IPR2018-01477
`Patent 7,848,439
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`APPLE, INC.,
`ZTE (USA) INC.
`Petitioners
`v.
`
`INVT SPE LLC,
`Patent Owner
`
`
`
`
`
`Case IPR2018-01477
`U.S. Patent No. 7,848,439
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`Patent 7,848,439
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`APPLE, INC.,
`ZTE (USA) INC.
`Petitioners
`v.
`
`INVT SPE LLC,
`Patent Owner
`
`
`
`
`
`Case IPR2018-01477
`U.S. Patent No. 7,848,439
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`IPR2018-01477
`Patent 7,848,439
`
`TABLE OF CONTENTS
`
`INTRODUCTION .......................................................................................... 1
`THE BOARD SHOULD NOT INSTITUTE IPR BECAUSE IT WOULD
`BE DUPLICATIVE OF THE ITC PROCEEDING AND AMOUNTS TO
`AN INEFFICIENT USE OF THE BOARD’S RESOURCES ...................... 1
`A.
`The ITC Investigation Will Conclude Before an Instituted Trial in
`This Proceeding and Will Analyze the Very Same Issues .................. 2
`1.
`The Board has denied institution on the basis of parallel
`district court cases notwithstanding the different standards
`similarly used in those proceedings ........................................... 3
`A finding of invalidity by the ITC practically resolves the issue
`as between the parties. ............................................................... 4
`Petitioner’s Position Would Amount to the ITC Being Irrelevant
`to Institution of IPR ............................................................................. 5
`
`B.
`
`2.
`
`
`
` I.
`
`II.
`
`
`
`
`
`
`
`IPR2018-01477
`Patent 7,848,439
`
`I. INTRODUCTION
`Pursuant to the Board’s Order (Paper 8), Patent Owner respectfully submits
`
`this Sur-Reply addressing whether the parallel investigation (Inv. No. 337-TA-
`
`1138) at the International Trade Commission (“ITC”) between the parties should
`
`serve to deny institution of this Inter partes review (“IPR”) petition. Patent Owner
`
`maintains exercise of this Board’s discretion is warranted to deny institution,
`
`notably, because it would result in inefficient use of the Board’s resources, as well
`
`as inefficiencies in the patent system.
`
`Specifically, the different claim construction standards and burdens of proof
`
`is no more different than in a co-pending district court trial, which the Board has
`
`relied upon to deny institution. And the fact that an ITC finding of invalidity does
`
`not technically invalidate the patent is a distinction without a practical difference in
`
`the instant dispute between the parties to both proceedings. This is particularly true
`
`if the decision is affirmed by the Federal Circuit, an Article III Court.
`
`II. THE BOARD SHOULD NOT INSTITUTE IPR BECAUSE IT WOULD
`BE DUPLICATIVE OF THE ITC PROCEEDING AND AMOUNTS TO
`AN INEFFICIENT USE OF THE BOARD’S RESOURCES
`Institution of inter partes review is discretionary. See Harmonic Inc. v. Avid
`
`Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but
`
`never compelled, to institute an IPR proceeding”). Parallel proceedings in other
`
`forums are to be considered when determining whether it would be efficient to
`1
`
`
`
`
`
`IPR2018-01477
`Patent 7,848,439
`
`institute IPR. NHK Spring Co., LTD., v. Intri-Plex Technologies, Inc., Case No.
`
`IPR2018-00752, Paper 8 at 19 (P.T.A.B. Sept. 12, 2018) (declining to institute IPR
`
`where district court proceedings would end before IPR trial). “[Bases for denial of
`
`institution] include[], for example, events in other proceedings related to the same
`
`patent, either at the Office, in district courts, or the ITC.” See PTAB Trial Practice
`
`Guide August 2018 Update, at 10 (emphasis added).
`
`The IPR process was created to streamline and create greater efficiency in
`
`the patent system.1 Having two administrative bodies adjudicating the same patents
`
`on the same issues, at the same time, flies in the face of this purpose. Where
`
`parallel proceedings are likely to conclude prior to the conclusion of an inter partes
`
`review, the Petition should be denied. Case No. IPR2018-00752, Paper 8 at 19.
`
`A. The ITC Investigation Will Conclude Before an Instituted Trial in
`This Proceeding and Will Analyze the Very Same Issues
`The ITC Investigation will complete before the conclusion of any instituted
`
`trial in this proceeding. See Ex. 2003 (ITC Scheduling Order) (the parties have
`
`already completed discovery and an evidentiary hearing in the ITC is scheduled for
`
`
`
`1 See H.R. Rep. No. 112–98, pt. 1, at 40 (2011), 2011 U.S.C.C.A.N. 67, 69
`
`(Purpose of the AIA is to “establish a more efficient and streamlined patent system
`
`that will . . . limit unnecessary and counterproductive litigation costs.”)
`
`
`
`2
`
`
`
`IPR2018-01477
`Patent 7,848,439
`
`May 2019.) Importantly, Petitioners do not dispute this fact, nor do they dispute
`
`that the central issues here are the same in the IPR and ITC. Instead, Petitioners
`
`argue that different evidentiary standards, burdens or remedies are available in
`
`each forum, which they claim would render the proceedings non-duplicative.
`
`1.
`
`The Board has denied institution on the basis of parallel
`district court cases notwithstanding the different standards
`similarly used in those proceedings
`Standards, burdens or remedies are also different in Article III court
`
`proceedings (e.g. Phillips is used in both ITC and Article III courts, as opposed to
`
`BRI in IPR). Yet, this has not kept the Board from denying institution solely based
`
`on these parallel court cases. See e.g., Mylan Pharmaceuticals Inc. v. Bayer
`
`Intellectual Prop. Gmbh, Case IPR2018-01143, Paper 13 at 21 (P.T.A.B. Dec. 3,
`
`2018) (“Given the advanced stage of the co-pending district court case and the
`
`extensive overlap of the asserted prior art, expert testimony, and claim
`
`construction, we find it would be an inefficient use of Board resources to proceed
`
`with this inter partes review in parallel with the district court case.”) See also NHK
`
`Spring Co., Case IPR2018-00752, Paper 8 at 19-20; NetApp, Inc. v. Realtime Data
`
`LLC, Case IPR2017-01195, Paper at 12–13 (PTAB Oct. 12, 2017). There is no
`
`reason the ITC should be any different, as reflected in the Updated Trial Practice
`
`Guide which specifically dictates consideration of the ITC.
`
`Further consideration of the relevant claim construction standards and
`3
`
`
`
`
`
`IPR2018-01477
`Patent 7,848,439
`
`burdens of proof does not compel a different result. If Petitioner succeeds in the
`
`ITC investigation on invalidity, with a theoretically narrower claim construction
`
`and higher burden of proof, a re-evaluation of that issue by the PTAB is a waste of
`
`time and resources. And if Patent Owner prevails at the ITC, it is speculation that
`
`the PTAB would reach a different result. This is particularly true here where
`
`Petitioner has not identified any claim term or other issue in the Petition or the ITC
`
`that would actually be affected.
`
`2.
`
`A finding of invalidity by the ITC practically resolves the
`issue as between the parties.
`Petitioners would suggest that the ITC does not have a mandate to
`
`“invalidate patents,” and therefore cannot bring finality to issues of invalidity. This
`
`argument however fails to address the practical reality. Specifically, both forums
`
`are adjudicatory proceedings between the same two parties. An adverse final
`
`decision from the ITC is appealable to the Federal Circuit within 60 days of its
`
`issuance. 19 U.S.C. § 1337(c). Petitioner cannot contend that a subsequent decision
`
`by the Federal Circuit, affirming an invalidity finding, has no impact on the parties
`
`involved, or even the public at large.
`
`Moreover, the ITC will not stay its proceedings in favor of the PTAB. A
`
`primary purpose behind the AIA in this regard was to stay district court litigation
`
`and resolve validity issues in the patent office. Here, the issue of validity on the
`4
`
`
`
`
`
`IPR2018-01477
`Patent 7,848,439
`
`same patents and printed publications will be addressed first by the ITC. In this
`
`regard, policy considerations behind the creation of IPRs suggest that the PTAB
`
`should deny institution based on the ITC more often than based on district court.
`
`B.
`
`Petitioner’s Position Would Amount to the ITC Being Irrelevant
`to Institution of IPR
`Petitioners’ position would give rise to precedent where parallel ITC
`
`investigations are irrelevant to IPR, regardless of how advanced a stage that
`
`investigation may be in. In support of this proposition, Petitioners, inter alia, cite
`
`to Wirtgen Am. Inc., et al. v. Caterpillar Paving Products Inc., IPR2018-01201,
`
`Paper 13 (P.T.A.B. Jan. 8, 2019). However, Wirtgen is not precedential PTAB
`
`opinion. Adopting such an absolutist view as a matter of policy, is unsound and
`
`inconsistent with the letter and spirit of the AIA, as well as PTAB guidance and
`
`rules. The Board should not adopt a policy where it never denies institution in light
`
`of an ITC proceeding, particularly where the Board’s own practice guide says the
`
`ITC should be considered.
`
`For the foregoing reasons, Patent Owner respectfully requests that the Board
`
`deny this institution.
`
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2018-01477
`Patent 7,848,439
`
`
`
`Dated: January 23, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Respectfully submitted,
`
`
`/Cyrus A. Morton/
`
`
`
`
`
`Cyrus A. Morton
`Reg. No. 44,954
`Robins Kaplan LLP
`2800 LaSalle Plaza
`800 LaSalle Avenue
`Minneapolis, MN 55402
`
`
`
`6
`
`
`
`IPR2018-01477
`Patent 7,848,439
`
`CERTIFICATE OF SERVICE
`
`
`
`Pursuant to 37 C.F.R. § 42.6(e)(4), the undersigned certifies that on
`
`January 23, 2019, a copy of PATENT OWNER’S SUR-REPLY was served in its
`
`entirety by electronic mail on Petitioners’ counsel at the following addresses
`
`indicated in their Mandatory Notices:
`
`Counsel for Apple, Inc.
`
`Adam P. Seitz (Reg. No. 52,206)
`Adam.Seitz@eriseip.com
`
`Paul R. Hart (Reg. No. 59,646)
`Paul.Hart@eriseip.com
`
`
`
`
`
`ERISE IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, Kansas 66211
`
`
`
`Counsel for ZTE (USA) Inc.
`
`Bing Ai (Reg. No. 43,312)
`Ai-ptab@perkinscoie.com
`
`Vinay P. Sathe (Reg. No. 55,595)
`VSathe@perkinscoie.com
`
`Babak Tehranchi (Reg. No. 55,937)
`BTehranchi@perkinscoie.com
`
`Kevin J. Patariu (Reg. No. 63,210)
`KPatariu@perkinscoie.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-01477
`Patent 7,848,439
`
`John P. Schnurer (Reg. No. 52,196)
`JSchnurer@perkinscoie.com
`
`
`
`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`
`Dated: January 23, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`/Cyrus A. Morton/
`
`
`
`Cyrus A. Morton
`Reg. No. 44,954
`Robins Kaplan LLP
`2800 LaSalle Plaza
`800 LaSalle Avenue
`Minneapolis, MN 55402
`
`Attorney for Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
