Paper 98
`Filed: October 25, 2021
`
`Case IPR2018-01257
`Patent No. 8,552,978
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`GOOGLE LLC, ZTE (USA), INC., SAMSUNG ELECTRONICS CO., LTD.,
`LG ELECTRONICS INC., HUAWEI DEVICE USA, INC.,
`HUAWEI DEVICE CO. LTD., HUAWEI TECHNOLOGIES CO. LTD.,
`HUAWEI DEVICE (DONGGUAN) CO. LTD.,
`HUAWEI INVESTMENT & HOLDING CO. LTD.,
`HUAWEI TECH. INVESTMENT CO. LTD., and
`HUAWEI DEVICE (HONG KONG) CO. LTD.,
` Petitioner
`
`v.
`
`CYWEE GROUP LTD.
`Patent Owner
`
`____________________
`
`
`PATENT OWNER’S REQUEST FOR DIRECTOR DE NOVO REVIEW
`
`
`
`
`
`
`
`

`

`Case IPR2018-01257
`Patent No. 8,552,978
`BACKGROUND ............................................................................................. 1
`I.
`LEGAL STANDARD ..................................................................................... 5
`II.
`III. ARGUMENT .................................................................................................10
`A.
`The IPR Must Be Dismissed ...............................................................10
`1.
`The Institution Decision Was NOT Timely .............................. 10
`2.
`Applied Arbitrary and Capricious Standards. ........................... 10
`3.
`CyWee Is Entitled to Additional Discovery ............................. 12
`IV. CONCLUSION ..............................................................................................15
`
`
`
`
`
`TABLE OF CONTENTS
`
`The Panel Failed to Follow Board Procedures and
`
`
`
`
`
`i
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`

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`Case IPR2018-01257
`Patent No. 8,552,978
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`TABLE OF AUTHORITIES
`
`
`
`Cases
`
`Applications in Internet Time, LLC v. RPX Corp.,
`897 F.3d 1336, 1356 (Fed. Cir. 2018) ............................................ 8, 9, 11, 12
`Cuozzo Speed Tech., LLC v. Lee,
`136 S.Ct. 2131 (2016) ...................................................................................... 7
`Free Enterprise Fund v. Public Company Accounting Oversight Bd.,
`561 U.S. 477 (2010)......................................................................................... 6
`Mobility Workx, LLC v. Unified Patents, LLC,
`2021 WL 4762265 (Fed. Cir. Oct. 13, 2021) ..............................................1, 7
`Taylor v. Sturgell,
`533 U.S. 880 (2008); .............................................................................. 10, 12
`United States v. Arthrex, Inc.,
`141 S. Ct. 1970 (2021) ........................................................................... passim
`Worlds Inc. v. Bungie, Inc.,
`903 F.3d 1237 (Fed. Cir. 2018) ....................................................................... 8
`
`Statutes
`
`35 U.S.C. § 314(b) ..................................................................................................... 6
`35 U.S.C. § 315(b) ..................................................................................................... 8
`35 U.S.C. § 318(b) ..................................................................................................... 5
`37 C.F.R. § 42.11........................................................................................................ 8
`37 C.F.R. § 42.51(b)(1)(iii) ........................................................................................ 8
`37 CFR § 42.71(d) ..................................................................................................... 2
`Fed. R. Evid. 301 ....................................................................................................... 8
`
`Administative Decisions
`
`Aerospace Commc’ns Holdings Co., Ltd. v. The Armor All/Step Prods.
`Co.,
`IPR2016-00441, Paper 12 at 10. ....................................................................11
`
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`ii
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`Case IPR2018-01257
`Patent No. 8,552,978
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`
`I.M.L SLU v. WAG Acquisition, LLC,
`IPR2016-01658, 2018 WL 1128521 (PTAB Feb. 27, 2018) ......................8, 9
`Intel Corp. v. Hera Wireless S.A.,
`IPR2018-01543, 2019 WL 1224679 (PTAB March 14, 2019) ....................... 7
`Proppant Express Investments, LLC v. Oren Tech., LLC,
`IPR2017-01917, Paper 86 ................................................................................ 8
`Ventex Co., Ltd. v. Columbia Sportswear North America, Inc.,
`IPR2017-00651, 2019 WL 764130 (PTAB Jan. 24, 2019) ................... passim
`
`
`
`
`
`
`iii
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`

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`Per the Federal Circuit’s Sep. 23, 2021, Order in Appeal Nos. 2020-1565 and
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`Case IPR2018-01257
`Patent No. 8,552,978
`
`
`
`2020-1567, Patent Owner CyWee Group, Ltd. (“CyWee”) submits its request for de
`
`novo rehearing by the Director, including whether this IPR must be dismissed
`
`because the Director failed to comply with his Constitutional and statutory duties
`
`within the required time frame and/or because the proceedings were inconsistent
`
`with the Office’s procedures and binding precedent. Mobility Workx, LLC v. Unified
`
`Patents, LLC, 2021 WL 4762265, at *8-*9 (Fed. Cir. Oct. 13, 2021). Due process
`
`requires a de novo review by the Director of all issues presented by CyWee based
`
`on all evidence of record. See United States v. Arthrex, Inc., 141 S. Ct. 1970, 1993
`
`(2021) (Gorsuch J., dissenting).
`
`A certificate confirming the challenged claims should be issued because the
`
`IPR was not constitutionally instituted within 3 months after CyWee’s Preliminary
`
`Response was filed and because the proceedings after institution were inconsistent
`
`with the Office’s procedures and binding precedent. Alternatively, the Final Written
`
`Decision (“FWD”) must be vacated and CyWee allowed to take discovery regarding
`
`whether all real-parties-in-interest (“RPI”) and privies were disclosed as required by
`
`35 U.S.C. § 312(a)(2) and to present its evidence at a de novo hearing.
`
`I.
`
`BACKGROUND
`CyWee initiated infringement actions against various parties (the “Android
`
`Defendants”) asserting the patent-at-issue in this IPR, including infringement
`
`
`
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`

`

`
`complaints as to Samsung, LG, and Huawei served between February 23, 2017, and
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`Patent No. 8,552,978
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`June 14, 2017. Google filed IPR petitions for the ’438 Patent (IPR2018-01258) and
`
`related ’978 Patent (IPR2018-01257) (collectively, the “Google IPRs”) on June 14,
`
`2018, naming Huawei as an RPI. Samsung and LG were by then both time-barred.
`
`ZTE filed its own IPR petition for the ’438 Patent (IPR2019-00143) on October 31,
`
`2018. Samsung, LG, Huawei, and ZTE also each filed copycat petitions as well as
`
`motions for joinder to both Google IPRs in January 2019. CyWee filed its
`
`Preliminary Response on September 14, 2018. Paper 6. The Institution Decision
`
`issued on December 11, 2018. Paper 7. It was not reviewed by the Director. CyWee
`
`filed a request for rehearing of the Institution Decision, but, in accordance with
`
`Board policy, it was heard and decided only by the same APJs that issued the
`
`Institution Decision. Paper 9; Paper 11; Revised Trial Practice Guide, § D(2) (Aug.
`
`2018); 37 CFR § 42.71(d). Joinder was granted on July 12, 2019. This procedure
`
`was undeniably unconstitutional.
`
`After institution, the Board designated as precedential the decision in Ventex
`
`Co., Ltd. v. Columbia Sportswear North America, Inc., IPR2017-00651, 2019 WL
`
`764130 (PTAB Jan. 24, 2019) regarding the assessment of disputed RPI and privity
`
`issues. Accordingly, CyWee moved for additional discovery from Google regarding
`
`the undisclosed Android Defendants. CyWee’s requested discovery was of the same
`
`scope that had been permitted in Ventex. Paper 24.
`
`
`
`2
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`

`

`The known relationships between and among the Android Defendants is
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`
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`shown in a summary graphic submitted by CyWee. See Ex. 2018. Each of the
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`Android Defendants licenses the Android system from Google. Google’s licensing
`
`of the Android OS is known to be governed by various agreements, including the
`
`“Android-Networked Cross-License” (“PAX”), to which LG and Samsung are both
`
`parties. See Ex. 2016; see also https://paxlicense.org/community/index.html; Ex.
`
`2014, “Mobile Application Distribution Agreement” (“MADA”) with Samsung.
`
`The MADA contained indemnification provisions for applications running on the
`
`Android OS and for Android-based devices. Ex. 2014, §§ 11.1-11.2. The Android
`
`operating system is a major component of CyWee’s infringement contentions for all
`
`products accused of infringing CyWee’s patents in these cases. See Ex. 2015.
`
`Google has admitted that Huawei is an RPI to this IPR. Paper 1 at 4. Google
`
`identified Huawei as an RPI because Huawei was an original design manufacturer
`
`(“ODM”) for an accused Google device; LG, however, was not identified even
`
`though it was, at the time of Huawei’s identification as an RPI, also an ODM for an
`
`accused Google device. Paper 95 at 21. LG’s ODM activity was never disclosed by
`
`Google; it was discovered by CyWee. LG has admitted that Google, Huawei, and
`
`ZTE are RPIs in related petitions. IPR2019-00559, Paper 1 at 5; IPR2019-00560,
`
`Paper 1 at 3; IPR2019-01203, Paper 1 at 1. Google intentionally hid the ODM
`
`relationship with LG to avoid its petition being time-barred. There is no other
`
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`3
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`

`

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`conclusion that could be reached, as Google specifically stated that Huawei was
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`identified solely for being an ODM of an accused Google device, the exact same
`
`relationship with LG that Google withheld to create PTAB jurisdiction.
`
`On June 20, 2019, the panel nevertheless denied CyWee’s requested
`
`discovery into the Google/LG ODM relationship because of the “understandability
`
`of instructions and degree of burden to answer” and because the proceedings were
`
`“too advanced.” Paper 96 at 14; Paper 97. But Google was only asked to produce
`
`agreements, communications and a deponent that would have shown that (1) LG was
`
`an ODM; and (2) explained why Google concluded ODM Huawei was an RPI while
`
`ODM LG was not.
`
`Other panels, both before and after, have reached contrary conclusions where
`
`the required disclosure of RPIs/privies is at issue. Ventex Co., Ltd., v. Columbia
`
`Sportswear N.A., Inc., IPR2017-00651, Paper 73 at 3 (PTAB September 27, 2018);
`
`RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128, -
`
`01751, Paper 128, -01752, Paper 126 (PTAB Oct. 2, 2020). In fact, the same panel
`
`for this IPR subsequently granted CyWee additional discovery on the RPI/privity
`
`issue in a related IPR brought by ZTE, another Android Defendant. Paper 96 at 14;
`
`IPR2019-00143, Paper 20. At trial, CyWee was permitted to submit the evidence it
`
`obtained from ZTE, but it was limited in two key respects: (1) it did not contain the
`
`ODM contracts between LG and Google because Google did not produce them in
`
`
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`4
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`this proceeding; and (2) the submission was limited to an explanation of the evidence
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`that the panel restricted to accommodate Google’s objections. Paper 74. CyWee
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`was also not allowed to depose a Google corporate representative on why Huawei
`
`was disclosed as an ODM and LG was not.
`
`II. LEGAL STANDARD
`Statutory Obligations of the Director: The AIA mandates that various
`
`actions be taken by the Director. One such action is the issuance of a certificate
`
`pursuant to a Final Written Decision of a panel of APJs. 35 U.S.C. § 318(b). The
`
`Director’s statutory duties cannot be delegated to APJs, who are inferior officers.
`
`U.S. v. Arthrex, Inc., 141 S. Ct. 1970, 1987 (2021). Thus, the U.S. Supreme Court
`
`recently found unconstitutional the statutory provision that precluded the Director
`
`from reviewing the APJ decision before issuing the certificate as required by statute.
`
`Id. Under Arthrex, a scheme adopted by the Office that allows rehearing of
`
`statutorily mandated decisions only by APJs is unconstitutional because it prevents
`
`the Director from rehearing and reversing a final decision of inferior officers. Id. at
`
`1986-87.
`
`Maintaining the distinction between the Director’s acts and those of APJs is
`
`critical. The power of officers to act in the name of the United States “acquires its
`
`legitimacy and accountability to the public through ‘a clear and effective chain of
`
`command’ down from the President, on whom all the people vote.” Id. at 1979
`
`
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`5
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`(quoting Free Enterprise Fund v. Public Company Accounting Oversight Bd., 561
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`Case IPR2018-01257
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`U.S. 477, 498 (2010)). A scheme that allows the Director to “evade … responsibility
`
`for the ultimate decision … blur[s] the lines of accountability demanded by the
`
`Appointments Clause,” leaving the parties “with neither an impartial decision by a
`
`panel of experts nor a transparent decision for which a politically accountable officer
`
`must take responsibility.” Arthrex, 141 S. Ct. at 1981-82.
`
`By statute, the Director must also determine whether to institute an IPR. 35
`
`U.S.C. § 314(b). That determination must be made within 3 months after receiving
`
`the Patent Owner’s Preliminary Response. Id. The Director cannot simply take
`
`direction from APJs regarding the institution decision without the right to review the
`
`decision. Arthrex, 141 S. Ct. at 1987. The time limit for the institution is mandatory.
`
`Id. Thus, if the Director fails to act in a manner that is consistent with the
`
`Constitution and the express statutory requirements and that is within the required
`
`time, institution is improper. Id.
`
`Office’s Obligations of Consistency and Reliability: Per the Office’s
`
`adopted requirements, Director review is to address, correct, and harmonize issues
`
`on which panel decisions are split, issues of particular importance to the Office or
`
`patent community, or inconsistencies with office procedures, guidance, or decisions.
`
`https://www.uspto.gov/patents/patent-trial-and-appeal-board/pro-cedures/arthrex-
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`qas. Such issues are to be reviewed de novo. Id.
`
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`“The procedure called ‘institution’ was established by the America Invents
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`
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`Act in response to concerns that the proposed system of agency review would be
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`subject to abuses such as harassment, delay, and opportunistic attacks on valuable
`
`patents, for there is no requirement of an Article III controversy for these agency
`
`proceedings, although the statute provides for cancellation (or enforcement) of
`
`property rights.” Mobility Workx, 2021 WL 4762265, at *9 (Newman, J., dissenting
`
`in part). Prior to the enactment of the AIA, “the patent bar expressed concern about
`
`the actual or perceived bias against the patent owner because the [ALJs] are put in
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`the position of defending their prior decisions to institute the review.” Id., at *13.
`
`The Office therefore designates as precedent binding on all IPR proceedings
`
`decisions concerning issues, such as those related to institution, that are of
`
`exceptional importance. SOP 2 at 3-4. Adherence to this binding precedent is
`
`crucial to avoid “shenanigans” that violate a patent owner’s constitutional rights.
`
`Cuozzo Speed Tech., LLC v. Lee, 136 S. Ct. 2131, 2141-42 (2016).
`
`Statutory Obligations of Petitioners: It is Petitioner’s statutory duty to
`
`identify all of the RPIs/privies in an IPR proceeding. See 35 U.S.C. § 312(a)(2);
`
`Intel Corp. v. Hera Wireless S.A., IPR2018-01543, 2019 WL 1224679 at *3 (PTAB
`
`March 14, 2019); I.M.L SLU v. WAG Acquisition, LLC, IPR2016-01658, 2018 WL
`
`1128521 at *4 (PTAB Feb. 27, 2018). The presumption—if any—that Petitioner’s
`
`identification of RPIs/privies is correct is weak and is quickly rebutted through
`
`
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`7
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`evidence that reasonably brings into question the accuracy of Petitioner’s
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`identification of RPIs/privies. See Proppant Express Investments, LLC v. Oren
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`Tech., LLC, IPR2017-01917, Paper 86 at 4.
`
`The burden of persuasion regarding compliance with § 312(a)(2) always
`
`remains with Petitioner. I.M.L., 2018 WL 1128521 at *4; Worlds Inc. v. Bungie,
`
`Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018); see also Fed. R. Evid. 301. The
`
`Petitioner must “serve relevant information that is inconsistent with a position
`
`advanced by the [petitioner] during the proceeding concurrent with the filing of the
`
`documents or things that contain the inconsistency.” 37 C.F.R. § 42.11; 37 C.F.R. §
`
`42.51(b)(1)(iii). A challenge to Petitioner’s identification of RPIs/privies cannot be
`
`waived by lack of timeliness, as compliance with § 312(a)(2) is Petitioner’s statutory
`
`requirement, not an affirmative defense to be asserted by Patent Owner. Ventex,
`
`IPR2017-00651, Paper 73 at 3, n. 2.
`
`Petitioner has a separate statutory requirement to file its Petition for IPR
`
`within one year “after the date on which the petitioner, real party in interest, or privy
`
`of the petitioner is served with a complaint alleging infringement of the patent.” 35
`
`U.S.C. § 315(b). Compliance with § 312(a)(2) and § 315(b) are distinct inquiries
`
`that should not be conflated. AIT, 897 F.3d at 1364 (J. Reyna, concurring). Unlike
`
`a failure to comply with § 312(a)(2), failure to comply with § 315(b) is a
`
`jurisdictional issue that limits the Director’s statutory power to institute the Petition.
`
`
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`8
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`

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`Id. According to the Office’s designated precedent, failure to comply with § 315(b)
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`mandates dismissal of the Petition and a termination of the IPR. Ventex, IPR2017-
`
`00651, Paper 148 at 3-4. Thus, Petitioner’s failure to identify a time-barred
`
`RPI/privy under § 312(a)(2) is a non-waivable issue that must result in a termination
`
`of the IPR pursuant to § 315(b). Id. at 2-4; I.M.L. SLU, 2018 WL 1128521 at *6.
`
`The burden to prove that it has ultimately complied with both statutory requirements
`
`rests with Petitioner. Applications in Internet Time, LLC v. RPX Corp., 897 F.3d
`
`1336, 1356 (Fed. Cir. 2018).
`
`Rules Governing RPI/Privity: Who is an RPI is a “highly fact dependent
`
`question” and an RPI relationship can exist based on numerous facts that must be
`
`evaluated case-by-case. Ventex, IPR2017-00651, Paper 148 at 6. These types of
`
`facts can include the length of the relationship between the parties; agreements
`
`between the parties, particularly those that relate to the products accused of
`
`infringement; a supplier/manufacturer relationship for the products accused of
`
`infringement; and knowledge, involvement, or agency in suits based on the products
`
`accused of infringement. Id. at 6-10. Direction and control are not necessary to
`
`establish an RPI relationship. AIT, 897 F.3d at 1356.
`
`Privity between two parties is a separate inquiry that can similarly be
`
`established by many factors including: “(1) an agreement between the parties to be
`
`bound; (2) pre-existing substantive legal relationships between the parties; (3)
`
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`adequate representation by the named party; (4) the non-party’s control of the prior
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`litigation; (5) where the non-party acts as a proxy for the named party to relitigate
`
`the same issues; and (6) where special statutory schemes foreclose successive
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`litigation by the non-party (e.g., bankruptcy and probate).” Taylor v. Sturgell, 533
`
`U.S. 880, 894-94 (2008); Ventex, IPR2016-00651, Paper 148 at 12.
`
`III. ARGUMENT
`A. The IPR Must Be Dismissed
`1. The Institution Decision Was NOT Timely
`The Institution Decision did not meet the requirements of the Appointments
`
`Clause nor the statutory deadline for institution. The statue explicitly requires that
`
`the Director make the institution decision within 3 months of the Preliminary
`
`Response, which in this case was filed on September 14, 2018, over 3 years ago.
`
`Paper 6. Here, the purported institution decision was issued by inferior officers
`
`without review or the possibility of review by the Director. See Paper 11. The
`
`politically accountable Director had no recourse, in violation of Arthrex. Arthrex,
`
`141 S. Ct. at 1987. Therefore, the Institution Decision must be vacated as untimely
`
`and not in compliance with the plain language of the statute.
`
`2. The Panel Failed to Follow Board Procedures and Applied
`Arbitrary and Capricious Standards.
`Petitioners “have no incentive to correctly name [RPI/privies] when their
`
`failure to do so lacks consequence.” Aerospace Commc’ns Holdings Co., Ltd. v. The
`
`
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`10
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`Armor All/Step Prods. Co., IPR2016-00441, Paper 12 at 10. As put forth in the
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`Motion for Additional Discovery, each of the Android Defendants “is a clear
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`beneficiary [of the Google IPRs] that has a preexisting established relationship with
`
`the petitioner.” AIT, 897 F.3d at 1351. The Android Defendants are all defendants
`
`to infringement actions brought by CyWee on the patent-at-issue here and thus have
`
`an interest in invalidating the patent through the present IPR. See Ventex, IPR2017-
`
`00651, Paper 148 at 9. Each of the Android Defendants has affirmed this interest by
`
`moving to be joined as a party to this IPR. Google and the Android Defendants also
`
`have a preexisting, established relationship with one another:
`
`• Google is the exclusive supplier of the accused Android OS for the Android
`
`Defendants manufacturing handheld devices, e.g., smartphones and tablets;
`
`• Google’s relationship with the Android Defendants began in 2011;
`
`• Android OS is a major component of all infringing products in the related
`
`actions against the Android Defendants;
`
`• One or more agreements exist between Google and some of the Android
`
`Defendants pertaining to the Android OS;
`
`• Google has a history of contracting practices for the Android OS and
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`products/services that utilize the OS, such as a Samsung MADA in 2011-2012,
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`including relevant mutual indemnification provisions.
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`11
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`These facts prove an established relationship between Google and the
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`Android Defendants. IPRs have been dismissed on similar facts after a critical
`
`examination of the RPI’s business model. See, e.g., Ventex, IPR2017-00651, Paper
`
`148 at 7-9; AIT, IPR2015-01750, Paper 128, -01751, Paper 128, -01752, Paper 126.
`
`These same facts also establish a privity relationship between Google and the
`
`Android Defendants. Taylor v. Sturgell. 533 U.S. 880, 894-94 (2008); Ventex,
`
`IPR2016-00651, Paper 148 at 12. PAX and the MADA prove a pre-existing,
`
`substantive legal relationship between Google and at least Samsung and LG. The
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`MADA indemnification clauses are agreements to be bound in litigation based on
`
`Android OS applications and Android-based devices. Google’s central reference in
`
`this IPR, Bachmann, was first raised by Samsung in district court but dropped.
`
`Google is acting as Samsung’s proxy to relitigate this previously abandoned art.
`
`Thus, under the Board’s binding precedent, CyWee has presented evidence
`
`that Google has not correctly identified the Android Defendants as RPIs/privies. See
`
`Ex. 2018. Google’s Petition is therefore time barred by § 315(b).
`
`3. CyWee Is Entitled to Additional Discovery
`In the event the Director does not dismiss this IPR entirely, the FWD should
`
`be vacated and CyWee entitled to pursue additional RPI/privity discovery from
`
`Google. This discovery was granted by the same panel in the ZTE IPR:
`
`Google Requests
`
`ZTE Requests
`
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`Agreements between
`1.
`Google and any of the Joinder
`Petitioners relating
`to
`the
`Android Operating System
`(“OS”)
`and/or
`devices
`utilizing Android, including
`any
`licensing,
`cross-
`licensing,
`supplier,
`manufacturing, joint defense,
`joint
`interest,
`and
`indemnification agreements.
`Any communications
`2.
`between Google and any of
`the
`Joinder
`Petitioners
`regarding the Google IPRs,
`CyWee,
`U.S.
`Patents
`8,441,438 and 8,552,978,
`and/or any of the “Related
`Matters”
`disclosed
`in
`Google’s Petition (Paper 1 at
`5-6).
`of
`Deposition
`3.
`witness(es) with knowledge
`of
`Google’s
`Android
`licensing practices and any of
`the agreements listed above.
`
`Agreements to which ZTE is a party with
`1.
`Google regarding the terms and conditions by
`which
`the Android Platform
`is used or
`implemented in ZTE’s Accused Products.
`Agreements to which ZTE is a party with
`2.
`any Android Defendant other
`than Google
`regarding the terms and conditions by which the
`Android Platform is used or implemented in ZTE’s
`Accused Products.
`Agreements to which ZTE is a party with
`3.
`any Android Defendant regarding challenging the
`validity of the ‘438 Patent, or any Inter Partes
`Review involving the ‘438 Patent,
`from
`Documents
`reflecting payments
`4.
`January 2017 through to the present, including
`direct payments such as cash and
`indirect
`payments such as discounts or rebates, between
`ZTE and any Android Defendant relating to (a) any
`agreement responsive to these requests or (b) any
`challenges to the validity of the ‘438 Patent,
`including any Inter Partes Review initiated or
`sought to be initiated by any Android Defendant.
`Communications between and among ZTE
`5.
`and any Android Defendant regarding challenging
`the validity of the ‘438 Patent, or any Inter Partes
`Review involving the ‘438 Patent.
`
`
`
`Paper 24 at 2; Paper 96 at 14; IPR2019-00143, Paper 13 at 19-20; IPR2019-
`00143, Paper 20 at 11. In the ZTE IPR, the same panel redlined the requests to
`address perceived issues of overbreadth. IPR2019-00143, Paper 20 at 11. The
`Board made no such attempt here. Paper 30.
`
`
`
`13
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`

`

`Moreover, other panels authorized similar requests in other IPRs where the
`
`Case IPR2018-01257
`Patent No. 8,552,978
`
`
`
`disclosure of real-parties-in-interest and privies was challenged.
`
` See Ventex,
`
`IPR2017-00651, -00789, 2018 WL 4040007, at *1 (PTAB Aug. 22, 2018); Ventex,
`
`IPR2017-00651, 2018 WL 5849014 (PTAB Nov. 6, 2018). The discovery was
`
`allowed there in part due to the petitioner’s efforts to obscure the existence and
`
`nature of relevant agreements. Ventex, 2019 WL 764130 at *6. The Board then
`
`extended the deadline for issuing a final decision to allow discovery and briefing.
`
`Ventex, 2019 WL 764130 at *1. Here, after denying CyWee’s request due to
`
`timing concerns, the panel extended the deadline for issuing a final decision
`
`because joinder petitioners were added. Paper 84; IPR2019-00143, Paper 49. In the
`
`FWD, the panel found that the citation to certain provisions in the MADA
`
`agreements raised an untimely “substantial new argument,” and refused to address
`
`it. Paper 94 at 31; Paper 95 at 31. The timing was driven by the fact that CyWee
`
`had to submit documents from the related ZTE IPR, where discovery was allowed,
`
`that it only received three days after the trial. Had the discovery been allowed as it
`
`should have been, it would have been timely.
`
`The Board’s reasoning for denying CyWee’s requested discovery cannot be
`
`reconciled with decisions in other cases. Thus, at a minimum the Institution Decision
`
`must be vacated until CyWee has received the discovery to which it is entitled. The
`
`only logical (and obvious) explanation why Google intentionally withheld LG’s
`
`
`
`14
`
`

`

`
`ODM status is because LG was time-barred. At the very least, the LG ODM contract
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`Case IPR2018-01257
`Patent No. 8,552,978
`
`with Google must be produced and Google must be required to explain why Huawei
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`was identified as an RPI for being an ODM while LG who occupied the exact same
`
`position was not. The PTO should take such potential fraud backed by strong
`
`circumstantial evidence seriously.
`
`IV. CONCLUSION
`The Director should either issue a certificate confirming the challenged
`
`claims, dismiss the Petition, or, alternatively vacate the FWD and allow CyWee
`
`Respectfully submitted,
`
`
`
`
`
`/Jay P. Kesan/
`Jay P. Kesan
`Reg. No. 37,488
`
`Counsel for Patent Owner
`Cywee Group Ltd.
`
`
`
`discovery regarding the RPI/privity issues.
`
`Dated: October 25, 2021
`
`
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`
`15
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`

`

`
`
`Certificate of Service
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`Case IPR2018-01257
`Patent No. 8,552,978
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on the date
`
`indicated below, a complete and entire copy of this submission, including the
`
`exhibits hereto, was provided by email to Petitioner’s counsel via email, as agreed
`
`to by Petitioner’s Service Information in the Petition submission, by serving the
`
`email address of record as follows:
`
`Counsel for Google:
`
`Matthew A. Smith
`smith@smithbaluch.com
`
`
`
`Andrew S. Baluch
`baluch@smithbaluch.com
`
`
`
`
`
`Yeuzhong Feng
`yfeng@brinksgilson.com
`
`ZTE_CyweeIPRs@brinksgilson.com
`
`
`Christopher M. Colice
`colice@smithbaluch.com
`
`Counsel for ZTE:
`
`James R. Sobieraj
`jsobierah@brinksgilson.com
`
`Andrea Shoffstall
`ashoffstall@brinksgilson.com
`
`Counsel for Samsung:
`
`Naveen Modi
`Chetan Bansal
`PH-Samsung-CyweeiIPR@paulhastings.com
`
`
`
`
`
`
`
`
`
`
`

`

`Case IPR2018-01257
`Patent No. 8,552,978
`
`
`
`Andrew Devkar
`andrew.devkar@morganlewis.com
`
`Adam Brooke
`adam.brooke@morganlewis.com
`
`
`
`
`
`
`
`
`
`/Jay P. Kesan/
`Jay P. Kesan
`Reg. No. 37,488
`
`Counsel for Patent Owner
`CyWee Group Ltd.
`
`
`
`Counsel for LG:
`
`Collin Park
`collin.park@morganlewis.com
`
`Jeremy Peterson
`jeremy.peterson@morganlewis.com
`
`MLB_CyweeLGE@morganlewis.com
`
`Counsel for Huawei:
`
`Kristopher L. Reed
`Benjamin M. Kleinman
`Norris P. Boothe
`HuaweiCywee@kilpatricktownsend.com
`
`
`
`
`Dated: October 25, 2021
`
`
`
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`
`