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`Filed: August 30, 2019
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`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
`
`____________________
`
`Case IPR2018-01257
`Patent No. 8,552,978
`____________________
`
`
`
`PATENT OWNER’S REPLY IN SUPPORT OF MOTION TO TERMINATE
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`
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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
`
`LIST OF EXHIBITS
`
`Declaration of Dr. Gary L. Blank [WITHDRAWN]
`
`Curriculum Vitae of Dr. Gary L. Blank CV [WITHDRAWN]
`
`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)
`
`
`
`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)
`
`File History of U.S. Application No. 10/396,439
`
`File History of U.S. Application No. 12/413,722
`
`File History of U.S. Application No. 13/367,058
`
`Expert Declaration of Dr. Joseph LaViola, Ph.D., in Support
`of Motion to Amend
`
`File History of U.S. Provisional Application 61/292,558
`
`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)
`
`ii
`
`
`
`
`2014
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`2015
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`2016
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`2017
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`2018
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`2019
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`2020
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`2021
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`2022
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`2023
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`2024
`
`2025
`
`2026
`
`2027
`
`Case IPR2018-01257
`Patent No. 8,552,978
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`Google/Samsung 2011-2012 Mobile Application Distribution
`Agreement (Android)
`
`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/>
`
`List of IPR Petitions Filed against Seven Networks, LLC
`
`Demonstrative: Relationship of Android Defendants
`
`Transcript of Call Authorizing Patent Owner to File Motion
`to Terminate (July 8, 2019)
`
`Declaration of Shun-nan Liou
`
`CyWee, Where Technology Entertains 2009.09
`
`JIL Game System Hardware Specification Ver. 1.5
`
`JIL Phone Bill of Materials (May 24, 2010)
`
`Photographs of JIL Phone Prototype
`
`CyWee Phone API Reference
`
`CyWee Motion Fusion Solution
`
`CyWee Where technology entertains Technical Presentation:
`Motion Technology and Gaming Applications
`
`
`iii
`
`
`
`
`2028
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`2029
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`2030
`
`2031
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`2032
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`2033
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`2034
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`2035*
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`2036
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`2037
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`2038
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`2039
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`Case IPR2018-01257
`Patent No. 8,552,978
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`July 29, 2009 email to James Shen, Qualcomm
`
`Attachment to July 29, 2009 email to James Shen,
`Qualcomm
`
`CyWee/Qualcomm Mutual NDA (April 23, 2008)
`
`Attitude.cpp file (last modified February 12, 2010)
`
`Expert Declaration of Dr. Joseph LaViola, Ph.D., in Support
`of Patent Owner’s Reply in Support of Motion to Amend
`
`Transcript of Deposition of Prof. Majid Sarrafzadeh (July 24,
`2019)
`
`Attitude.cpp file, with Line Numbers (last modified February
`12, 2010)
`
`Amended Notice of Deposition of Collin W. Park
`(previously filed as Paper 62)
`
`Complaint for Patent Infringement, CyWee Group Ltd., v.
`Samsung Elec. Co., Ltd., et al., C.A. No. 2;17-cv-00140-
`WCB-RSP, Dkt. 1 (filed Feb. 17, 2017)
`
`Petition, LG Elec. Inc. v. CyWee Group Ltd., IPR2019-
`00559, Paper 1 (Jan. 10, 2019)
`
`Petition, LG Elec. Inc. v. CyWee Group Ltd., IPR2019-
`00560, Paper 1 (Jan. 10, 2019)
`
`Petition, LG Elec. Inc. v. CyWee Group Ltd., IPR2019-
`01203, Paper 1 (June 15, 2019)
`
`
`
`
`* Pursuant to 37 C.F.R. § 42.6(d) previously filed papers and exhibits will not be
`filed again under the new exhibit numbers unless so requested by the Board.
`
`iv
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`
`
`2040*
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`2041*
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`2042
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`2043
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`2044
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`2045
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`2046
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`2047
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`2048
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`Case IPR2018-01257
`Patent No. 8,552,978
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`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/>
`(previously filed as Ex. 2016)
`
`Declaration of Collin W. Park
`(previously filed as Ex. 1038)
`
`Web Print-Out, Morgan Lewis, Lawflash Article “Statutory
`Time Bar Applies to Privity and RPI Relationships Arising
`After Filing of IPR Petition,” (June 27, 2019), available at
`< https://www.morganlewis.com/pubs/statutory-time-bar-
`applies-to-privity-rpi-relationships-arising-after-ipr-petition-
`filing>
`
`CyWee Litigation Timeline
`
`CyWee Group, Ltd. v. LG Elecs., Inc., et al., Exemplary
`Claim Chart
`Transcript of Deposition of Collin W. Park (August 21,
`2019)
`
`Google U.S. Trademark Reg. No. 4,692,657, Statement of
`Use (filed December 2, 2014)
`
`Aug. 16-20, 2019, Correspondence between C. Key and M.
`Smith
`
`LG Electronics, Inc. Filings for ZNFG011C (Google Pixel 2
`XL), External Photographs (submitted Sep. 11, 2017)
`
`v
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`
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`Google Misstates The Law. First, Google asserts that “RPI is the
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`Case IPR2018-01257
`Patent No. 8,552,978
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`
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`relationship between a party and a proceeding; it does not describe the relationship
`
`between parties.” Opp at 8 (emphasis in original).1 The Federal Circuit disagrees
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`and has made clear that the RPI and Privity analyses are concerned with
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`“evaluating the relationship between a party bringing a suit and non-party.” AIT,
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`897 F.3d 1336, 1356 (Fed. Cir. 2018). The Federal Circuit also made clear that it is
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`the relationship as it relates to the subject matter of the proceeding that is relevant.
`
`Id. at 1349, 1353. It is impossible under AIT for LG to not be at least an RPI to
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`Google’s Petition when Google is admittedly an RPI to LG’s identical joinder
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`petition. The relationship between the parties is the same. The subject matter is the
`
`same. Google’s contrary positions simply have no legal or factual support.
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`Second, Google insists that this IPR is not being “directed, funded, or
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`controlled” by any of the Android Defendants. Opp. at 4, 7-8. But the Federal
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`Circuit has rejected the “direction and control” test as inappropriately narrow. AIT,
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`897 F.3d at 1356. Rather, RPI/Privity determinations require “a flexible approach...
`
`with an eye toward determining whether the non-party is a clear beneficiary that
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`
`
`1 Citing Aruze Gaming Macau, Ltd. v. MGT Gaming, Inc., IPR2014-01288, Paper
`13 at 11 (Feb. 20, 2015), Petitioner asserts that Aruze was cited favorably by AIT,
`897 F.3d at 1365, n.7. However, Aruze was cited for the proposition that § 315 and
`§ 312(a)(2) are distinct inquires, not for what Petitioner asserts here. See id.
`Google’s contrary indication is disingenuous and borders on an outright attempt to
`mislead the Board.
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`1
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`
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`has a preexisting, established relationship with the petitioner.” Id. at 1351
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`Case IPR2018-01257
`Patent No. 8,552,978
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`(emphasis added). When faced with the proper legal standard put forth in AIT,
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`Google cannot refute that the Android Defendants are RPIs/Privies.
`
`The Android Defendants Are “Clear Beneficiaries” Of These
`
`Proceedings With Preexisting, Established Relationships. Notably, Google
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`never denies that any of the Android Defendants are “clear beneficiaries” of this
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`IPR or that they have “preexisting, established relationships” with Google. Google
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`instead limply asserts that it has its own, separate interests in invalidating CyWee’s
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`Patents because it was sued separately. Opp. at 9. The controlling law makes clear
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`that the point of the RPI/Privity analysis “is not to probe [the petitioner]’s interest
`
`(it does not need any); rather, it is to probe the extent to which [the non-party]...
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`has an interest in and will benefit from [the petitioner]’s actions.” Id. at 1353;
`
`Ventex co., Ltd. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 148,
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`9-10 (PTAB, Jan. 24, 2019). Each Android Defendant has a “considerable interest
`
`in [Google]’s pursuit of an invalidity determination for claims of both the ‘[438]
`
`and ‘[978] patents... There cannot be any credible assertion that a determination of
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`invalidity as to the claims of the patents would not inure to the benefit of” the
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`Android Defendants in the related district court litigations. Id. at 9.
`
`Mr. Park
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`2
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`Mr. Park also admits
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`Case IPR2018-01257
`Patent No. 8,552,978
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` 2 Ex. 2045, 26:22-27:19, 29:8-30:1; 41:7-19.
`
`
`
`
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` and he asserted a
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`common interest privilege as between LG and Google. Id. at 22:2-30:1; 37:5-38-8,
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`41:7-19, 45:3-9. These facts establish a clear, preexisting legal relationship, which
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`at a minimum brings into serious question the accuracy of Google’s identification
`
`of RPIs/Privies. In response, Google has refused to produce any relevant
`
`agreements despite its duty to “serve relevant information that is inconsistent with
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`[its] position” that the Android Defendants are not RPIs/Privies. 37 C.F.R.
`
`42.51(b)(1)(iii); Ex. 2047 at 1. By refusing to produce facts to rebut CyWee’s
`
`evidence,3 Google must accept the resulting consequence that it has failed to meet
`
`its burden of demonstrating that it has identified all RPIs/Privies as the statute
`
`requires. I.M.L. SLU v. WAG Acquisition, LLC, IPR2016-01658, 2018 WL
`
`1128521 at *5-*6 (PTAB Feb. 27, 2018).
`
`Google has long maintained substantial business relationships with the
`
`
`
`2
` Ex.
`2045, 26:22-27:19; 29:8-30:1. That is the exact same “interest” an RPI has with an
`IPR Petitioner because that is the goal of every IPR. AIT, 897 F.3d at 1348.
`
` 3
`
` The Board granted CyWee’s Motion for Additional Discovery in the related
`IPR2019-00143, Paper 20, based on similar evidence as presented here.
`
`3
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`
`
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`Android Defendants relevant to the Petition subject matter. CyWee has accused the
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`Case IPR2018-01257
`Patent No. 8,552,978
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`Defendants’ hardware running Google’s Android OS of infringement. Google
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`relied on a Samsung phone as its own “evidence of use” to register its ANDROID
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`cellphone trademark. Ex. 2046. Google is the curator of the Android software
`
`repository. Ex. 1030 at 2. According to its FCC filings, LG manufactures the Pixel
`
`2 XL for Google, see Ex. 2048, one of the four Google devices CyWee accused in
`
`its district court complaint against Google. Ex. 1026, at 16-17 ¶ 38, and 23-25 ¶¶
`
`91-107. Google’s sole explanation for identifying Huawei as an RPI to this IPR
`
`was
`
`
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`Ex. 2047 at 4. LG is the ODM for the Google Pixel
`
`2 XL, an accused device in the Google lawsuit. Ex. 2045, 228:13-20; Ex. 2048.
`
`Thus,
`
` it should have named
`
`LG as an RPI. It is therefore clear that Google is acting on behalf of all members of
`
`the common interest and joint defense groups in filing its IPR, including time-
`
`barred Samsung and LG.
`
`Collin Park’s Declaration Is Not Competent Or Credible. LG correctly
`
`identified that it has an RPI relationship with Google. Realizing that its honest
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`disclosure is fatal to the Google IPRs, LG’s lead IPR counsel now attempts to
`
`retreat, in part, by arguing for an RPI standard expressly rejected by the Federal
`
`Circuit in AIT,
`
` Ex. 2045, 191:3-14. As
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`4
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`
`
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`a result, Mr. Park’s opinions and conclusions on RPIs/Privies lack the proper, legal
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`Case IPR2018-01257
`Patent No. 8,552,978
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`foundation. Mr. Park also cannot provide any contrary factual evidence because he
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`admitted he
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`, despite a legal
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`obligation to do so. Id. at 96:14-101:15, 116:8-119:1.
`
`Mr. Park cites to several specific IPR Petitions filed by Morgan Lewis,
`
`claiming it is his firm’s common practice to disclose parties to a petition to which
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`joinder is sought as RPIs out of abundance of caution, even when it does not
`
`believe those parties to be RPIs. Ex. 1036, ¶ 10 (citing to IPRs 2017-01617, 01682,
`
`and 01808); Ex. 2045, 69:17-70:10. However, review of the cited IPR Petitions
`
`shows that Morgan Lewis does the opposite. The cited IPR Petitions clearly
`
`indicate which parties are not believed to be RPIs. Morgan Lewis’s other clients
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`identified parties that “are co-defendants with Petitioner [] in the pending multi-
`
`district litigation identified below [] but are not real parties-in-interest to this
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`proceeding.” See, e.g., IPR2017-01617, Paper 1 at 4. That did not happen here.
`
`LG’s petitions here unequivocally identify Google and Huawei as RPIs.
`
`Mr. Park’s declaration deserves no weight. Mr. Park admits
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` when he executed his declaration and admits
`
`
`
`
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` as required by statute. His declaration
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`is at best materially misleading as to whether Morgan Lewis has used similar
`
`language in other IPR petitions. The IPRs must be terminated.
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`5
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`Case IPR2018-01257
`Patent No. 8,552,978
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`Respectfully submitted,
`
`
`
`
`
`
`
`/Jay P. Kesan/
`Jay P. Kesan
`Reg. No. 37,488
`
`Counsel for Patent Owner
`Cywee Group Ltd.
`
`
`
`Dated: August 30, 2019
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`6
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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
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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 Petitioners’ counsel via email, as agreed
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`to by Petitioners’ Service Information in the Petition submissions, by serving the
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`email addresses 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
`
`
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`
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`Counsel for LG:
`
`Collin Park
`collin.park@morganlewis.com
`
`Jeremy Peterson
`jeremy.peterson@morganlewis.com
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`Case IPR2018-01257
`Patent No. 8,552,978
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`
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`Andrew Devkar
`andrew.devkar@morganlewis.com
`
`Adam Brooke
`adam.brooke@morganlewis.com
`
`
`
`
`
`
`
`
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`
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`
`
`/Jay P. Kesan/
`Jay P. Kesan
`Reg. No. 37,488
`
`Counsel for Patent Owner
`Cywee Group Ltd.
`
`MLB_CyweeLGE@morganlewis.com
`
`Counsel for Huawei:
`
`Kristopher L. Reed
`Benjamin M. Kleinman
`Norris P. Boothe
`HuaweiCywee@kilpatricktownsend.com
`
`
`
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`Dated: August 30, 2019
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