Filed: June 3, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`GOOGLE LLC,
`Petitioner
`
`v.
`
`CYWEE GROUP LTD.
`Patent Owner
`
`____________________
`
`Case IPR2018-01257
`Patent No. 8,552,978
`____________________
`
`PATENT OWNER’S REPLY IN SUPPORT OF MOTION FOR
`ADDITIONAL DISCOVERY
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`GOOGLE LLC,
`Petitioner
`
`v.
`
`CYWEE GROUP LTD.
`Patent Owner
`
`____________________
`
`Case IPR2018-01257
`Patent No. 8,552,978
`____________________
`
`PATENT OWNER’S REPLY IN SUPPORT OF MOTION FOR
`ADDITIONAL DISCOVERY
`
`
`
`
`
`
`
`
`Case IPR2018-01257
`Patent No. 8,552,978
`
`
`TABLE OF AUTHORITIES
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`Cases
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`Applications in Internet Time, LLC v. RPX Corp.,
` 897 F.3d 1336 (Fed. Cir. 2018) ......................................................................... 1, 2
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`Lumenthum Holdings, Inc. v. Capella Photonics, Inc.,
` IPR2015-00739, Paper 38 (Mar. 4, 2016) ............................................................. 1
`
`Samsung Elecs. Co., Ltd., et al. v. Seven Networks, LLC,
` IPR2018-01108 ................................................................................................. 2, 3
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`Ventex Co., Ltd., v. Columbia Sportswear N.A., Inc.,
` IPR2017-00651 (Jan. 24, 2019) .................................................................... 1, 2, 3
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`Statutes
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`35 U.S.C. § 312(a) .................................................................................................... 1
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`35 U.S.C. § 315(b) .................................................................................................... 1
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` i
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`2012
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`2013
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`Case IPR2018-01257
`Patent No. 8,552,978
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`
`LIST OF EXHIBITS
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`Declaration of Dr. Gary L. Blank [WITHDRAWN]
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`Curriculum Vitae of Dr. Gary L. Blank CV [WITHDRAWN]
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`Claim Construction Opinion and Order (Doc. 117), Cywee
`Group Ltd. v. Samsung Elecs. Co., Ltd., C.A. No. 2:17-CV-
`00140-WCB-RSP (E.D. Tex., July 9, 2018)
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`
`
`Expert Declaration of Dr. Joseph LaViola, Ph.D., in Support
`of Patent Owner Response
`
`Curriculum Vitae of Dr. Joseph LaViola, Ph.D.
`
`Order (Doc. 153), Cywee Group Ltd. v. Samsung Elecs. Co.,
`Ltd., C.A. No. 2:17-CV-00140-WCB-RSP (E.D. Tex., Aug.
`14, 2018)
`
`Memorandum Opinion (Doc. 55), CyWee Group Ltd. v.
`Motorola Mobility LLC, C.A. No. 17-780-RGA (D. Del.,
`Dec. 21, 2018)
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`File History of U.S. Application No. 10/396,439
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`File History of U.S. Application No. 12/413,722
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`File History of U.S. Application No. 13/367,058
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`Expert Declaration of Dr. Joseph LaViola, Ph.D., in Support
`of Motion to Amend
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`File History of U.S. Provisional Application 61/292558
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`Google’s Responses to CyWee’s Requests for Production,
`CyWee Group Ltd. v. Google, Inc., No. 1:18-cv-00571 (D.
`Del.) (Sep. 4, 2018)
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` ii
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`
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`2014
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`2015
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`2016
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`Google/Samsung 2011-2012 Mobile Application Distribution
`Agreement (Android)
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`Case IPR2018-01257
`Patent No. 8,552,978
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`CyWee Group, Ltd. v. Samsung Elecs. Co. Ltd., C.A. No.
`2:17-CV-00140-WCB-RSP, Doc. 1-1 (Exhibit A,
`Infringement Claim Chart)
`
`Web Print-Out “Introducing PAX: the Android Networked
`Cross-License Agreement,” available at
`<https://blog.google/outreach-initiatives/public-
`policy/introducing-pax-android-networked-cross-license-
`agreement/>
`
`
` iii
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`FAILURE TO COMPLY WITH § 315(b) IS JURISDICTIONAL
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`Case IPR2018-01257
`Patent No. 8,552,978
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`In its Opposition (“Opp.”), Petitioner demonstrates a total misunderstanding
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`I.
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`of the legal issues raised by Patent Owner’s Motion and ultimately only
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`demonstrates why the requested discovery is warranted. First, Petitioner argues
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`that discovery should be denied because “RPI issues are ‘not jurisdictional,’” citing
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`Lumenthum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38
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`(Mar. 4, 2016). Opp. at 1-2 n.1. But Lumenthum involved only § 312(a), not the §
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`315(b) time bar. The Federal Circuit has cautioned that it is error to conflate §
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`312(a) with § 315(b) because they are separate and distinct inquiries with separate
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`and distinct consequences. Applications in Internet Time, LLC v. RPX Corp., 897
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`F.3d 1336, 1364 (Fed. Cir. 2018) (Reyna, concurring). Ventex was designated as
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`precedential because it applies the Federal Circuit’s rule from AIT, and makes clear
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`that where an RPI/privity issue implicates § 315(b), the RPI/privity issue is non-
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`waivable and the time bar is jurisdictional. Ventex Co., Ltd., v. Columbia
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`Sportswear N.A., Inc., IPR2017-00651, Paper 148 at 2-4 (Jan. 24, 2019).
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`The remainder of Petitioner’s timeliness argument, see Opp. at 2-6, is mere
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`ipse dixit. Petitioner baldly asserts that there is “no exclusive relationship” because
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`Petitioner supplies its Android platform to multiple parties and that Patent Owner
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`“alleges that multiple parties should be RPIs.” Id. at 4. First, an exclusive
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`relationship is not required, only that Petitioner and the unnamed parties have a
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`Case IPR2018-01257
`Patent No. 8,552,978
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`“specifically structured, preexisting, and well established business relationship
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`with one another.” Ventex, Paper 148 at 10. As the very cases cited by Petitioner
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`demonstrate, Patent Owner is entitled to discovery regarding the true nature of the
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`relationship between Petitioner and other unidentified parties. See, e.g., Samsung
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`Elecs. Co., Ltd., et al. v. Seven Networks, LLC, IPR2018-01108, Papers 9 and 13.
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`Petitioner then challenges Patent Owner’s timeliness by citing to CyWee’s
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`prior requests in the district court regarding the Google-Samsung relationship.
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`Opp. at 5. Tellingly, Petitioner avoids disclosing that it refused to produce the
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`information, Ex. 2013, RFP Responses 3-5, that the case was stayed before CyWee
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`could move to compel, and that the information would have been subject to the
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`protective order in that case and thus could not be disclosed here. All this shows
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`then is that Petitioner has been on notice for months of the requested information
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`and is therefore not prejudiced by having to assemble and produce it now.
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`Finally, Petitioner’s assertion that “the designation of Ventex as precedential
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`did not change the relevant law,” Opp. at 2, is inconsistent with the Office’s
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`principles and practices. AIT involved a very specific set of facts as between a non-
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`practicing “patent risk management” entity and one of its clients. See generally,
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`AIT, 897 F.3d 1336. It was unclear from those facts how the Board would apply
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`AIT’s standard as between two practicing entities in a supplier-OEM relationship.
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`Ventex settled that issue. Denying additional discovery here on a jurisdictional
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`Case IPR2018-01257
`Patent No. 8,552,978
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`issue months before the oral hearing is scheduled cannot be justified when under
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`the precedent of Ventex, discovery was allowed on similar facts after oral hearing.
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`II.
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`PETITIONER’S GARMIN FACTORS ANALYSIS LACKS MERIT
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`Petitioner’s position regarding the Garmin factors is equally unavailing.
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`Contrary to Petitioner’s argument, Opp. at 6-7, Patent Owner proposed categories
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`for discovery in its Motion, not specific requests. And, as noted above, Petitioner is
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`already on notice regarding what Patent Owner is requesting. Petitioner’s self-
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`serving claim that nothing “useful” will be discovered, id. at 7, is entitled to no
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`weight. The lengths to which Petitioner has gone to avoid producing information
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`about the true nature of its relationships with the unnamed parties is itself prima
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`facie evidence that belies any such claim. RPI/privity is a case-by-case inquiry, so
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`the relationships must be examined based on the specific facts of this IPR. Ventex,
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`Paper 148 at 6. Even in Seven Networks, on which Petitioner relies, the Board
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`authorized discovery. Seven Networks, IPR2018-01108, Paper 9, 13. While the
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`Board ultimately found that Google was not RPI/privy to Samsung based on the
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`facts of that IPR, that does not preclude a finding that Samsung is an RPI/privy to
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`this IPR. The Board can only make a fully informed decision regarding Google’s
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`relationship with the unnamed parties after all relevant evidence has been produced
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`and the issue has been briefed as it was in Seven Networks and in Ventex.
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`Patent Owner’s Motion should therefore be granted.
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`Case IPR2018-01257
`Patent No. 8,552,978
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`Respectfully submitted,
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`
`
`/Jay P. Kesan/
`Jay P. Kesan
`Reg. No. 37,488
`
`Counsel for Patent Owner
`Cywee Group Ltd.
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`Dated: June 3, 2019
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on the date
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`Case IPR2018-01257
`Patent No. 8,552,978
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`indicated below, a complete and entire copy of this submission, including the
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`exhibits hereto, was provided by email to Petitioner’s counsel via email, as agreed
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`to by Petitioner’s Service Information in the Petition submission, by serving the
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`email address of record as follows:
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`Matthew A. Smith
`SMITH BALUCH LLP
`110 Alma St., Ste 109
`Menlo Park, CA
`(202) 669-6207
`smith@smithbaluch.com
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`Andrew S. Baluch
`SMITH BALUCH LLP
`110 Alma St., Ste 109
`Menlo Park, CA
`(847) 863-1645
`baluch@smithbaluch.com
`
`Christopher M. Colice
`SMITH BALUCH LLP
`110 Alma St., Ste 109
`Menlo Park, CA
`(617) 947.7280
`colice@smithbaluch.com
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`Dated: June 3, 2019
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`/Jay P. Kesan/
`Jay P. Kesan
`Reg. No. 37,488
`
`Counsel for Patent Owner
`Cywee Group Ltd.
`
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