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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`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 OBJECTION AND MOTION TO TERMINATE
`PROCEEDINGS UNDER UNITED STATES CONSTITUTION ARTICLE
`II, SECTION 2, CLAUSE 2
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`2001
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`2002
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`2003
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`2011
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`2012
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`2013
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`2014
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`Filed: December 3, 2019
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`LIST OF EXHIBITS
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`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 Gary L. Blank [WITHDRAWN]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 Gary L. Blank CV [WITHDRAWN]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)
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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 61/292,558
`
`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)
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`Google/Samsung 2011-2012 Mobile Application Distribution
`Agreement (Android)
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`1
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`2015
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`2016
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`2017
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`2018
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`2023
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`2024
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`2025
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`2026
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`2027
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`2028
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`Filed: December 3, 2019
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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/>
`
`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)
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`Declaration of Shun-nan Liou
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`CyWee, Where Technology Entertains 2009.09
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`JIL Game System Hardware Specification Ver. 1.5
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`JIL Phone Bill of Materials (May 24, 2010)
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`Photographs of JIL Phone Prototype
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`CyWee Phone API Reference
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`CyWee Motion Fusion Solution
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`CyWee Where technology entertains Technical Presentation:
`Motion Technology and Gaming Applications
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`July 29, 2009 email to James Shen, Qualcomm
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`2029
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`2039
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`2040
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`Filed: December 3, 2019
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`Attachment to July 29, 2009 email to James Shen,
`Qualcomm
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`CyWee/Qualcomm Mutual NDA (April 23, 2008)
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`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)
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`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)
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`Petition, LG Elec. Inc. v. CyWee Group Ltd., IPR2019-
`01203, Paper 1 (June 15, 2019)
`
`Web Print-Out “Introducing PAX: the Android Networked
`Cross-License Agreement,” available at
`<https://blog.google/outreach-initiatives/publicpolicy/
`introducing-pax-android-networked-cross-
`licenseagreement/>
`(previously filed as Ex. 2016)
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`2049
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`2050
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`2051
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`2052
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`Filed: December 3, 2019
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`Declaration of Collin W. Park
`(previously filed as Ex. 1038)
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`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-
`barapplies-
`to-privity-rpi-relationships-arising-after-ipr-petitionfiling>
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`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)
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`Google U.S. Trademark Reg. No. 4,692,657, Statement of
`Use (filed December 2, 2014)
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`Aug. 16-20, 2019, Correspondence between C. Key and M.
`Smith
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`LG Electronics, Inc. Filings for ZNFG011C (Google Pixel 2
`XL), External Photographs (submitted Sep. 11, 2017)
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`REDACTED
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`IPR 000013-17
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`REDACTED
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`IPR 000039-43
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`REDACTED
`, ZTE-IPR 000001-12
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`, ZTE-
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`REDACTED
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`, ZTE-IPR 000020-35
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`, ZTE-
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`4
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`Filed: December 3, 2019
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`REDACTED
`, ZTE-IPR 000045-67
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`REDACTED
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`, ZTE-IPR 000069-94
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`REDACTED
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`, ZTE-IPR 000141-149
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`Privilege Log for Petitioner ZTE (USA) Inc., ZTE (USA) Inc.
`v. CyWee Group Ltd., IPR2019-00143
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`Transcript of November 4, 2019 Hearing
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`5
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`
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`Pursuant to the Board’s email dated December 3, 2019, Patent Owner CyWee
`
`Group, Inc. hereby submits its Patent Owner’s Objection and Motion to Terminate
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`Filed: December 3, 2019
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`Proceedings Under United States Constitution Article II, Section 2, Clause 2.
`
`I.
`
`The Panel is Composed of Unconstitutionally Appointed Officers
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`On October 31, 2019, the Federal Circuit Court of Appeals issued its opinion
`
`in Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140, 2019 WL 5616010 (Fed.
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`Cir. Oct. 31, 2019). In Arthrex, the Federal Circuit held “that APJs1 are principal
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`officers under Title 35 as currently constituted. As such, they must be appointed by
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`the President and confirmed by the Senate; because they are not, the current structure
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`of the Board violates the Appointments Clause.” Arthrex, Inc., 2019 WL 5616010,
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`at *8.
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`The Director of the USPTO has unconditionally delegated the authority to
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`make institution decisions to APJs. See 37 C.F.R. § 42.4 (“The Board institutes the
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`trial on behalf of the Director.”); 37 C.F.R. § 42.108 (“When instituting inter partes
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`review, the Board may authorize the review to proceed on all or some of the
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`challenged claims and on all or some of the grounds of unpatentability asserted for
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`each claim.”). The regulations provide no mechanism for oversight by the Director
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`(or any other presidentially-appointed officer), the ability for the parties to appeal
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`the Board’s decision to the Director, or the ability for the Director to overturn an
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`1 APJs refers to Administrative Patent Judges.
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`1
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`Filed: December 3, 2019
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`
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`institution decision by the Board. In this case, the institution determination was made
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`by the Board, and the Board alone without any right of appeal to a constitutionally
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`appointed officer. Effectively, the Director has unconstitutionally abrogated any
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`responsibility for institution determinations and delegated the Board’s APJs
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`complete and unchecked power to make institution determinations.
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`The Board’s lack of oversight when rendering institution decisions is no
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`different than the rendering of final written decisions. As the Federal Circuit noted
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`in Arthrex, “[t]he lack of any presidentially-appointed officer who can review,
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`vacate, or correct decisions by the APJs combined with the limited removal power
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`lead us to conclude . . . [that APJs] are principal officers.” Arthrex, Inc., 2019 WL
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`5616010, at *8. There is no mechanism under the regulations for the Director to
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`“review, vacate, or correct [institution] decisions by the APJs” so when rendering
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`institution decisions APJs are acting as principal officers. Therefore, the unchecked
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`delegation of authority to APJs renders institution determinations under the AIA
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`unconstitutional as applied.
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`II. Administrative Patent Judges are Judicial Officers
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`Inter partes reviews (“IPRs”) replaced the previous reexamination procedure
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`by converting the process from an examinational to an adjudicative one. See Abbott
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`Labs. v. Cordis Corp., 710 F.3d 1318, 1326 (Fed. Cir. 2013) (quoting H.R. Rep. No.
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`112–98, pt. 1, at 46–47 (2011)). An adjudicative proceeding is necessarily presided
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`2
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`Filed: December 3, 2019
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`
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`over by a judicial officer. APJs are, by the act of Congress that created them, judicial
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`officers of the United States. The Federal Circuit confirmed APJs’ status as judicial
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`officers in Abbot Labs. To hold otherwise would make APJs simply re-titled patent
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`examiners.
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`III.
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`Judicial Officers’ Actions are Void if Not Constitutionally
`Appointed
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`
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`In Arthrex, the Federal Circuit effectively applied the de facto officer doctrine
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`in an attempt to save all rulings made by the original APJ panel that was
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`unconstitutionally appointed by remanding the case to the Patent Trial and Appeal
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`Board (“PTAB”) with instructions that a new APJ panel properly appointed could
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`decide the case on the same record. See Arthrex, Inc., 2019 WL 5616010, at *12
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`(“Finally, we see no error in the new panel proceeding on the existing written record
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`but leave to the Board’s sound discretion whether it should allow additional briefing
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`or reopen the record in any individual case.”). The Federal Circuit’s allowance of
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`the prior orders and decisions of the unconstitutionally appointed APJ panel to stand
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`(but not the final written decision) was effectively a ruling that the de facto officer
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`doctrine applied to all such non-final rulings of unconstitutionally appointed APJ
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`panels.
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`But the United States Supreme Court has repeatedly ruled that the de facto
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`officer doctrine does not apply to judicial officers of the United States. Nguyen v
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`United States, 539 U.S. 69, 77 (2003). The Nguyen holding is consistent with and
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`3
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`
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`Filed: December 3, 2019
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`
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`relies upon Ryder v United States, 515 U.S. 177 (1995). The rule that the de facto
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`officer doctrine does not apply to administrative law judges (“ALJs”) was made clear
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`in Lucia v. S.E.C., 138 S. Ct. 2044, 2055–56 (2018). APJs should not be treated any
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`differently than their ALJ brethren.
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`The Federal Circuit has unconditionally ruled the decision to institute this IPR
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`was made by an unconstitutionally appointed APJ panel. That institution decision is
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`therefore void from its inception. Nguyen, 539 U.S. at 78 (“This Court succinctly
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`observed: ‘If the statute made him incompetent to sit at the hearing, the decree in
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`which he took part was unlawful, and perhaps absolutely void, and should certainly
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`be set aside or quashed by any court having authority to review it by appeal, error
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`or certiorari.’”) (citing American Constr. Co. v. Jacksonville, T. & K.W.R. Co., 148
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`U.S. 372, 387 (1893)) (emphasis added).
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`IV. Remand is the Only Option and Renders the Proceedings Time-
`Barred
`
`
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`The only option when a judicial officer is found unconstitutionally appointed
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`is a remand to have the matter reheard in its entirety by a duly appointed officer in
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`conformity with the Constitution. Nguyen, 539 U.S. at 83; Lucia, 138 S. Ct. at 2055–
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`56. In this case, however, remand would be futile because the time for an institution
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`decision by a properly appointed APJ panel has long since passed. 35 U.S.C. §
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`314(b)(2); see PersonalWeb Tech., LLC v. FaceBook, Inc., 2014 WL 116350, at *2
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`(N.D. Cal. January 13, 2014)
`
`(“The PTO must decide whether
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`to
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`4
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`
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`Filed: December 3, 2019
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`
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`institute IPR within three months of the patent owner's preliminary response, or
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`in the event no response is filed, by the last date on which the response could have
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`been filed.”) (emphasis added). Even if a new APJ panel instituted, this IPR would
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`be in direct violation of § 314(b)(2). Further, the final decision could not possibly be
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`reached by a newly appointed panel within the 18-month deadlines2 of 35 U.S.C. §
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`316(a)(11); 37 C.F.R. § 42.100(c). The deadline for a final written decision, like the
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`institution deadline, is not extendable.
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`The PTAB’s ability to make a new institution decision and, if necessary, issue
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`a final written decision within the statutory deadline is further constrained by the
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`fact that the supposed “fix” provided by the Federal Circuit in Arthrex violates
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`statutory requirements of the Administrative Procedures Act. In Arthrex, the Federal
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`Circuit struck down restrictions on the removal of APJs, thereby permitting the
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`Director to remove APJs without cause. Arthrex, Inc., 2019 WL 5616010, at *10.
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`Administrative
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`law
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`judges presiding over proceedings governed by
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`the
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`Administrative Procedure Act, however, can only be removed in cases where “good
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`cause [is] established and determined by the Merit Systems Protection Board on the
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`record after opportunity for hearing before the Board.” 5 U.S.C. § 7521. The Federal
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`Circuit has already recognized that inter partes review is a formal adjudication
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`2 This assumes a six-month extension was sought and granted before the 1 year
`deadline passed.
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`5
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`
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`Filed: December 3, 2019
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`
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`governed by the Administrative Procedures Act. Belden Inc. v. Berk-Tek LLC, 805
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`F.3d 1064, 1080 (Fed. Cir. 2015). Absent congressional action exempting inter
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`partes review from the formal adjudication requirements of the Administrative
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`Procedures Act, APJs cannot preside over inter partes review proceedings while
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`simultaneously complying with both constitutional and statutory requirements.
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`Because there is no possibility of an institution decision within the time frame
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`prescribed by the America Invents Act (“AIA”) or any possibility of a final written
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`decision being issued within the AIA deadlines if a new panel were to start this
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`process over from scratch as required by Nguyen, Ryder, and Lucia, this IPR must
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`be terminated with prejudice. Any other result would thwart the fundamental
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`purpose of the AIA that created IPRs for the purposes of “providing quick and cost-
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`effective alternatives to litigation.” H.R. Rep. No. 112–98, pt. 1, at 48 (2011), 2011
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`U.S.C.C.A.N. 67, 78; 77 F. Reg. 48680–01 (Aug. 14, 2012); Universal Elecs., Inc.
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`v. Universal Remote Control, Inc., 943 F. Supp. 2d 1028, 1029–30 (C.D. Cal. 2013).
`
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`6
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`Patent Owner CyWee Group, Ltd. objects to these proceedings as being held
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`before judicial officers that were unconstitutionally appointed and asks that these
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`Filed: December 3, 2019
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`Respectfully submitted,
`
`
`
`
`
`/s /Jay P. Kesan
`Jay P. Kesan
`Reg. No. 37,488
`
`Counsel for Patent Owner
`Cywee Group Ltd.
`
`proceedings be terminated with prejudice.
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` Dated: December 3, 2019
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`7
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`
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`Certificate of Service
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`Filed: December 3, 2019
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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
`
`
`
`
`
`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-Cywee-IPR@paulhastings.com
`
`
`Yeuzhong Feng
`yfeng@brinksgilson.com
`
`ZTE_CyweeIPRs@brinksgilson.com
`
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`Counsel for LG:
`
`Collin Park
`collin.park@morganlewis.com
`
`Jeremy Peterson
`jeremy.peterson@morganlewis.com
`
`Filed: December 3, 2019
`
`
`
`Andrew Devkar
`andrew.devkar@morganlewis.com
`
`Adam Brooke
`adam.brooke@morganlewis.com
`
`
`MLB_CyweevsLGE@morganlewis.com
`
`Counsel for Huawei:
`
`Kristopher L. Reed
`Benjamin M. Kleinman
`Norris P. Boothe
`HuaweiCywee@kilpatricktownsend.com
`
`
`
`
`
`
`
`/s /Jay P. Kesan
`Jay P. Kesan
`Reg. No. 37,488
`
`Counsel for Patent Owner
`Cywee Group Ltd.
`
`
`
`
`Dated: December 3, 2019
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