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Filed: November 14, 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
`____________________
`
`
`PETITIONER GOOGLE LLC’S OBJECTIONS TO PATENT
`OWNER’S SUPPLEMENTAL SUBMISSION
`
`
`
`
`
`
`
`
`
`

`

`IPR2018-01257
`Patent No. 8,552,978
`
`Pursuant to the Board’s Order dated November 6, 2019 (Paper 75), Petitioner
`
`Google LLC (“Google”) hereby submits its Objections to Patent Owner’s
`
`Supplemental Submission of Information (“CyWee’s Submission”). The citations
`
`and statements in CyWee’s Submission are being offered well after the Board’s Oral
`
`Hearing (and after the close of evidence), and shortly before the Board’s one-year
`
`deadline for issuing a Final Written Decision.
`
`Objection to Paragraphs 1-12 of CyWee’s Submission.
`
`Google objects to paragraphs 1-12 of CyWee’s Submission because Google
`
`has never had the opportunity to respond to the arguments suggested in these
`
`paragraphs. Specifically, paragraphs 1-12 appear to posit, for the first time, that
`
`Google has direct control over manufacturing of Android devices in some allegedly
`
`relevant way (i.e. a “control theory”). This control theory argument was not made
`
`in the Motion to Terminate, but instead is being made well after the Board’s Oral
`
`Hearing (and after the close of evidence) and shortly before the Board’s one-year
`
`deadline for issuing a Final Written Decision.
`
`The introduction of such a control theory, without providing Google adequate
`
`notice and opportunity to respond, would violate due process and the Administrative
`
`Procedure Act. See, e.g., Genzyme Therapeutic Prods. L.P. v. Biomarin Pharm. Inc.,
`
`825 F.3d 1360, 1367 (Fed. Cir. 2016) (“The critical question for compliance with
`1
`
`
`
`

`

`IPR2018-01257
`Patent No. 8,552,978
`
`the APA and due process is whether [a party] received ‘adequate notice of the issues
`
`that would be considered, and ultimately resolved, at that hearing.’”) (citing Pub.
`
`Serv. Comm'n of Ky. v. FERC, 397 F.3d 1004, 1012, 365 U.S. App. D.C. 53 (D.C.
`
`Cir. 2005) (Roberts, J.)); Belden, Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed.
`
`Cir. 2015); 5 U.S.C. §§ 554(b)-(c); 557(c).
`
`Furthermore, the introduction of a control theory would violate 37 C.F.R.
`
`§ 42.23(b)’s requirement that “[a]ll arguments for the relief requested in a motion
`
`must be made in the motion,” as well as § 42.123(b)’s requirement to limit
`
`supplemental information to that which “reasonably could not have been obtained
`
`earlier” and is “in the interests-of-justice.” CyWee could have argued its control
`
`theory, such as it is, when it filed its Motion to Terminate. Notably, throughout the
`
`first twelve paragraphs of its Submission, CyWee cross-cites to exhibits to which it
`
`had access at the time it filed its Motion to Terminate. See CyWee’s Submission,
`
`¶¶1.f., 2.d., 3.e., 4.h., 5 (entire paragraph citing public documents), 6.d. 9.e., 10.f.,
`
`11.e., 12.e. Yet, until now, CyWee had never cited these provisions of the
`
`previously-available exhibits. This indicates that CyWee is merely attempting to
`
`introduce arguments that it could have raised earlier, but did not. Moreover, even if
`
`its theories were bound to the new documents, CyWee could have sought additional
`
`
`
`2
`
`

`

`IPR2018-01257
`Patent No. 8,552,978
`
`discovery relating to ZTE as early as December 2018, but unreasonably delayed in
`
`doing so.
`
`Objection to Paragraphs 13-14 of CyWee’s Submission.
`
`Google objects to paragraphs 13-14 of CyWee’s Submission because Google
`
`has never had the opportunity to respond to the arguments suggested in these
`
`paragraphs. Paragraphs 13-14 appear to make arguments regarding indemnity
`
`obligations of the parties to the agreement with respect to intellectual property.
`
`Paragraph 13 appears to argue that no party is indemnified because each party
`
`remains liable for violations of patent rights, while paragraph 14 appears to assert
`
`that Google is indemnified as to certain claims. Both of these positions are new.
`
`In its Motion to Terminate, CyWee did not argue that Google was the
`
`indemnitee, but rather argued that Google was the indemnitor. CyWee stated that
`
`“MADA [sic] contained indemnification provisions for applications running on the
`
`Android OS and for Android-based devices. Ex. 2014, §§ 11.1-11.2.” CyWee
`
`Motion to Terminate, p. 5, SOF ¶6. CyWee then argued that “Google also has a
`
`history of including indemnification provisions” in its Android agreements (id. at
`
`10, 12), and that “[t]he MADA indemnification clauses are an example of an
`
`agreement to be bound in litigation proceedings based on applications developed for
`
`the Android OS and for Android-based devices.” Id. at 12. CyWee, however, did
`3
`
`
`
`

`

`IPR2018-01257
`Patent No. 8,552,978
`
`not argue that each party was liable for violations of intellectual property rights
`
`(CyWee’s Submission, ¶13), nor that Google was indemnified (CyWee’s
`
`Submission, ¶13). After Google responded (see Opposition, Paper 51) to the limited
`
`indemnification-related arguments that CyWee did make in its Motion to Terminate,
`
`CyWee never mentioned indemnification again in its Reply in support thereof (see
`
`Reply, Paper 65).
`
`The introduction of the new theories suggested in paragraphs 13-14, that
`
`each party remains solely liable or that Google is an indemnitee under the
`
`agreements, at this late stage and without an opportunity to respond, would violate
`
`due process, the Administrative Procedure Act, and 37 C.F.R. § 42.123(b) for the
`
`same reasons given with respect to ¶¶1-12 of CyWee’s Submission.
`
`Objection to Paragraph 15 of CyWee’s Submission.
`
`Google objects to paragraph 15 of CyWee’s Submission because Google has
`
`never had the opportunity to respond to the specific arguments this paragraph
`
`suggests. Paragraph 15 expressly argues (in violation of the Board’s October 28
`
`Order limiting CyWee to “brief, nonargumentative statements”) that the existence
`
`of a joint defense agreement demonstrates a coordination between the parties, as
`
`well as a state of mind of the parties allegedly bears on the RPI and privity questions.
`
`CyWee specifically makes new arguments concerning the timing of the joint defense
`4
`
`
`
`

`

`IPR2018-01257
`Patent No. 8,552,978
`
`agreement with respect to patent infringement assertions against Google, and the
`
`nature of the community of interest privilege.
`
`CyWee did not make any argument related to a joint defense agreement in its
`
`Motion to Terminate. In its Reply to the Motion to Terminate (Paper 65), CyWee,
`
`for the first time, mentioned the existence of joint defense agreement, argued that it
`
`arose “before Google was sued directly,” and noted that LG had claimed a
`
`community of interest privilege. CyWee Reply to Motion to Terminate, p. 3.
`
`Google had a limited opportunity to respond to CyWee’s Reply argument
`
`concerning the joint defense agreement during the Oral Hearing (Tr. 87:10-19), but
`
`has never had an opportunity to respond to CyWee’s expanded reasoning concerning
`
`the import of the alleged timing of events. Nor has Google had an opportunity to
`
`respond to CyWee’s speculation concerning the basis for the community of interest.
`
`The introduction of CyWee’s new arguments, at this late stage and without an
`
`opportunity to respond, would violate due process, the Administrative Procedure
`
`Act, and 37 C.F.R. §§ 42.23(b) and 42.123(b) for the same reasons given with
`
`respect to ¶¶1-12 of CyWee’s Submission.
`
`
`
`
`
`
`
`
`
`
`
`
`5
`
`

`

`Dated: November 14, 2019
`
`
`
`
`
`
`
`IPR2018-01257
`Patent No. 8,552,978
`
`
`Respectfully submitted,
`
`/Matthew A. Smith/
`Matthew A. Smith
`Reg. No. 49,003
`SMITH BALUCH LLP
`1100 Alma St., Ste. 109
`Menlo Park, CA 94025
`(202) 669-6207
`
`Counsel for Petitioner Google LLC
`
`
`
`6
`
`

`

`IPR2018-01257
`Patent No. 8,552,978
`
`
`Certificate of Service
`
`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 the parties’ counsel via email, by
`
`transmitting to the email addresses of record as follows:
`
`
`
`Ari Rafilson
`arafilson@shorechan.com
`Michael Shore
`mshore@shorechan.com
`
`
`
`Yeuzhong Feng
`yfeng@brinksgilson.com
`
`ZTE_CyweeIPRs@brinksgilson.c
`om
`
`
`
`Counsel for ZTE:
`
`James R. Sobieraj
`jsobierah@brinksgilson.com
`
`Andrea Shoffstall
`ashoffstall@brinksgilson.com
`
`Counsel for Samsung:
`
`Naveen Modi
`Chetan Bansal
`PH-Samsung-Cywee-IPR@paulhastings.com
`
`
`Counsel for CyWee
`
`Jay Kesan
`JKesan@dimuro.com
`Cecil Key
`CKey@dimuro.com
`
`
`
`
`
`
`
`
`
`7
`
`

`

`IPR2018-01257
`Patent No. 8,552,978
`
`
`
`
`Andrew Devkar
`andrew.devkar@morganlewis.com
`
`Adam Brooke
`adam.brooke@morganlewis.com
`
`
`
`
`Counsel for LG:
`
`Collin Park
`collin.park@morganlewis.com
`
`Jeremy Peterson
`jeremy.peterson@morganlewis.c
`om
`MLB_CyweevsLGE@morganlewis.com
`
`Counsel for Huawei:
`
`Kristopher L. Reed
`Benjamin M. Kleinman
`Norris P. Boothe
`HuaweiCywee@kilpatricktownsend.com
`
`
`
`Dated: November 14, 2019
`
`
`
`
`
`/Matthew A. Smith/
`Matthew A. Smith
`Reg. No. 49,003
`SMITH BALUCH LLP
`1100 Alma St., Ste. 109
`Menlo Park, CA 94025
`(202) 669-6207
`
`Counsel for Petitioner Google LLC
`
`8
`
`

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