterpillar
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`- 2 -
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`Case IPR2018-01079
`U.S. Patent 8,213,970
`
`at 12. The Caterpillar panel rejected that argument, pointing to the obvious
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`distinction from Facebook, where Facebook was based on “the district court’s
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`determination that the sole challenged claim [wa]s indefinite and Petitioner’s
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`failure to inform us of its seemingly inconsistent claim construction positions”—a
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`position taken by the petitioner prior to filing the petition. Id. at 12 (emphasis
`
`added). But, in Caterpillar (like here), no prior claim-construction position was
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`taken or ruled on. So, no party had prevailed, no ruling had issued, and no party
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`was then subject to any potential preclusion.
`
`AGIS also failed to cite a decision that rejected a nearly identical argument
`
`to the one it makes here. In Western Digital, the same counsel that represents
`
`AGIS argued that an IPR petition should be denied because the petitioner failed to
`
`“take ownership” of any claim constructions from a related district-court matter.
`
`IPR2018-00082, Paper 11 at 10, 11 (Apr. 25, 2018). The panel rejected that
`
`argument, explaining that “37 C.F.R. § 104(b)(3) does not require [p]etitioner to
`
`express its subjective agreement regarding correctness of its proffered claim
`
`constructions or to take ownership of those constructions.” Id. at 12. AGIS’s
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`counsel’s failure to cite this case is troubling, where Western Digital confirms that
`
`Google “complie[d] with [the PTO’s] rules by identifying [the] claim constructions
`
`it proposes as the basis for requesting review of the challenged claims.” Id.
`
`Google satisfied 37 C.F.R § 42.11 and § 11.18(b)(2) and its duty of candor.
`
`- 3 -
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`
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`Case IPR2018-01079
`U.S. Patent 8,213,970
`
`Respectfully submitted,
` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Robert Sokohl/
`
`
`
`Jonathan Tuminaro (Reg. No. 61,327)
`Robert E. Sokohl (Reg. No. 36,013)
`Karen Wong-Chan (Reg. No. 69,235)
`Attorneys for Petitioner
`
`
`
`
`
`
`
`
`
`Date: September 19, 2018
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`Tel: (202) 371-2600
`
`
`- 4 -
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`
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`Case IPR2018-01079
`U.S. Patent 8,213,970
`
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
`
`The undersigned hereby certifies that true and correct copies of the above-
`
`captioned PETITIONER’S REPLY TO PATENT OWNER PRELIMINARY
`
`RESPONSE was served in its entirety on September 19, 2018, upon the following
`
`parties via email:
`
`
`
`Vincent J. Rubino, III
`Alfred R. Fabricant
`Peter Lambrianakos
`Enrique W. Iturralde
`
`
`vrubino@brownrudnick.com
`afabricant@brownrudnick.com
`plambrianakos@brownrudnick.com
`eiturralde@brownrudnick.com
`
`
`
`
`
`
`
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
` /Robert Sokohl/
`
`
`Robert E. Sokohl
`Registration No. 36,013
` Attorney for Petitioner
`
`
`
`
`
`
`
`Date: September 19, 2018
`
`
`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
`
`
`
`
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