UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ZTE (USA), INC.
`Petitioner,
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`v.
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`FRACTUS, S.A.
`Patent Owner.
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`Case IPR2018-01461
`Patent 9,054,421
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`PATENT OWNER’S OPPOSITION TO
`PETITIONER'S REQUEST FOR REHEARING
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ZTE (USA), INC.
`Petitioner,
`
`v.
`
`FRACTUS, S.A.
`Patent Owner.
`
`Case IPR2018-01461
`Patent 9,054,421
`
`
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONER'S REQUEST FOR REHEARING
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Case IPR2018-01461
`Patent No. 9,054,421
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`Pursuant to the Board's Order of April 10, 2019, Patent Owner (PO) provides
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`this Opposition to the Request for Rehearing (Request).
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`Petitioner Incorrectly Alleges that the Related Litigation is Stayed
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`While addressing the Board’s decision under §314, Petitioner states that the
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`related litigation "has been stayed since October 4, 2018" and "[t]he court recently
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`reaffirmed the stay." Request at 2, 14. This is not the case. For example, on March
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`15, 2019, the court issued a claim construction order reaffirming the earlier
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`construction of the terms relevant to the present proceeding. Ex2038, passim.
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`Petitioner failed to provide the Board with this order even though it was issued on
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`the same day as Petitioner's Ex. 1029 from the litigation. While litigation deadlines
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`were technically stayed pending the new court’s scheduling order, the claim
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`construction order evidences the new court's clear intent to proceed with the case.
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`The parties are also proceeding with the case. On April 12, 2019, the parties
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`submitted a Joint Notice Regarding Scheduling Conference (1) requesting a trial date
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`predating any conclusion to an instituted IPR, (2) confirming that fact discovery has
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`completed, and (3) requesting a close to expert discovery on May 31, 2019. Ex2039
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`at 1-3. Therefore, as noted in the POPR, the litigation is in its final stages and will
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`likely go to trial before a completed IPR.
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`Subsequent Litigation Developments Reinforce Exercising § 314 Discretion
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`The above-referenced claim construction order and joint notice illustrate that
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`1
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`Case IPR2018-01461
`Patent No. 9,054,421
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`the Board correctly exercised its § 314 discretion. The Board looks to claim
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`construction orders and discovery status as sign posts for applying the reasoning of
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`NHK Spring Co. v. Intri-Plex Technologies, IPR2018-00752, Paper 19 (Sept. 12,
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`2018), to the exercise of § 314 discretion. See, e.g., Facebook, Inc. v. Search & Soc.
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`Media Partners, LLC, IPR2018-01622, Paper 8 at 10 (Mar. 4, 2019); Mylan Pharm.
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`Inc. v. Gmbh, IPR2018-01670, Paper 19 at 11 (Apr. 3, 2019); Amazon.com, Inc. v.
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`Customplay, LLC, IPR2018-01498, Paper 13 at 9 (Mar. 14, 2019). Contrary to cases
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`where the Board declined to follow NHK, the litigation has issued two claim
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`construction orders, fact discovery is complete, and expert discovery is closing
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`shortly. Ex2016; Ex2038; Ex2039 at 1-3. Instituting IPR would result in further
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`duplication of the claim construction work, and the IPR proceeding would conclude
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`after the parties' requested trial date, a waste of the Board's resources justifying the
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`application of the reasoning of NHK.
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`Petitioner's Arguments Regarding Potential Litigation Stays are Inapplicable
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`Petitioner argues that the Litigation could be stayed in response to an instituted
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`IPR. Request at 14. The Board does not consider such speculative arguments when
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`exercising its discretion under § 314. Amazon.com, Inc. v. Customplay, LLC,
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`IPR2018-01498, Paper 13 at 10 (Mar. 14, 2019).
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`Petitioner's Becton Dickinson Analysis Should have been in the Petition
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`Petitioner's Becton Dickinson factors analysis could and should have been
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`2
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`Case IPR2018-01461
`Patent No. 9,054,421
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`presented in the Petition. The Request does not attempt to make the required showing
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`of good cause for a post-petition analysis of the factors.
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`First, the Board correctly denied Petitioner a reply to the Patent Owner
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`Preliminary Response (POPR) as Petitioner erred in failing to address the Becton
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`Dickinson factors in the Petition. The Petition was filed months after the Becton
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`Dickinson case was designated informative, and the Petition identifies all of the
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`proceedings discussed in the Becton Dickinson analyses in the POPR and the
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`Institution Decision. Petition at 2-4. Therefore, PO's analysis of the Becton
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`Dickinson factors was foreseeable and should have been addressed in the Petition.
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`Petitioner requested a reply to the POPR in its email of 12/21/2018, PO noted
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`there was no good cause for replies in the same email, and the Board considered and
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`correctly denied Petitioner's request. Email of 12/27/2018 ("[T]he panels for the
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`respective proceedings have considered Petitioner’s request to file Replies to the
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`Preliminary Responses, and deny the requests."). Petitioner does not argue that the
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`decision to deny the replies was incorrect, and does not attempt to make the
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`necessary good cause showing to address the Becton Dickinson factors, failing to
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`even re-raise its un-foreseeability argument from its email request. Petitioner cannot
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`show that the Board overlooked or misapprehended the Becton Dickinson factor
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`analysis because Petitioner's analysis of the factors was not presented in the Petition
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`and there has been no showing of good cause for Petitioner's failure to include it in
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`3
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`Case IPR2018-01461
`Patent No. 9,054,421
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`the Petition. If an error exists in the Decision, it is a misstatement regarding the
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`procedural history. Denying the request for a reply was not an error.
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`The Evaluation of the Becton Dickinson Factors was Reasonable and Correct
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`The Board's evaluation of the Becton Dickinson factors was reasonable and
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`correct. The examiner who allowed the claims during the prosecution of the '421
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`Patent considered each of Misra I, Misra II and Grangeat. See, e.g., POPR at 20-25.
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`The examiner also considered claim charts directed to Misra I, Misra II and
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`references the Office deemed cumulative to Grangeat. Id.
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`It is reasonable and correct to conclude from these facts that Becton Dickinson
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`factors 1- 5 weigh in favor of denying institution. The art previously considered by
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`the Office and cited in the IPRs is identical; therefore, factors 1 and 2 weigh in favor
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`of denial. The art was evaluated in conjunction with claim charts applying their
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`teachings or cumulative teachings to claims in related patents sharing the same
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`disclosure as the '421 Patent. Thus, it is reasonable to conclude that this was
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`extensive evaluation, and factor 3 weighs in favor of denial. It is reasonable to
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`conclude from the content of the charts and other reexamination documents that
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`there is significant overlap with the IPR arguments. Therefore, factor 4 weighs in
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`favor of denial. As the Decision notes, there is no discussion in the Petition of how
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`the Office erred in its application of this art. Decision at 13. Therefore, factor 5
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`weighs in favor of denial.
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`4
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`Case IPR2018-01461
`Patent No. 9,054,421
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`Patent Owner Submitted Explanations of Relevance of IDS Documents
`During Initial Prosecution
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`Petitioner alleges that the PO submitted IDS forms during the prosecution of
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`the '421 patent "without mentioning the relevance of any [of the cited references]."
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`Request at 3. What Petitioner fails to note is that non-patent literature cited on and
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`filed with the IDS forms provided the explanation of the relevance of Misra I, Misra
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`II and references deemed cumulative to Grangeat. Specifically, the submissions to
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`the examiner included claim charts from the 1482 and 1483 IPXs applying the
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`teachings of Misra I and Misra II to the claims of the '431 and '432 Patents,
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`respectively, which shared the disclosure of the '421 Patent, as well as office actions
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`from the 1482, 1483, 1390 and 1501 IPXs setting forth rejections based upon these
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`references. See, e.g., POPR at 21-24. Also submitted to the examiner were claim
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`charts from the 1482 and 1483 IPXs applying references deemed cumulative of
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`Grangeat. Id. These facts were not overlooked or misapprehended by the Board.
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`See, e.g., Institution Decision at 12-14.
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`Dated: April 24, 2019
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`Respectfully submitted,
`/Jason Shapiro/
`Jason Shapiro (Reg. No. 35,354)
`Attorney for Patent Owner
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`5
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`
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`CERTIFICATE OF SERVICE
`The undersigned certifies that pursuant to 37 C.F.R. § 42.6(e), a copy of the
`foregoing PATENT OWNER’S OPPOSITION TO PETITIONER'S
`REQUEST FOR REHEARING and the accompanying EXHIBITS were served
`via email (as previously consented to by counsel) on April 24, 2019 to lead and
`backup counsel of record for Petitioners as follows:
`
`
`James R. Sobieraj
`Reg. No. 30,805
`jsobieraj@brinksgilson.com
`ZTE_FractusIPRs@brinksgilson.com
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`Jon H. Beaupré
`Reg. No. 54,729
`jbeaupre@brinksgilson.com
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`David Lindner
`Reg. No. 53,222
`dlindner@brinksgilson.com
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`Gang Chen
`Reg. No. 68,754
`gchen@brinksgilson.com
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`Dated: April 24, 2019
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`Brinks Gilson & Lione,
`Tower, Suite 3600, NBC Tower
`455 N. Cityfront Plaza Drive
`Chicago, IL, 60611
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`
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`/Mark J. DeBoy/
`Mark J. DeBoy (Reg. No. 66,983)
`Attorney for Patent Owner
`Fractus, S.A.
`
`
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