Petitioner’s Preliminary Reply
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FACEBOOK, INC., INSTAGRAM, LLC and WHATSAPP INC.,
`Petitioner,
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`v.
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`BLACKBERRY LIMITED,
`Patent Owner
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`Case IPR2019-00787
`Patent 8,429,236 B2
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`PETITIONER’S PRELIMINARY REPLY1
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`1 This Reply was authorized by the Board’s order dated August 8, 2019 (Paper 11).
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FACEBOOK, INC., INSTAGRAM, LLC and WHATSAPP INC.,
`Petitioner,
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`v.
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`BLACKBERRY LIMITED,
`Patent Owner
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`
`
`Case IPR2019-00787
`Patent 8,429,236 B2
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`PETITIONER’S PRELIMINARY REPLY1
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`1 This Reply was authorized by the Board’s order dated August 8, 2019 (Paper 11).
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`Petitioner’s Preliminary Reply
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`Patent Owner’s arguments for discretionary denial boil down to the fact that
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`trial in the district court is currently scheduled to take place before a Final Written
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`Decision in this IPR. But neither NHK, nor decisions that followed NHK, held that
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`it is proper to deny institution under § 314(a) based solely on the state of parallel
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`litigation. The Board in NHK denied institution under § 314(a) primarily based on
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`considerations under § 325(d), and identified the state of the parallel litigation as an
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`“additional factor.” NHK Spring v. Intri-Plex Techs., Case IPR2018-0072, Paper 8
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`at 20 (PTAB Sept. 12, 2018); Samsung Elecs. v. Immersion Corp., Case IPR2018-
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`01469, Paper 10 at 19-20 (PTAB Mar. 7, 2019) (“[NHK] was decided chiefly on
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`§ 325(d)”); Update to Trial Practice Guide (July 2019) (“TPG”) at 25 n.2 (discussing
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`NHK). Patent Owner here made no argument regarding § 325(d), presumably
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`because there is no overlap between the prior art relied on in the Petition and during
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`prosecution. See NHK at 18; see also Comcast Cable Commc’ns, LLC v. Rovi
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`Guides, Inc., Case IPR2019-00231, Paper 14 at 11 (PTAB May 20, 2019) (declining
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`to deny under § 314(a) where “there [was] no contention that the instant obviousness
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`challenges were previously considered by the Office or by any court.”).
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`The General Plastics factors demonstrate that the IPR process here has been
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`efficient and fair. Only one IPR petition has been filed against the ’236 patent,
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`whether by Petitioner or anyone else. The timing of the filing of the IPR Petition
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`(one month before the § 315(b) statutory deadline) was also appropriate under the
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`-1-
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`Petitioner’s Preliminary Reply
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`circumstances. In the litigation, Patent Owner originally asserted claims 1, 2, 4, 5,
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`10, and 15-18, but in February 2019 (more than 10 months after service of the
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`complaint) narrowed its case to assert only claims 15, 17, and 18. (Compare Ex.
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`1015 at 3 (listing claims originally asserted) with Ex. 1016 at 3 (narrowed list of
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`asserted claims).) This allowed Petitioner to file a more targeted petition challenging
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`only those three claims and three substantially similar method claims (i.e. 1, 5 and
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`10). Additionally, by the time the IPR petition was filed, the parties had exchanged
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`proposed and stipulated claim constructions. (Petition at 8-11; Ex. 1017 at 3, 10
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`(stipulated construction for “recipient application”; only “message transmission
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`mode” as disputed term for ’236 patent).) These developments resulted in an IPR
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`petition that was more targeted, more focused, and more thorough than would have
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`been possible even a couple months earlier.
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`Additional fairness considerations weigh against discretionary denial. Patent
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`Owner accused WhatsApp and Facebook of infringement of the ’236 patent, and
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`argued that Facebook products had “materially the same functionality” as accused
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`WhatsApp products. (Ex. 1010, p.82, ¶231.) But Patent Owner later withdrew its
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`claims against Facebook without explanation. (Petition at 1.) Because Facebook
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`has no assurance that it will not be sued again, the Petition might represent the only
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`opportunity to seek AIA review of this patent. See Click-To-Call v. Ingenio, 899
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`F.3d 1321, 1330-31 (Fed. Cir. 2018) (one year statute of limitations runs at service
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`Petitioner’s Preliminary Reply
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`of complaint even if it is dismissed), cert. granted in part sub nom. No. 18-916, 2019
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`WL 234884 (U.S. June 24, 2019). Denial of Facebook’s petition based on an
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`upcoming trial – that will not even involve Facebook – would be unfair.
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`The state of the district court proceeding also does not support discretionary
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`denial. First, the Board found it important that the NHK petitioner relied on the same
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`prior art and arguments in both the district court and IPR proceedings. NHK at 19-
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`20. Here, the prior art references cited in the IPR grounds are different from those
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`relied upon in the district court litigation. (Ex. 2008 at 4.) Second, the NHK
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`petitioner provided no explanation for filing its IPR just days before the one-year
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`bar. Here, as noted, developments in the district court that occurred beginning in
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`February 2019 enabled Petitioner to file a single and more streamlined petition.
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`Third, the NHK petitioner did not disclose any intention to seek a stay of the district
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`court proceeding. Here, Petitioner intends to renew its request for a stay, particularly
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`in view of the fact that two IPR petitions challenging another patent asserted by
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`Patent Owner were recently instituted. See IPR2019-00528 (Paper 8), IPR2019-
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`00516 (Paper 7). Accordingly, the trial date in the district court proceeding is far
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`from set in stone.
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`Accordingly, Petitioner respectfully requests that the Board decline to
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`exercise its discretion to deny institution under § 314(a).
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`Petitioner’s Preliminary Reply
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`Dated: August 13, 2019
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
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`By:
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`Respectfully submitted,
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`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioner
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`CERTIFICATE OF SERVICE
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`I hereby certify, pursuant to 37 C.F.R. § 42.6, that a complete copy of the
`attached PETITIONER’S PRELIMINARY REPLY, including all exhibits (Nos.
`1015-1017) and related documents, are being served via electronic mail on the 13th
`day of August, 2019, upon counsel of record for the Patent Owner as follows:
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`James M. Glass
`Ogi Zivojnovic
`QUINN EMANUEL URQUHART &
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`SULLIVAN LLP
`qe-blackberry-ipr@quinnemanuel.com
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`Michael T. Hawkins
`Kenneth W. Darby
`Kim Leung
`Craig A. Deutsch
`Nicholas Stephens
`IPR21828-0042IP1@fr.com
`PTABInbound@fr.com
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`DATED: August 13, 2019
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`-1-
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`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`COOLEY LLP
`1299 Pennsylvania Ave. NW,
`Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
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